Anirudh Agarwal , Gaurav Bhalla
February 7, 2022
The association and distinguishment of source of goods and/or services through visible marks is not recent and examples of the same may even be found during ancient times, such as the Harappan civilisation. The identification of a distinctive mark has traditionally been limited exclusively to visual parameters. However, the evolution of different technologies and innovations in the methods of advertising have given rise to numerous new source identifiers such as sound, shape, smell, etc.
The Indian Trade Marks Act, 1999 (“Act”) under Section 2(1)(m) mentions that a mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof. Since the definition is non-exhaustive in nature, it can be presumed that non-convention trademarks such as smell, shape, etc. would fall within the purview of this definition.
With the advent of technology and digitalization, fierce competition in the market has expanded the limits of trademark protection. Pursuant to this, manufacturers and business(es) have turned to new methods to distinguish and draw the attention of potential consumers to their goods and /or services so as to survive in the market. As a result, we are witnessing more and more instances of use of non-convention marks by business(es) to make a powerful impact on the public, so that their services and products are prominently acknowledged and identified in the commercial market.
The first sound mark to be granted trademark registration in India was for the ‘Yahoo yodel’ in 2008. Later on, ICICI Bank became the first Indian entity to be granted a sound mark registration in 2011 for the corporate jingle – Dhin Chik Dhin Chik. Around that time, however, there were no clear guidelines on the appropriate procedure to be followed for sound mark registration vis-a-vis the requirement of graphical representation in relation to a sound mark. For instance, Yahoo (in its sound mark application) was constrained to rely on principles laid down by courts of other jurisdictions. It was only through an amendment of the Trade Marks Rules in 2017 that the requirement(s) for registration of sound marks was elaborated.
Some classic examples of sound trademark registrations granted to other entities in other jurisdictions include Time Warner Entertainment (viz. Looney Tunes Theme Song); MGM Entertainment (viz. the Roaring Lion) and Twentieth Century Fox (viz. ‘orchestral tune – drums, trumpets, strings’, ‘cat's meow’ etc). In the case of Shield Mark BV v. Kist, the European Court of Justice (“ECJ”) had recognized the sounds which may be registered as trademarks and set out guidelines in the manner in which such marks must be represented while filing an application viz. the application should state clearly that the mark is intended to be a sound mark and that musical notation, adequate and precise enough to communicate the should be included in the application. The ECJ held that as long as a sound was distinctive in nature and could be represented graphically, it could be trademarked. Relying on Article 2 of the European Union (“EU”) Directive 89/104/EEC, the ECJ further opined that descriptive words, for example, “crow of a rooster”, “first nine notes of Fur Elise”, etc. were unlikely to amount to graphical representation and that, while musical notes or other notations would suffice for graphical representation, mere onomatopoeia would not.
With the amendment of the Trade Mark Rules (‘Rules’) in 2017, Rule 26(5) was introduced which states that the sound mark may be reproduced and submitted in the MP3 format “accompanied with a graphical representation of its notations”. Thus, graphical representation of a sound mark is possible in India through musical notes and this has simplified the trademark registration process in India. Primarily two conditions need to be fulfilled for registration of a sound mark under the extant law viz.
(i) an application must specify that the mark to be registered is a sound mark
(ii) along with the application, an MP3 reproduction not exceeding 30 seconds and a graphical representation of the sound mark in the form of musical notations must be submitted by the applicant.
It goes without saying that the basic requirements of trademark registration need to be fulfilled even for sound mark applications. For instance, the sound sought to be trademarks must be distinctive in nature and sounds that are generic in nature would not qualify for registration.
The applications for registration of sound marks are processed similar to other trademark applications filed at the Indian Trade Marks registry. In addition to the necessary particulars [such as name of the Applicant, address of the applicant, the legal status of the applicant entity (if any), class of goods/services, specification of goods/services, etc.], one of the important factors while filing a trademark application is the date of the earliest use of such sound mark. Since the nature of sounds is such that the distinctive element could be relatively easily proven through acquired distinctiveness (by way of the use of the sound mark), the availability of any documentary evidence to show the use of the mark at the time of filing the application will be beneficial.
Further, as regards the next steps in the processing of a trademark application, we note that applications for sound mark registrations are more closely scrutinized (in comparison to other marks) owing to their unique nature. However, as long as the trademark application adheres to all statutory requirements, the application would proceed further. The next steps as regards publication and grant of registration are the same as any other trademark application.
The obvious benefit associated with obtaining trademark registrations for sound marks is the monopoly over statutory rights regarding the same. This includes the right to restrict any third party from exploiting the registrant’s rights in the registered sound mark. The effective enforcement of the registrant’s right in a mark ensures that unauthorized third parties do not unduly ride upon the goodwill and reputation in the mark, and the (sound) mark is not diluted. Timely renewal of sound mark registrations ensures that the registrant is able to reap benefits of the investment of time and effort towards conceiving such sound mark are adequately compensated.
Sound marks, and non-conventional marks in general, certainly have a few legal hurdles to clear before the Indian legal fraternity and public is unambiguously decisive and proactive about their protection as trademarks. While amendments in Indian statutes and interpretations of the Indian court have helped in the recognition of sound marks, some ambiguities persist as the practice of registering sound marks is still uncommon. Many non-conventional marks such as smell and touch marks are yet to gain protection in India as trademarks altogether.
The grant of registration of a trademark is largely at the discretion of the Examiner and the Registrar of Trade Marks. Without a strong legislative foundation and procedure, few sound marks receive protection and it is not as easy to determine the registrability of such marks and promote and increase their use. However, this has become necessary as it cannot be denied that a paradigm shift has occurred from the use of traditional trademarks owing to the commercial significance and that a non-conventional trademark may be, in many aspects, be more distinctive than a traditional trademark.
Moving forwards, TRIPS can serve as a helpful aid to offer some uniformity and comprehension with respect to sound and other non-conventional marks and help establish a consolidated set of rules and legal understanding on their registration in India. Till then, it is fair to say that India has a long way to go in accepting and recognizing the existence and legal protection of sound and other non-conventional trademarks.
An application for registration of a trademark has to be filed on Form TM-A through a qualified attorney/trademark agent specifying that the application is for registration of a sound. The application needs to be accompanied with a sound file and musical notations for the sound.
Trademark registration in India can subsist in India perpetually subject to timely renewal of the registration and non-cancellation of the trademark registration.
Any mark which lacks in distinctiveness (viz. cannot act as source identifiers of the goods/services) or is covered by any of the prohibitions contained in the legislation will render it ineligible for trademark registration.
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