Sound: An Unconventional Trademark

By Pranav Gupta and Isha Tyagi, Symbiosis Law School Noida

Editor’s Note: This paper attempts to analyse the Indian law dealing with the registration of “unconventional trademarks”, more specifically with the registration of a sound mark, whose application is submitted through graphical representation. The authors refer to certain instances wherein sound marks have been registered in other jurisdictions and the Indian position on the same.  The authors also present the shortcomings in our legislation.

INTRODUCTION

Intellectual Property Rights allows people to assert ownership rights on the outcomes of their creativity and innovative activity in the same way that they can own physical property.[i] Trademark is one of the areas of intellectual property and its purpose is to protect the mark of the product or that of a service. Hence, a trademark is defined as a mark capable of being represented graphically and which is capable of distinguishing the goods and services of one person from those of others and may include shape of goods, their packaging and combination of colors, they include a device, brand, heading, label ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof.[ii]

In order to cover all important aspects of the non-conventional Trademarks the paper has been divided into three parts; where this first part deals with a brief introduction and the development of Trademark laws combing it with Unconventional Trademark. The second part of the paper deals with the unconventional trademark in particular with “Sound” as an Unconventional Trademark. In the third part the laws in India has been explained, its development and few international examples, the drawbacks in the system and critique.

Let’s first focus on the actual development of Trademark and what constitutes as one:

In the recent times the field of trademark has witnessed a considerable change which is worth to be discussed. It is important to know about the differences in trends in the field of trademark which has brought up new types of trademark such as sent mark, collective mark, colour mark and feel marks etc. the adoption of the TRIPS agreement has recognized these new trends in the trademark fields which have influenced in the modern say business which runs on the basis of the representation made by the associated marks and the reputation and identification gained by those marks. India has made necessary changes in is trademark law to complement the mandate of TRIPS agreement. There are certain unconventional trademarks which are making rounds in the spear of trademark law which go beyond the current framework of the trademark law both at international and national level. Therefore, it is pertinent to know such new types of trademarks and nontraditional or non-conventional trademarks to be recognized all over the world due to the innovative and new trends developing each day.[iii]

The trademarks law in India is very closely related to commerce and has kept pace with changing times and globalization.[iv] The current trade mark regime is the third one and is in line with the international trends and is an attempt to harmonize our law in accordance with the widely accepted principles and our international obligation under Paris Convention and TRIPS Agreement.

As technology continues to evolve, products are being distributed, sold and advertised in new ways. The challenge is how to protect and enforce the selling power of a brand that is no longer limited to a trademark, but rather is a combination of a colour scheme, a layout and product packaging. In addition, slogans, jingles and advertising [v]storylines can all help to create an association with a brand. In India, the Trademarks Act 1999 replaced the Trade and Merchandise Marks Act 1958 and amended and consolidated the law relating to trademarks in India. Primarily, the new act was considered necessary for India to comply with the Agreement on Trade-Related Aspects of Intellectual Property Rights and to meet its obligations as a member of the World Trade Organisation. Under the old act, unconventional trademarks such as colour combinations per se, three-dimensional marks, smells, sound and tastes were incapable of being registered.

SIGNIFICANCE OF THE STUDY

National laws and international treaties refer to an open-ended definition of a trade mark. Article 15(1) of TRIPS[vi] acknowledges that any “sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trade mark”. Where the registration of sound as an unconventional trade mark is very common in U.S.A and U.K. the jurisprudence on trade marks in India is yet to be properly established and settled. The Indian judiciary is having a progressive in approach in the matters of Trade Marks Law and is taking guidance from various precedents. However, the new economic situation in the world and Indian liberalized economy keeps throwing in new challenges and as any other area the law keeps evolving. The subject matter for this paper is an analysis of the legal aspect of sound as a non- conventional trademark in India.

This paper is an attempt to cover all the important parts of the provisions related to the topic. The perfect equality of logic and reasoning with respect to the legal provisions gives the impression that everyone with the basic knowledge of statutory interpretations can traverse without any trepidation.

NON-CONVENTIONAL OR UNCONVENTIONAL TRADE MARKS

Trademarks are traditionally understood as marks which uniquely identify the commercial origin of products and services. A non-traditional or non-conventional trademark is a new type of trademark which does not belong to the pre-existing exhaustive category of a traditional trademark, and is often difficult to register, but which nevertheless fulfills the essential criterion of being a trademark – uniquely identifies the commercial origin of the product.[vii]

In recent years, trade mark registries and courts have grappled with applications for silhouettes, shapes, scents, textures, tastes, short cartoons, single colors, body movements, technical concepts, the positions of labels on products and Tarzan’s yell as trademarks.[viii] This invasion of the unconventional is due to the abstract nature of the legal definition of a trade mark. On the one hand, trade mark law has embraced an open-ended definition that emphasizes the functional, rather than the ontological status of a sign.[ix] Any sign which does the communicative work of a trade mark, by distinguishing goods or services on the basis of trade origin, can be registered as one.[x] On the other hand, trade mark registration systems have historically developed around paradigmatic subject matter: a conventional or traditional trade mark that is visual and consists of words, devices or a combination of the two.[xi] The registration of these Unconventional Trademarks is as follows:

  1. The unconventional marks should be inherently distinctive.
  2. They should be capable of distinguishing the good from the other goods.
  3. They should be capable of being graphically represented.

While such new types of marks raise interesting conceptual questions, they are of a more immediate and pragmatic concern to an Indian audience. It has been widely reported that the Indian trade mark registry recently registered a sound mark for Yahoo,[xii]followed by another for Allianz Aktiengesellschaft,[xiii] while the Delhi High Court has responded favorably to a trade mark infringement claim to protect the shape of Zippo lighters.[xiv]

It has been observed that:

“Unconventional marks are today’s more outré elements: smell, sound, colour, shape and even taste and gesture. Until recently, such things were thought to be unregistrable and largely unprotected at common law. This position is changing internationally. Smell, sound, colour and even shape marks now appear in many trademark registries and trademark registration and treaties.” [xv]

Some of the Unconventional Trademarks which have become known to us over a period of time are as follows:

  • Color marks
  • Shape marks
  • Sound marks
  • Scent marks
  • Moving image

Thus, there is a global trend to consider unconventional trademarks for registration.

SOUND: AN UNCONVENTIONAL TRADEMARK

In recent years, the practice of trade-marking sounds has exploded across the globe, with the USPTO leading the distinctive sounds tally. In Australia, the Trade Marks Act was amended in 1995 to broaden the definition of a trade-mark to specifically include shape, colour, sound, or scent. It then took nearly a decade for the European Court of Justice to conclude that sounds could function as trade-marks in Europe. Most recently, India granted its first sound mark for the Yahoo “yodel”.[xvi]

The Trademark manual confirms that the Trademarks Act neither explicitly excludes sound marks from registration nor does it stipulate that a trademark must be visually perceptible. The act provides only that the trademark must be “capable of being represented graphically” besides being capable of distinguishing. Therefore, a trademark may consist of a sound and be represented by a series of musical notes, with or without words. The manual states that no sound marks will qualify, prima facie, for acceptance without evidence of distinctiveness. In particular, simple pieces of music consisting of only one or two notes, songs commonly used as chimes and nursery rhymes for goods or services aimed at children would not qualify as sound marks. Thus, sound mark registrations would remain thin on the ground.[xvii]

Cases Influencing Development

Sound can in some instances become a sign, distinct to a particular trader. For example, the distinct start-up tune of the Nokia mobile phone, of Microsoft Windows XP or Samsung phone could be recognized by consumers at first instance and thus are undoubtedly distinctive signs. Therefore, the only problem, if at all, that arises in this context is the graphic represent ability of these marks.

The ECJ in the landmark case of Shield Mark BV v. Joost Kist[xviii] while confirming that the standards for graphics representation he Court analyzed the various trademarks, furthermore regarding the description of a sound by virtue of a written description, the ECJ ruled that this lacked precision and clarity and hence did not constitute a graphical representation. Regarding on Onomatopoeia, the ECJ noted that there was a difference between the sound sought to be trademarked and the onomatopoeia, once pronounced. Therefore, there was no precision and clarity; hence it did not constitute graphical representation.[xix]

Something similar was set out by the Court in Sieckmann to apply to sound marks as well, observed, where the court stated as follows:

“Those requirements are not satisfied when the sign is represented graphically by means of a description using the written language, such as, an indication that the sign consists of the notes going to make up a musical work, the indication that it is the cry of an animal, or by means of a simple onomatopoeia, without more, or by means of a sequence of musical notes, without more. On the other hand, those requirements are satisfied wher ethe sign is represented by a stave divided into measures and showing, in particular, a clef,musical notes and rests whose form indicates the relative value and, where necessary, accidentals.”

The Court ruled that as per Article 2 a sign needed to possess two features: the capability of graphical representation and the characteristic of distinctiveness in that the sign will enable consumers to distinguish between the goods and services of two or more firms. Sound, the ECJ opined, could be graphically represented. If a sound was distinctive, the Court stated that there was no reason why it could not receive trademark protection.[xx]

It must be noted that ‘As a practical matter, however,not everyone can read written music. Moreover,written musical notes while indicating pitch, normally will not indicate tone, and different tones can be used, namely, musical notes give a ‘description’ of the music but not the music itself. An apparent solution would be to deposit a digital recording of thes ound with the registrar instead of graphical representation.[xxi] On the need for the requirement of graphical representation; the same was required especially as these signs were not capable of visual representation.[xxii] Most people can easily identify familiar sounds such as the famous A.R. Rahman composition that is now known as the “Airtel ring tone”. Now, however, an increasing number of companies are seeking to register special sounds. The Trade Marks Registry has recently allowed registration of a sound mark in India, to Allianz AG.[xxiii]

Moreover, representation comprising musical notes can only be extended to musical works. The Shield Mark decision thus, in not envisioning non-musical sounds, had, perhaps inadvertently, restricted the number of potential sound trademarks.[xxiv]It is arguable that the decision did not contemplate non-musical sounds because the dispute before it pertained to a musical work; nonetheless, the authoritative tenor of the judgment seems to imply that the recommendations made are exhaustive ones, applicable to all sounds. It is however heartening to note that in 2005, the OHIM, in the context of non-musical notes, has taken the American way and has accepted representation by means of an sonogram accompanied by the sound file.To make the representation more clear, it is suggested that a written description of the sound too should be given. However this description should not be a crucial criterion in that even if it is not wholly precise, if the sonogram is so, the mark should be registered.

Unfortunately, India has not upgraded its law and continues to endorse the Shield Mark criterion. Sound marks are regarded as unconventional and the biggest challenge to their registration lies in their incapability to be graphically represented—a precondition to registration.

LAWS IN INDIA

Trademark protection in India has improved tremendously in the past 10 years. To meet its obligation under the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights, the Indian government enacted the Trademarks Act 1999 (in force since 15th September 2003). The government then upgraded the facilities and infrastructure of the Intellectual Property Office (IPO) – for instance, by introducing electronic filing for trademark applications.[xxv]

A reading of Sections 2(1)(zb)[xxvi]and 2(1)(m)[xxvii]of the Act shows that the definition of “trade mark” has been widened to include shapes, packaging and combination of colors. As specified in the Trade Marks Manual[xxviii], this is an inclusive definition including any mark as long as the mark is capable of being represented graphically and capable of distinguishing the goods or services of one person from that of the others. Nonetheless, it has been stated that colours, shapes, sounds and smells will require “special consideration” during registration.

Though it is true that the non-conventional trademarks need not necessarily be represented in a graphical manner but they may be used to describe and define the mark adequately provided in such a manner that the descriptions and definitions are clear, precise and easily accessible. The Indian legislation on the other hand has explicitly laid down that the need for marks to be “graphically represented”. It is conditional that a mark be graphically represented when:

  1. A graphical representation can precisely determine what the sign is;
  2. the graphical representation can substitute the mark used by the applicant because it represents that sign and no other; and
  3. it is reasonably practicable for a person inspecting the register, or reading the Trademark Journal, to understand what the trade mark is.

Hence, with respect to the graphical representation of sound marks, India has simply imported the Shield Mark doctrine. The Trade Mark Registry has not sought to probe into whether representation through musical notes is intelligible to everyone, and whether it is all-encompassing. The government has now turned its attention to laying down a framework for uniform, transparent and efficient working of the Trademarks Registry, among other things. The IPO, after holding meetings and inviting comments from stakeholders on its maiden Manual for Trademark Practice and Procedure, recently released a revised draft. There are no changes in the revised manual with regard to guidelines for the examination of unconventional trademark applications. At the time of writing, it is unclear whether the Trademarks Registry will adopt the revised manual as it stands, Nevertheless, it is worth examining these guidelines in detail.[xxix]

INSTANCES OF REGISTRATION

Three non-conventional trademarks have received registration in India so far. Yahoo!’s yodel is the first non-conventional mark to be registered. The yodel was represented through musical notes.[xxx] The shape of the Zippo lighter was also granted registration, which was later confirmed in a trademark infringement suit in the Delhi High Court, on the ground that it was distinctive.[xxxi] The latest non – conventional to be registered is a sound mark, held by a German company Allianz Aktiengesellschaft.[xxxii]

There are two points of interest which comes to procedural requirements for non-conventional marks. The first of these concerns the flagging up of non-conventional marks on the application form, so that special rules can be applied. The Trade Marks Rules[xxxiii] and Manual are very clear that in certain cases, the application forms must indicate the manner in which a mark is non-conventional. The importance of this categorization on the application form is noted in the OHIM Examiner’s Manual:

“The categorization of marks (word, figurative etc.) serves a number of functions. Firstly… it establishes the legal requirement for the mark to be represented, secondly it can help understand what the applicant is seeking to register and finally it facilitates research in our database”.[xxxiv]

However, given the open ended definition of a trade mark, not all categories of non-conventional marks are mentioned in the Rules, so this leads to the second point. Trade Mark examiners are entitled to ask for further and better particulars, including a written description of the trade mark being applied for.[xxxv] While the written description requirement is not compulsory,[xxxvi] for suspected non-conventional marks this should be liberally used to request additional information so the sign being applied for can be defined appropriately.[xxxvii]

There are many sound marks registered in different countries around the world. Jingles, such as  the Nokia ring tone, “roar of a lion” used by MGM (where a sound sonogram or spectrogram  adequately represented the roar as it depicted pitch, progression overtime, and volume) , and the chime used by NBC, all have a distinctive  character, and assist in the identification of  products, thus defining their commercial origin.[xxxviii]

The European Union has registered the signature tone of Nokia Corporation as below:

1

Similarly, MGM lion’s roar is registered as below:

 2

CONCLUSION

Primarily there exists no difference between a “non-conventional” and a “conventional” trademarks and there is no justification in quarreling about whether the former represents an undesirable restriction of free intellectual property resources or not. Non-conventional marks are remarkably unsteady of origin and are rarely used without additional words or figurative marks to back them up. Since the trademark law is of a global character it is evident that the same is dynamic in nature and the local laws have to keep on updating themselves quite often in order to keep in pace with the changes and to be able to tackle the technical impediments it may have to come across frequently.

In a palpable sense it can be said that the Indian Trademark law has a finally caught up with modern marketing and the draft manual has picked up several issues providing a robust structure which can be allowed to gradually evolution the principles in the said zone. India being a very active member in the world intellectual property arena should be able to make these changes and be able to protect the businesses of numerous makers and also the goodwill of the consumers.

Edited by Hariharan Kumar

[i] Anita Rao and V.Bhanoji Rao, Intellectual Property-A Primer(1st edition, Eastern Book Company),pg 1

[ii] Source http://www.businessgyan.com/content/view/623/220/ article written by Santhosh Vikram Singh as on

15th Nov,2003,accessed on May 4th,2009.

[iii]Sreenivasulu N.S, “Law Relating to Intellectual Property”(Pg.118-119 Partidge India Publication)

[iv] Introduction to Intellectual Property-theory and practice(Kluwer Law International,1997)pg184

[v] Rachna Bakru & Manav Kumar, “India’s Approach to Non-Conventional Trademarks”, http://www.worldtrademarkreview.com/Magazine/Issue/32/Country-correspondents/India-Ranjan-Narula-Associates, Visited on, 13/9/2014.

[vi] Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, Marrakesh; Agreement Establishing the World Trade Organization, Annex 1C (1994) 33 I.L.M. 1197.

[vii]Emerging Trends In Intellectual Property Law:Non-Conventional Trademarks by Institute of International Trade, available at www.iitrade.ac.in

[viii]Non Conventional Trade Marks In India By Dev Gangjee Vol. 22(1)

[ix]Unconventional Trademarks: The Emergent Need For A Change by Harsimran Kalra

[x] Neil Wilkof, Daniel Burkitt ,Christopher Stothers, Trade Mark Licensing(2nd edition Sweet and Maxwell)

[xi] Ibid [5]

[xii] P. Manoj, Yahoo Awarded India’s First Sound Mark; Nokia in Queue LIVE MINT, Aug. 22, 2008; Yahoo! Yodels into India’s Trade Mark Registry MANAGING INTELLECTUAL PROPERTY WEEKLY NEWS, Sep. 1, 2008.

[xiii] Yet Another Sound Mark Granted, available at, http://spicyipindia.blogspot.com/2009/ 07/yet-another-sound-mark-granted.html.

[xiv] Zippo, IA 7356/2006, (High Court of Delhi) (13 July 2006) (H.R. Malhotra, J). The decision is of symbolic importance but very limited precedential value since it concerns an ex parte ad interim injunction order, based on a prima facie case of infringement. There is no detailed analysis applying the infringement test to shapes and the validity of the shape mark was not challenged.

[xv] Vaver D, “Unconventional And Well Known Trademarks”, Singapore journal of legal studies, 1 (2005) 16.

[xvi] http://www.iposgoode.ca/2010/10/the-unconventionality-of-sound-marks/

[xvii] Mohit Lahoty, “Registering Unconventional Trademark”, http://www.iam-magazine.com/reports/Detail.aspx?g=2585df7b-fa7a-469d-85d2-601788181d36, visited on 14/9/2014.

[xviii] Majumdar A, Sadhu S & Majumdar S, The requirement of graphics representability for non-convantional trademarks, Journal of Intellectual Property Rights, 11 (5) (2006) 313, 316.

[xix] Vatsala Sahay, “Conventionalizing Non-Conventional Trademarks of sounds and scents: A Cross-jurisdictional Study”, NALSAR law Review.

[xx] In an apparent endorsement of the potential of sound trademarks, the Court also noted that sounds and noises were perceptible by human beings, and similar to visual representations they too could be remembered and recalled.

[xxi] In an apparent endorsement of the potential of sound trademarks, the Court also noted that sounds and noises were perceptible by human beings, and similar to visual representations they too could be remembered and recalled.

[xxii] The ECJ also reiterated the rationale behind graphical representation as stated in Sieckmann. A clear,precise, self-contained representation was required in order that third parties could ascertain over what the holder had a trademark over.

[xxiii] http://businesstoday.intoday.in/story/trade-marks-to-sound-marks/1/4677.html

[xxiv] Ibid

[xxv] SUPRA 17

[xxvi] “Trade mark” is defined as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from choose of others and may include shape of goods, their packaging and combination of colours , and in relation to Chapter XII (other than section 107), a registered trade mark or mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark, and in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate to a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark.

[xxvii] “Mark” includes a device, brand, heading, lable, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.

[xxviii] See, Draft Manual Ch II, at 5.2.2 (“ applications for sound marks must clearly state that they are sound marks”).

[xxix] SUPRA 17.

[xxx] Peter Ollier, Yahoo Yodels into India’s TM Registry, 183 MANAGING INTELLECTUAL PROPERTY 14 (2008); Shamnad Basheer, India’s first “Sound Mark” Registered, SPICYIP, 19 August, 2008, available at http:// spicyipindia.blogspot.com/2008/08/breaking-news-indias-first-sound-mark.html (last visited on 15 August 2010).

[xxxi] Zippo v. Anil Manchandani (unreported, CS (OS). 1355/2006). See also Shwetasree Majumdar, “Zippo shape mark protected by Indian Court”, SpicyIP blog, August 18th, 2006, available at http://spicyipindia. blogspot.com/2006/08/zippo-shape-mark-protected-by-indian.html (Last visited on 15 August 2010).

[xxxii] Santosh Singh, Yet Another Sound Mark Granted, SPICYIP, 30 July 2009, available at http://spicyipindia.blogspot.com/2009/07/yet-another-sound-mark-granted.html (Last visited on 15 August 2010).

[xxxiii] See, Rule 25(12): An application for the registration of a trade mark for goods or services shall …

(c) be considered as a three dimensional trade mark only if the application contains a statement to that effect;

(d) be considered as a trade mark consisting of a combination of colours only if the application contains a statement to that effect.

[xxxiv] OHIM Examiner’s Manual (Jun 2009), at 2.7.1.

[xxxv] See, Rule 29(3)(ii):

 “Where, however, the Registrar considers that the reproduction of the mark furnished by the applicants does not sufficiently show the particulars of the three

dimensional mark, he may call upon the applicant to furnish… a description by words of the mark”.

[xxxvi]Rule 25(12): “An application for registration of a trade mark for goods or services shall:-

  1. a) Explain with sufficient precision a description by words of the trade mark, if necessary to determine the right of the applicant”.

[xxxvii] Dev Gangjeee, “Non-Conventional Trademarks in India”, http://www.manupatra.co.in/newsline/articles/Upload/BB1047DA-5CCF-41BC-9C82-487F5DC570D3.pdf, viewed on 13/9/2014.

[xxxviii] Emerging trends in Intellectual Property Law: Non-Conventional Trademarks, http://iitrade.com/Download/NON-CONVENTIONAL_TRADEMARKS.pdf, visited on 12/9/2014.

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