Practice Area

Registration of sounds as trademark

Author: Kshitij Parashar

Most people think of trademarks as simply words and/or logos. However, as both technology and the way we use it become more sophisticated, the importance of non-conventional signs, such as sounds, to promote brands is unquestionable. Consumers find it easy to identify a particular product or service by reference to a particular jingle, melody or music. With the increasing diversity of business ventures, trademarks related to just two dimensional visual representations have given way to a plethora of nonconventional trademarks that are distinguishable by senses other than sight. This article would be particularly dealing with sound trademarks.

A sound trademark is a non-conventional trademark where sound is used to perform the trademark function of uniquely identifying the commercial origin of products or services. Sounds are capable of satisfying the trademark criteria: they can serve to identify the source or trade origin of a product or service. Under most Conventions and statutory provisions the definition of trademark either covers sound as a trademark, or at the very least, does not exclude such marks. Only a handful of countries have a standard or a set of requirements to be met for sound trademarks. Examples of Sound Marks would be of four-note bell sound of Britannia Industries, default ring-tone of a Nokia mobile phone, sound of the lion's roar at the beginning of an MGM-produced film Corporation, Yahoo’s yodel, thunderous sound of Harley-Davidson etc.. In several countries, recent trademark amendments expressly include sound in the definition of a trademark. These include the United Kingdom, Germany, Italy, New Zealand and Australia.

The Trademark Registry in India has granted registration to ICICI Bank Ltd for its sound mark by registering the very notes that form the jingle. ICICI Bank is the first Indian entity to obtain sound mark registration. The first sound mark to be granted registration by the Trademark Registry was the Yahoo! Yodle. In a milestone trade mark registration for India as well as Yahoo, the country’s trade marks registry, on August 18, 2008, granted registration to India’s first “sound mark” to Sunnyvale, California-based internet firm Yahoo Inc.’s three-note Yahoo yodel. By doing so, the Trade Mark Registry has acknowledged global realities and opened up new avenues for India entrepreneurs to register their brands under the sound marks category.

 

Distinctiveness

The criteria for assessing distinctive character of a sound is similar to that applied to other types of marks. The registrability of a sound mark must, depend upon whether the sound is capable of identifying the goods or services as originating from a particular undertaking, and thus distinguishing it from other undertakings. However, the general public does not necessarily perceive sound marks in the same way as other categories of signs and this may make it more difficult to establish that they are distinctive. Evidence of factual distinctiveness, supported by trade evidence, will be required to register a sound mark to show that the public recognize and associate the sound as a trademark which indicates the goods/services offered by the applicant, and to demonstrate that the sound mark sought to be registered indeed functions as a trademark.

Protection under the Trademarks Act, 1999

The Indian Trade Marks Act does not stipulate any special procedures or criteria to be followed for the registration of non-conventional marks. At the moment, applicants seem to be using musical notations as the representation of the mark, as well as a CD recording of the sound clip to qualify registration. The applicant must provide the following types of information and documentation in order to obtain registration of a sound mark,:

  • An explanation as to whether the identified sound serves any purpose as used on the goods and/or services;
  • An explanation as to whether the identified sound is a natural by-product of the manufacturing process for the goods and/or services;
  • Any available advertising, promotional or explanatory literature concerning the goods and/or services, particularly any material that relates specifically to the proposed mark;
  • An explanation as to the use of sound in applicant’s industry;
  • A statement clarifying any other use of sound by applicant; and
  • An explanation as to whether competitors produce the goods and/or services with the identified sound.

Conclusion

Intellectual Property reflects the idea that its subject matter is the product of the mind or the intellect. As it is the product of a creative and artistic mind it is bound to changes. It can be sold, bought, bequeathed and owned. In its move to grant registration to non-conventional trademarks, the Indian Trademark Registry seems to be truly recognizing the value a mark has, in terms of consumer recognition and brand association. In this age where the modes of marketing and advertising have diversified, granting recognition to varied marks is indeed a positive sign for industries and their brands. Given that the Indian Trade Mark Office has granted recognition to sound marks, the probability of entering other nonconventional marks on to the register can be foreseen.