Unconventional trademarks: protecting sound branding in India

Trademark is a type of intellectual property which recognizes a distinguishable mark, sign, design etc. which gives a unique identity to any product or service. A trademark may be owned by an individual or a business entity. This article is in reference to business owned trademarks. The marketplace competition is fierce and ever present and growing exponentially in modern times. That is why, it is very important to ensure that the appropriate protection is secured for each aspect of the business which grants it its uniqueness. This security is guaranteed by registration of trademarks. In India, the Trademark Act of 1999 (hereinafter Act or 1999 Act) was enacted with the purpose of granting protection to the owners of a particular trademark and provide legal remedies for implementation of such protection.

A common understanding of a trademark is usually something that is visible: colour, design, sign, name, font, etc. Section 2(zb) of the 1999 Act defines trade mark as a mark which can be represented graphically, to be used to distinguish goods or services from others and which may include shape of goods, packaging, colours etc. However, as mentioned above, tough competition in the market place has led individuals or companies to get creative with all aspects of their brand which enables consumers to be able to distinguish their product from that of their competitions. Trademarks in this regard are not only a tool for brand building but also a security to consumers of the authenticity and quality of the product or service they pay for. In recent years therefore, apart from the traditional conception of largely visual trademarks, some unconventional trademarks have cropped up in use. These include sound marks, smell marks, hologram mark, motion mark, taste mark and trade dress[1]. This focus of this article is on sound marks.

The use of sounds associated with a particular brand adds to the identity of a product. Sound or audio branding is the umbrella term used to refer to the use of music associated with the identity of a brand. Sound marks as trademark is a concept which is not new in India but there is no provision in the Indian Trademark Act which talks about sound marks or even non-conventional trademarks in general. However, things have been different for sound marking since the Trademark rules of 2017 came into effect. Electronic media, televisions and product advertisements are to be duly credited the rise of sound branding the subsequent development of sound marks in trademark protection. Some famous examples are the Intel chimes which play when the Intel logo is displayed, MGM’s Lion roar etc. NBC chimes was the first sound mark to get legal protection in the United States in the year 1947. Similarly, the Nokia five toned jingle was Australia’s first registered sound mark in 2007[2]. In India the Yahoo yodel was the first one to get sound mark registration in 2008 following ICICI Bank’s corporate jingle[3]. Even though such sound marks were registered, there were also no rules governing the procedure in which sound marks were to be registered. At the same time, there was also no bar under the existing Trademark Act to not allow sound registration. In 2017, the European Union Intellectual property Office (EUIPO) released a set of new rules regarding registration of sound marks. India adopted them and released the Trademark Rules, 2017 which now governs the sound marking registration in India. One of the unalterable rules of trademark registration in India is that the mark has to be novel and distinguishable from everyone else and secondly, it has to be capable of being represented graphically. Therefore, under Section 26 (1)(iii)(ii) of the 2017 Trademark rules, registration of a sound mark is done by submitting the said sound in an Mp3 format which must not exceed 30 seconds, along with a graphical representation of the musical notes of the particular mark. The EUIPO however, no longer mandates the graphical representation format for sound marks anymore, but instead widens the scope of protection to be granted to sound branding and gives the green light to present the sound in any ‘appropriate form’ suitable to the available technology, as long as the “representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.”[4] The move away from graphical representation shows the impact and importance of sound branding, how progressive the EU is becoming towards accepting the possibility of granting more freedom regarding sound marks. India has just started.

Since distinctiveness of sounds is a mandatory requirement to accord trademark protection, then what happens to common sounds that brands or companies often used in their sound branding; for example the lion roar of MGM. Unlike the usual visual trademarks, the conventional criteria to judge distinctiveness does not apply well to non-conventional trademarks such as sound marks. In an article written by Prasanth Shidass and Anita Bharathi, they talk about the requirement of common sounds to prove ‘acquired distinctiveness’[5]. Acquired distinctiveness is usually a concept which is applied in case of consideration of protection to be granted to unregistered trademarks and what it essentially means is that over time that particular sound has become popularly attached to the particular brand or company in the general consumer market and even if it is not legally registered as a trademark, it ought to be protected to stop unfair trade practices. However, some brands like Harley Davidson who filed an application for the registration of their ‘V-twin engine’ but were denied by the USPTO. It is not difficult to see why objection were raised against granting such protection to Harley Davidson. Engine sounds is not something uncommon particularly not in the context of a bike company trying to gain its sound rights. It was also pointed out that engine sounds differ based on the motorcycle model that they are put in. A problem which arises from this ‘acquired distinctiveness’ criteria is that the smaller companies and businesses who do not have the resources for getting the desired publicity, get felt out of the protection ambit. Of course in India, the requirement of graphical representation is also a step taken to ensure each registered sound maintains distinctness. Therefore even if brands use common sounds, the particular notation of the sound in graphical representation must be different. The issue of ‘likely to create confusion’ still remains. The jurisprudence on this topic is very little at the moment. Further developments will give us a better picture of were sound marking stands in India.

[1] Diganth Raj Sehgal, ‘Non-conventional trademarks and the procedural requirements for their registration’ (ipleaders 27 April 2021) https://blog.ipleaders.in/non-conventional-trademarks-procedural-requirements-registration/

[2] Prasanth Shivadass, ‘Saound Marks in India: Exploring non-conventional branding’ (Barandbench 20 November 2021) https://www.barandbench.com/view-point/sound-marks-in-india-exploring-non-conventional-branding

[3] ibid

[4] ‘Graphical Representation- Types of mark’ https://euipo.europa.eu/ohimportal/en/elimination-of-graphical-representation-requirement

[5] See note 2

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