Trade Mark

Section 2 (m) of Trademark act, 1999 defines "mark" as mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any such combination.

Section 2(zb) of Trademark act, 1999 defines "trade mark" as 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 colours.

Sound Mark

The Trade Marks Act, 1999 (Act) does not explicitly define a sound mark.

Sound mark or Sound trade mark is a mark where sound performs the function of source identifier of goods or services originating from an entity.

These Marks Can Be Classified Into Two Main Categories:

1. A musical note that is linked to a product, such as the Britannia Jungle "Ting-Ting–Ti–Ting," which is registered under Application No. 1904243, and
2. The distinctive sound produced by a product itself, such as the "Thump" engine sound, which has been registered as a trademark under Application No. 3044833.

A sound mark is a Non-conventional Mark, Non-conventional trademarks include unique forms like shapes, smells, colors, and sounds, which are different from traditional logos or phrases. Their unusual nature makes them difficult to register, but if they are unique and associated with a brand, they have a better chance of acceptance. These trademarks can be visible (e.g., colors, shapes, motion) or non-visible (e.g., sounds, scents, tastes, textures).

Sound marks generally lack inherent distinctiveness and cannot be registered without proof of acquired distinctiveness, means the sound must have gained recognition or recall value among consumers through use.

The first sound mark to receive trademark registration in India was the 'Yahoo yodel' in 2008. Subsequently, in 2011, ICICI Bank became the first Indian organization to obtain a sound mark registration for its corporate jingle, 'Dhin Chik Dhin Chik.' At that time, however, there were no definitive guidelines outlining the proper procedures for sound mark registration,

particularly concerning the necessity of graphical representation for such marks. For example, Yahoo had to depend on legal principles established by courts in other jurisdictions when submitting its sound mark application. It was not until the amendment of the Trade Marks Rules in 2017 that the requirements for the registration of sound marks were clearly defined.

Applicable Laws and Regulations

Trademarks Act, 1999: According to Section 2(m) of the Act, a trademark is defined as "any mark capable of being represented graphically and which is used in relation to goods or services for the purpose of distinguishing the goods or services of one person from those of another." But this act does not explicitly define a sound mark.

Rule 2(1)(k) of the Trade Marks Rules, 2017 (Rules) defines a graphical representation as "the representation of a trademark for goods or services that can be represented in paper format, including representations in digital format".

To be accepted, a sound mark must demonstrate factual distinctiveness, which can include commonly recognized tunes like chimes, popular songs related to entertainment services, or children's nursery rhymes. Additionally, sound marks need to be graphically represented, either through musical notation or a written description of the sound. Graphical representations may also include onomatopoeic words, sonograms, or spectrograms.

Conversely, if an applicant can show that a sound, while not inherently descriptive, has gained distinctiveness through its use, the application could be considered. For example, a flushing toilet sound used in plumbing services that has developed distinctiveness over time might be eligible for registration.

Trademark Rules, 2017, Section 26(5) states that, "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 which allows for easy and clearly audible replaying accompanied with a graphical representation of its notations".

Section 26(6), "If the Registrar is not satisfied with any representation of a trademark, he may at any time require another representation satisfactory to him to be substituted before proceedings with the application.

Requirements For Filing A Sound Mark Application:

The Trademark rules, first provided for sound mark, as according to Rule 26(5) of the 2017 Rules "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 which allows for easy and clearly audible replaying accompanied with a graphical representation of its notations".

Some Primary Conditions Must Be Met For The Registration Of A Sound Mark Under The Current Legal Framework:

1. The application must clearly indicate that the mark intended for registration is a sound mark. If this is not indicated, the application will be treated as a word or device mark.
2. The application must include a graphical representation of the sound using musical notation.
3. The sound must be provided in MP3 format and should not exceed 30 seconds in duration.

The fundamental requirements for trademark registration should also be satisfied for sound mark applications. Specifically, the sound intended for trademark protection must possess distinctiveness, as generic sounds do not meet the criteria for registration.

Registration of sound mark in India:

Registering a sound mark in India involves a process similar to standard trademark applications, but with specific considerations due to its unique nature:

• Submission of Application: Applicants are required to provide information including their name, address, legal status, classification of goods/services, date of first use, and supporting documentation evidencing the use of the sound mark.
• Examination: Sound mark applications face closer scrutiny regarding distinctiveness and public perception. A clear audio representation of the sound is essential.
• Publication and Registration: Once an application is accepted, it is published in the Trademark Journal, allowing for opposition. If no legitimate oppositions are filed, the mark is registered, thereby conferring exclusive rights.
• Post-Registration Obligations: Registered sound marks must be actively used and renewed every ten years to maintain protection.

Case Laws:
Yahoo! Inc. v. Akash Arora and Another (1999): This case involved the protection of a sound mark for the well-known "Yahoo yodel" in India. The Delhi High Court recognized the distinctive sound as a valid trademark and granted an injunction to prevent its unauthorized use.

Netflix, Inc. v. EUIPO (European Union Intellectual Property Office): In May 2017,
Netflix attempted to register a sound mark in the European Union for its audio cue that precedes program viewing. The European Union Intellectual Property Office (EUIPO) rejected the application, arguing that the sound was too short and simple to signify the origin of Netflix's services. Instead, it was viewed as merely indicating the start or end of a program, failing to fulfill the essential trademark function of indicating source.

In contrast, a more recognizable sound, like MGM's lion's roar, was successfully registered because it effectively conveyed its origin. At the time of Netflix's application, the sound cue had not yet become widely associated with the brand, which influenced the EUIPO's decision.

In October 2019, Netflix filed a new application for the sound mark, this time as a multimedia trademark, including a video that featured the Netflix logo alongside the audio. This combination aimed to clarify the connection between the sound and the brand, addressing the EUIPO's previous concerns. sound mark "Ta-dum," submitted in December 2021 and claiming usage since February 2015, was registered with media articles that predominantly highlighted Netflix as evidence.

Suzuki Motor Corporation: Concerns have been expressed regarding the registration of sound marks, particularly focusing on issues of functionality and resemblance to pre-existing marks. Suzuki Motor Corporation's attempt to register a sound mark characterized as a "Distinct Car Running Sound (of a jet aircraft)," which has faced obstacles under Section 9 (1)(b) of the Act. Despite several hearings, Suzuki has yet to persuade the Examiner of the sound mark's eligibility for registration.

Shield Mark BV v. Joost Kist, This case, while not exclusive to India, has influenced the acknowledgment of sound marks within the country. Indian courts have cited this significant European case, which determined that sound marks can be registered provided they are graphically depicted and possess the ability to differentiate goods or services.

The case addressed the registration of sound marks, concluding that such marks are registrable if they meet the requirements of distinctiveness and graphical representation. The Court specified that written descriptions, onomatopoeia, and musical notes are insufficient for representation. While it did not define a specific mode for representing sounds like a cockcrow, it emphasized that any representation must be clear, precise, self-contained, easily accessible, intelligible, durable, and objective, leaving the implementation details to individual countries.

Metro Goldwyn Mayer Lion Corp. (MGM) v. OHIM, the applicant aimed to register the iconic roar of the MGM lion as a trademark, using a spectrogram to illustrate the sound. However, the application faced obstacles related to the sound's nature and its graphical representation.

The examiner refused the registration on the following grounds:

• The representation did not convey the sound described, making it unclear to the public.
• The mark failed to meet the trademark function of distinguishing goods or services.
• The sonogram lacked scale on both the time and frequency axes, rendering it invalid as a graphic representation.

MGM appealed the decision, but the Fourth Board of Appeal upheld the rejection. They emphasised that sound marks must have high standards for graphic representation, as established by the Court of Justice. While traditional music can be represented via standard notation, animal noises like a lion's roar require different considerations.

The Board acknowledged that although sonograms can depict sounds when traditional musical notation is impractical, the representation's quality must adhere to high standards of clarity to be eligible for trademark registration. Consequently, the appeal was denied, highlighting the challenges of registering non-traditional sound marks.