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8 July 2021TrademarksAlex Baldwin

Sound of drinks can opening can’t be protected, rules General Court

Packaging company Ardagh cannot trademark the sound of its soft drink can opening, according to a recent decision by the EU General Court.

The Luxembourg-based company applied to register the sound of “a drinks can opening, followed by silence and up to nine seconds of fizzing”, with the European Union Intellectual Property Office (EUIPO).

It sought to register the sign under classes 6, 29, 30, 32 and 33 of the Nice Agreement, which broadly covers containers, dairy products, coffee, beer and other alcoholic beverages.

The application was denied by both the EUIPO assessor and the board of appeal, leading Ardagh to appeal to the general court to annul the board’s decision and order the EUIPO to pay costs.

The court dismissed all of Ardagh’s appeals, upholding the EUIPO’s opinion that the sound lacked distinctiveness in a judgment handed down on July 7.

Ardagh’s arguments

At the General Court proceedings, Ardagh argued that its mark had a distinctive character under the classes 29,30,32 and 33 in that the drinks would need to contain carbon dioxide in order to produce the sound—which it also argues would be indicative of the commercial origin of the product.

The EUIPO claimed that it was a “sound devoid of any distinctive character” and was therefore incapable of performing the essential function of a mark.

The court sided with the EUIPO, saying: “Contrary to what the applicant maintains, the combination of the sound elements and the silent element is therefore not unusual in its structure, the sounds of opening a can, of a silence and a corresponding crackle predictable and customary elements in the beverage market.”

Ardagh also argued that the EUIPO Board of Appeal made a “crucial error” in its assessment in that it referred to case law that was not applicable to the assessment as it covered the distinctive “shape” of the goods rather than the sound.

While the court agreed this was an error, it was not liable to disqualify the board’s ruling of lack of distinctive character.

Case history

Ardagh had applied for the sound sign in June 2018, providing a sound file alongside the application.

The examiner at the EUIPO denied the application, claiming it was not eligible as the sound “could not be perceived as an indicator of the commercial origin of the product”. This led Ardagh to appeal.

The appeal was formally rejected on January 8, 2019, by the Second Board of Appeal of the EUIPO.

The appeal board ruled that the public was “not accustomed to” considering sound as an indication of the commercial origin of unopened beverage packaging, claiming that “in order to be registered as a mark, a sound had to have a certain significance or capacity to be recognised”.

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