Part 2A: Pop, pop, fizz: Sound marks in the ‘biz’

Further to our discussion on ‘single colour trademarks’ which are one kind of unconventional trademarks, let’s look at another kind – sound marks. Recently, the sound of pop followed by fizz/crackle was sought to be registered as a trademark. But the sound that echoed was not of success. This is a reference to the ruling of the General Court of European Union (GC) in the case of Ardagh Metal Beverage Holdings v. European Union Intellectual Property Office (EUIPO), which in July had ruled that the audio file bearing ‘the sound made by can being opened, followed by silence of one second and a fizzing sound of nine seconds’ for various drinks and metal containers for storage/transport, was not a mark distinctive enough to be registered as a trademark. A press release on the same can be found here.

In June 2018, Ardagh Metal had submitted an application to the European Union Intellectual Property Office, EUIPO for the sound described above, in the form of an audio file. In the month of July in the same year, the applicant, Ardagh Metal was informed that the mark is not eligible for protection as it ‘could not be perceived as an indicator of the commercial origin of the products’. Subsequently, in January 2019, the examiner passed his decision rejecting the application. An appeal against the order was dismissed by the Second Board of Appeal of EUIPO and hence finally ended up before the General Court (GC) of the European Union. This case is significant because it was the first time the GC dealt with a sound mark submitted in the form of an audio file.

There are many significant takeaways from this case. The GC was of the view that the criteria for assessing distinctiveness for sound marks does not differ from other categories of trademarks. It is necessary that  sound marks “have certain resonance which enables the target consumer to perceive it as a trademark” and “not as functional element/indicator without any inherent characteristics”. In other words, the sound must evoke some recognition and brand recall, corresponding to commercial origin of an entity. The Board of Appeals while evaluating the case, equated sound marks with three dimensional marks, in order to determine distinctiveness of the mark. The reasoning behind this was the analogy that the sound in the sound mark sought to be protected must diverge significantly from the industry standard/habits to establish distinctiveness, similar to how three dimensional marks reproducing the external appearance of the product/packaging must diverge from the norm to be distinctive and still serve as a trade-identifier. The GC was of the view that the case law where the distinctiveness of three dimensional marks was discussed, did not establish a new criterion of determining distinctiveness but emphasizes that perception of an average consumer might differ for 3D marks when compared to word/figurative or sound marks that exist independent of shape/exterior appearance of goods. Hence, the case-law relating to 3D shape cannot be applied to sound marks. Additionally, on public perception of the mark, the Court was of the view that the sound of opening of can was a technical/functional element (considering the goods for which the registration was sought). To quote the GC “The opening of a can or bottle is inherent to a technical solution connected to the handling of drinks in order to consume them and such a sound will therefore not be perceived as an indication of the commercial origin of those goods.” The GC further observed that sound of fizzing is usually associated with drinks and all sounds taken together i.e. the opening of a can followed by silence for one second and then fizzing sounds, does not have any inherent characteristic to qualify the distinctiveness tenet nor does it indicate commercial origin of goods. A distinct observation made by GC is in relation to the inherent nature of goods and sound marks. EUIPO in its decision had observed that it is unusual to use sound marks alone for the market of drinks and their packaging as ‘the goods are silent until consumed’. The GC was of the view that most goods are silent in themselves and make a sound when consumed and simply because the sound is made upon consumption does not imply that use of sounds to indicate origin would be different from the ordinary. 

The GC had in 2016 dealt with sound marks in Globo Comunicação e Participações S.A. v EUIPO, a precedent that is relied on in the case apparent as well. The mark in consideration was a tune intended to be used as the ringing of an alarm/telephone and the sound was graphically represented in the form of written musical notes. However, the court was of the view that while sounds may constitute a trademark, they must serve as an ‘indication of origin’ and the sound for which registration was sought was ‘standard ringing sound’ which would not serve the purpose when used in relation to goods/services of the application i.e. ringing of an alarm/telephone. The tune was found to ‘go unnoticed and not remembered by the consumer’. This case provides a good contrast to the sound marks accepted and registered in the US such as the Nokia ring tone (Application No. 75743899). However, US trade mark law places heavy reliance on acquired distinctiveness, which could be a relevant factor there.

Around the globe: sound probe

Much like their single colour mark counterpart, sound marks are also not explicitly recognized in an international treaty/convention and can be interpret using Article 15: Protectable Subject Matter (of Trademarks) of the World Trade Organization (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) which provides for “any sign capable of distinguishing goods/services of one undertaking from those of other” and in most cases, the sign must be visually perceptible. In instances where the sign is not inherently capable of distinguishing the relevant goods/services, registrability would depend on “distinctiveness acquired through use”. The Module on Trademarks of Guide to the TRIPS Agreement while discussing distinctiveness as a requirement of Article 15, mentions that members can set the requirement of visual perceptibility and are free to determine whether or not to allow the registration of smells and sounds as trademarks and refers to these marks as ‘non-traditional’. The module further explains how the traditional concept of trademarks is broadening to include sound by stating “while most trademarks are word marks, graphic symbols, labels or logos, there have been registrations of several sounds (such as Nokia ringtone, MGM lion roar)”. Further, EUIPO recognizes ‘multimedia marks’ which are a combination of image and sound, as of October 1, 2017.

However, the EU Regulation 2017/1001 in its ‘Article 4: Signs of which an EU trade mark may consist’ recognizes ‘sounds’ as one of the signs which constitute an EU trademark provided that they are capable of “distinguishing the goods/services of one undertaking from those of other” and “being represented on the register such that it enables the competent authorities and public to determine the clear/precise subject matter of protection afforded to its proprietor”. Further to this regulation, the EU trademark implementing regulation 2018/626 that provides for procedural requirements for registration under ‘Article 3: Representation of the trade mark’ provides that in instances of sound marks, the “mark shall be represented by submitting an audio file reproducing the sound or by an accurate representation of the sound in musical notation”. Surprisingly, despite the statutory provisions, sound mark registrations only constitute 0.02% of the total number of trademarks registered in EU since the protections have been included.

The apprehension of registering sound marks arises from the high level of scrutiny by adjudicating and examining authorities in addition to proprietors finding it difficult to isolate features of the mark that evoke a trade association and are not an inherent part of the mark (as in the case of Harley Davidson’s attempt to obtain registration for the sound of its engine). Having said that, several proprietors have been successful in obtaining registrations for sound marks over the years. Popular examples of the same are the sound of Roaring lion in the name of Metro Goldwyn Mayer Lion Corp. (Registration No. TMA828890 in Canada and US Serial Number 73553567), the sound of ‘Ah McCain (Ping) You’ve done it again’ in the name of McCain foods (Application No. 759707 in Australia), McDonald’s ‘I’m loving it’ (Application No. 003661907 in EU), Chimes for the Intel theme (US Serial Number 75332744) or the Looney Tunes theme in the name of Warner Entertainment (US Serial Number 75934534).

Link to the Part 1A of the article: https://www.theippress.com/2022/01/11/the-tales-of-hues-and-harmonies-trademark-protection-of-single-colour-and-sound-marks/

Link to the Part 1B of the article: https://www.theippress.com/?p=3346