Rechtsberatung für die Energiewende
With a “hiss” to the trademark registration?
The thirst is great, the refreshment is already in the hand: be it a sparkling lemonade, a cold beer or a fruity cider – the distinctive hissing sound when opening a beverage usually makes your mouth water with anticipation. But is everyone’s can allowed to hiss and tingle when opened? The interesting question of whether a hiss with a subsequent sound of tingling can be protected as a sound trademark and thus be monopolizable for a company had to be dealt with by the General Court of the EU on July 7th, 2021.
The German company Ardagh Metal Beverage Holdings had applied for an EU trademark to the European Intellectual Property Office (EUIPO). It consisted of a sound sign reminiscent of the sound made when opening a beverage can, followed by about one second without a noise and a tingle of about nine seconds. A corresponding audio file was enclosed with the application (it is no longer necessary to enclose a sheet of music). This sound trademark was to be registered, among others, for the following goods: metal containers, dairy products and in particular beverages made from milk or containing milk, coffee, mineral waters and non-alcoholic beverages as well as alcoholic beverages.
What can be trademarked?
In principle, the purpose of a trademark is to identify and distinguish the goods and services originating from a particular company from those of other companies. The essential function of the trademark is thus the function of origin, whereby a trademark must also be distinctive (and thus not merely descriptive of the goods) in order to be able to be registered as such at all.
There are various ways of registering something as a trademark – you can register not only a word or a picture or a combination of both (these are among the most common trademark registrations), but also three-dimensional shapes, colors or even sounds or tones.
Sound trademarks consist exclusively of a sound or sound sequence, such as jingles or short music or sound sequences with or without words/vocals. These are still rare – only around 262 tone or sound sequences are currently registered as European sound trademarks (as of 07/07/2021, TMView query). A well-known Austrian example is the Almdudler call, which is registered as an (Austrian) sound trademark.
The decision of the General Court
The General Court of the EU not only had to deal with the question of whether a hissing sound when opening a beverage could be a sound trademark, but also with various procedural and (partly justified) deficiencies that the Board of Appeal made in its decision (spoiler: however, these procedural deficiencies could not help the appellant either).
The gist: The distinctive character of a trademark has to be assessed, on the one hand, with regard to the goods and services for which it has been applied for and, on the other hand, with regard to its perception by the average consumer addressed. The same examination criteria are to be applied to all trademark applications concerning their distinctiveness – nevertheless, the specific decision-making practice for sound trademarks should and have to be taken into account accordingly in the examination. An audio sign has to have a certain resonance, on the basis of which the addressed consumer can recognize it and recognize it as a trademark – and not just as a functional component or as an indicator without intrinsic characteristics. The addressed consumer must therefore understand the audio sign in such a way that it offers an opportunity for identification because it is recognizable as a trademark.
Result: The sound (i.e. the hissing) that is produced when a can is opened is to be regarded as a purely technical and functional element in view of the goods in question (various beverages). In fact, the opening of a can or bottle is a specific technical solution necessary for the consumption of beverages (regardless of whether the beverage contains carbon dioxide or not). Thus, this sound cannot be perceived as an indication of the commercial origin of the goods in question.
Hardly surprisingly, the hissing sound when opening a beverage can and a subsequent tingle is not sufficiently distinctive to be registered as a trademark. However, the value of a sound or a jingle for a company should not be underestimated in any case – because these are also (with sufficient recognition value and distinctiveness) an excellent advertising medium and can thus achieve great economic value.
This article is for general information only and does not replace legal advice. Haslinger / Nagele Rechtsanwälte GmbH assumes no liability for the content and correctness of this article.
19. July 2021
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