Sound Trademarks
By Paula Galván.
On July 7, 2021, the General Court of the European Union, in the context of an appeal filed against the European Union Intellectual Property Office in 2019, confirmed the rejection of an application for the registration of a mark consisting of the combination of sounds made by the opening of a fizzing drink can. The application had been filed for by the German company Ardagh Metal Beverage Holdings GmbH & Co. KG., to identify goods of international classes 6, 29, 30, 32, and 33.
The judgement of the General Court of the European Union (GCEU) is thoroughly founded and, even despite noticing certain inconsistencies in the resolution issued by the EUIPO appealed by the plaintiff, it confirms the rejection of the trademark application. The main argument sustaining such decision is the lack of distinctiveness of the sign: the trademark application filed by the German company consisted of the sound produced by the opening of a fizzing drink can, followed by a silence of approximately one second, and a bubbling sound with a length of approximately nine seconds. The decision confirmed by the GCEU held that the sound produced by the opening of a can should be regarded as a purely technical and functional element, which the public may only perceive as a variant of the sounds that are usually produced when a drink container is opened. The resolution also held that the bubbling sound is an indication of the qualities of the product inside the container, and not an intrinsic differentiating feature. Therefore, the GCEU dismissed the appeal filed by Ardagh Metal Beverage Holdings GmbH & Co. KG., and confirmed that the sound which registration was sought as a trademark lacked sufficient distinctiveness to permit an association between the commercial origin of the product and a specific trademark.
Sound marks are certainly a communication instrument which, by means of a sound (chords or melodies, or the combination of both) enable to distinguish products or services from a specific supplier, and to capture the attention of consumers through an almost automatic association in the mind. As it is the case of any other type of trademark intended to be registered, these sounds should be distinctive, and should also fulfill all other formal requirements. If the applicant intends to obtain the protection afforded by trademark law, the sound should be able to indicate consumers a commercial origin, so that the trademark is distinguished from the products or services offered by other competitors. The lion’s roar of the Metro-Goldwyn-Mayer, or the login sound of the Netflix streaming platform are, in our opinion, clearly distinctive and recognizable sounds that should certainly be considered apt to be registered as trademarks.
However, the registration of sounds as trademarks has been difficult even in the most developed countries. In Europe, for instance, brands such as Piaggio and Suzuki have so far failed to obtain registration of sound marks consisting of the sound of their vehicles when they are ignited, even though the European Union has extensive case law on sound marks, and various applicable guidelines for the registration of this type of non-traditional trademarks.
In Argentina, the registration of sound marks is still very sporadic, and it is even a matter that is not expressly provided for in the Trademark Law. The local enforcement authority, the National Institute of Industrial Property (INPI), has so far not referred in detail to this type of non-traditional trademarks, neither in guidelines nor in any instructional material. The only information available on the registration of sound marks is found on the INPI’s website, where it is stated that sound marks are those that consist of a sound or set of sounds identifiable by the auditory sense, and that this identification should be expressed through a pentagram and a magnetic support, so that the distinctiveness and availability of the sound sign as a trademark can be examined.
In fact, the search engine of the INPI’s trademark database does not have an option to check which sound trademarks have been applied for and/or registered in our country, and we understand that there is still a long way to go to define at least rules for the publication of sound marks, and a criterium to analyze and determine if the sound mark is available for registration, vis-à-vis the existence of potentially similar marks already existing in the Register.
In Argentina, the first sound mark registration was applied for and obtained by the American computer company Intel Corporation in December 1997. The sign consisted of five musical notes identifying the “INTEL” trademark processors. This mark is currently no longer in force, as it expired without renewal in 2010. Up to this date, the INPI has allowed registration of approximately forty sound marks to identify a wide variety of goods and services, including Yahoo! search engine services, financial services offered by Mastercard, restaurant services by McDonald’s, and Sony cell phones, among others.
The technological developments that have been achieved over the last few years -especially the increasing use of voice assistants and various communication alternatives through remote sound reproduction- will likely open the way to the proliferation of special (non-functional) sounds that allow the immediate association with certain product or service. We will surely soon see a greater number of applications for the registration of sound marks that provide exclusive differentiation features to a company over its competitors.
For further information please contact: pgalvan@ojambf.com.
