Member Article

A recent posting by United Kingdom IP firm Beck Greener discusses a very interesting European Union case involving sound marks.

If you have any interest in trade marks, you will know that trade marks can take many forms. Although most trade marks are words or logos, trade marks can be all sorts of things… straplines (slogans), product shapes, store layouts colours, sounds, smells or tastes.

But many of these more exotic types of trade marks can be difficult to protect. In general terms, there are two stages involved in the trade mark registration process. The first is persuading the authorities that the thing that you’re seeking to register does, in fact, function as a trade mark, in other words, acts as an indicator of the product’s source – no problem with a brand name or a logo, but less easy with something like a sound. The second stage applies to any type of trade mark, and that is persuading the authorities that what you’re trying to register distinguishes, or is at least capable of distinguishing, your goods or services from those of your competitors.

The case discussed in the posting involves an application by a company called Ardagh Metal Beverage Holdings GmbH & Co. to register a sound mark in the European Union. It’s an interesting one this, with the sound in question being that of a carbonated drink can being opened, followed by a pause, followed by the sound of a drink bubbling inside the can. If you would like to hear the sound, it is available here.

The European Intellectual Property Office refused this application. Its justification was that the public would not perceive this sound as a trade mark. In other words, the public would not regard this sound as an indicator of origin or trade source. The company filed an appeal and the matter was then considered by the Board of Appeal (“BOA”). The BOA upheld the refusal.

The BOA’s reasoning was two-fold. First, it said that the consumer will only hear the sound in question after they have bought the product. This, of course, means that the sound does not function as an indicator of source and has no impact on the decision to purchase. The BOA then went on to say that even if the sound is heard before purchase, for example, if the sound is somehow played while the consumer is considering or examining the product, the particular sound isn’t distinctive, because it’s pretty much the sound that you get when you open any carbonated drink can.

Basically, what the BOA was saying here was this: because consumers aren’t accustomed to having trade marks taking the form of sounds, the sound that you want to register needs to be a little bit out there. Or, as the European Union authorities like to say, it must“depart significantly from the norm.” This sound doesn’t meet that test because it’s what opening a drink can sounds like. A further appeal to the General Court is pending and we will watch that with interest.

This case illustrates some important things. It reminds us that trade mark authorities tend to be pretty sceptical about unconventional marks. In previous articles, we’ve looked at how some very large companies have failed badly here. Think the four-finger shape of Kit Kat chocolate, consistently denied protection by the European authorities, although surprisingly held to be OK by the South African Supreme Court of Appeal. Think the colour red for shoes (Christian Louboutin). Yet, we’ve also seen some notable successes, such as the smell of Play-Doh in the USA.

Yet, companies do seem to like these less conventional types of trade marks, and they’re increasingly likely to want to use them as business continues to move online. Companies will continue to push the boundaries, in order to get legal protection for things that they do feel indicate source.

It’s also worth noting that it is becoming easier to represent these new-fangled trade marks in ways that make them accessible to those who wish to do clearance searches. For example, whereas until not very long ago it was necessary to describe a sound mark in words (such as the sound of a roaring lion for films, Metro-Goldwyn-Mayer or musical notations (such as a few bars of Beethoven’sFur Elise, Shield Mark BV) we then moved on to sonograms. And now we have multimedia files: the UK authorities recently announced that they had granted their first multimedia mark.

In South Africa, the Trade Marks Office requires an analogue or digital recording of the sound trade mark, along with an appropriate written description.

In our view, it’s likely that the practice of using and registering unusual marks such as sounds will grow. Perhaps you should think about having one!

Manisha Bugwandeen-DoorasamyExecutive IP[email protected]+27 82 310 1016