In one of the latest cases, the European Court ruled about a sound mark making it one of the first instances after the reform of trademark law. The European Court of Justice rules that the sound mark "tin plop" was devoid of distinctive character. While opening a beverage can, the sound "tin plop" is a common sound. The disputed sound mark of tin plop is also the similar sound of the opening of beverage can be followed by about one second of no sound and a tingling sound of about nine seconds. The application was filed by Ardagh Metal Beverage Holding GMbH & Co. (Germany). The applicant submitted an audio file of their sound mark "Dosen Plopp" consisting of sound and a deliberate silence which was filed in Class 6, 29, 30, 32, 33, etc. But the trademark office refused to register the same giving the reason of lack of distinctiveness. Distinctiveness was a basic requirement for a trademark which the sound mark lacked for a commercial origin.

The Board of Appeal subsequently confirmed this view. Comparing the same with that of other marks, the Board of Appeal noted that the criteria are the same for all marks, be it a wordmark or the sound mark, and the applicability of such principle is the same for all marks. The Board also ruled that the public is not accustomed to the sound for indicating the trade origin of beverages container and packaged beverages.

The applicant appealed the decision to the European Court of Justice making this the first judgment concerning the sound mark since the 2017 reform of trademark law.

The European Court of Justice

The major issue here is to determine the characteristics which the sound mark must have or a recognition value, for getting registered as a trademark. Another important issue to be delved into is about the sound produced by the mark, being inherent to the use of the goods claimed, making it a functional element and indicating the characteristics of goods. The Board of appeal answering a valid question that whether the sound mark influences the decision of the public to purchase the same held that it does not influence any such decision. A pertinent question is about the distinctive character of the sound mark, stating that whether the sound must deviate from the norms in the industry to make it more distinctive.

The ECJ going on the lines of Board of Appeal confirmed that the criterion for distinctiveness remains the same for all and there is no difference at all for any marks whether it is word or sound mark because of Art. 7(1) of Regulation 2017/1001 does not distinguish between these different categories.

The Court ruled that mere functional component or indicator is not sufficient and there must be some resonance. This way the consumer must connect the sound mark with that of commercial origin. With respect to creating a sufficient resonance, the ECJ did find two characteristics with regards to the mark tin plop but it was not sufficient to create the required resonance. The two characteristics of the mark, namely the soundlessness lasting for about one second and the sound of pearls tinkling for about nine seconds, were not sufficient to indicate the commercial origin

Meanwhile, the Board of Appeal denying the sound mark acquiring any resonance and justifying it with extraordinary simplicity and everydayness was criticized by the ECJ, owing to the fact that the reasoning was dependent upon the case laws of three-dimensional marks. The ECJ made it clear that the case law for three-dimensional trademarks consisting of appearance or packaging cannot be applied to the sound mark.

ECJ also disagreed with the reasoning of the Board of Appeal that the sound cannot influence the decision of the consumer since the sound is heard only after it has been purchased. The mere fact that the sound is heard after it is purchased does not mean that the use of sounds to indicate the commercial origin of a product is unusual in a particular market, it said. Even though with few legal errors, the ECJ confirmed the decision of the Board of Appeal owing to the fact that those legal errors were not major to overturn the entire decision.

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