Generally when we think about trademarks, we think of it as a way to distinguish one’s business from that of others in a competitive market. However, sound can also get trademark registration. Wondering how? This article discusses how sound can get trademark registration and the procedure involved.
With the advancement of technology and innovative marketing strategies, the world of business and the concept of trademark have widened its scope covering a variety of things such as sound or smell under the definition of trademark. According to the Trademark Act, 1999, the trademark means “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors.”1 From this definition we can infer two ingredients that are essential to avail trademark registration. One, the mark must be able to be graphically be represented and secondly, it must be capable of distinguishing one’s business from others. So, it is not clear from this as to whether sounds or smells can be registered. There is an ambiguity. In fact there is no reference to sound or smell in the definition explicitly.
However, under the Trademark Rules, 2017 definition, the ambiguity is removed. A reference to Rule 26, Sub Rule 5 reads: “where an application for the registration of a trademark consists of a sound as a trademark, the reproduction of the same shall be submitted in the MP3 format not exceeding thirty seconds’ length recorded on a medium replaying accompanied with a graphical representation of its notations.”2 From this definition it becomes clear that for a sound to be registered it must be graphically be represented and it must be submitted in MP3 format not exceeding 30 seconds.
Now, why is sound trademarked? It is essentially because it uniquely distinguishes the sound of one business from others. We are all accustomed with the ringtone of Nokia, the lion’s roar in the beginning of MGM produced films, Yahoo’s yodel, the thunderstorm sound of Harley- Davidson or even the four- note bell sound of the Britannia Industries. Thereby, registering such sound trademarks have been considered necessary when people start to identify certain brands by their sounds.
The 2017 Rules have made it easy and practical to avail the sound registration. Earlier, in order to get sound registration one had to file an application with graphical representation or by spelling out the tune.3 It also made it necessary to have ‘factual distinctiveness’ of sound to avail the registration. Factual distinctiveness means the immediate recall value of the sound associated with the product or service.
In India Yahoo was awarded the first sound mark registration in 2008 for its Human Voice Yodeling. ICICI Bank became the first Indian to obtain the sound registration for its corporate jingle ‘dhin chik dhin chik’ sound. Some other popular sound marks registered in India includes the National Stock Exchange Theme song, Cisco tunes heard on logging into the conferencing service Web Ex and Nokia for its guitar notes on switching the device.
The following are some of the trademarks which is not capable of registration under the Trademarks Act, 1999-
Simple pieces of music consisting of 1 or 2 notes;
Songs which are commonly used as chimes;
Those sounds which are well known in entertainment industry or park industry;
Children’s nursery rhymes in goods or services aimed at children;
Music of goods/ services that is strongly associated with any country or geographical locality.
A trademark registration for sound is a non- conventional registration, where sounds can avail registration only if is uniquely distinct and associate with the products/ services. It must be represented graphically too. These two conditions were also observed in the landmark case of ** Shield BV v. Joost Kishodn Memex **.4 Thereby the Indian Intellectual Property laws have readily accepted the non- conventional trademarks and the Trademark Rules, 2017 made it possible to push the boundaries of what cannot be trademarked. It can be considered as a stepping stone in further advancement and recognition of other non- conventional trademarks.
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