The following article is brought to you by the Trademark experts of BananaIP (BIP) Counsels, India’s leading new age IP firm. This post discusses Sound marks as a non-conventional trademark and how sound marks are registered in India and the US.
The ever increasing competition in the commercial arena and a budding consumer society has directed several brand owners to adopt innovative methods in order to surpass their competitors, and boost their own products in order to achieve a distinctive frame. Trademarks as understood conventionally are marks which help in identifying the commercial source of products or services distinctively.
Trademarks have traditionally been associated with logos, letters, words etc. The exhaustive list of traditional trademarks therefore is seen as being similar yet different to the new categories of marks which are also known as the non-conventional trademarks (NCTM’s). Non-conventional trademarks have grown in their popularity over the years and with the expansion of the definition of “trademark” by way of legislative changes, they have come to be widely accepted in recent times.
A trademark becomes non-conventional when it does not fall within the conventional set of marks such as logos, letters, words etc. but is rather are based on shape, smell, motion, sound, taste and texture.
In this post, emphasis is laid on briefly discussing Sound marks as it is this non-conventional categorizes of trademark that has gained immense popularity and attention in recent years compared to the other categories of NCTM’s.
A sound mark is a non-conventional trademark where the sound is used to perform the trademark function of uniquely identifying the commercial origin of the products or services. In today’s market, ‘sounds’ are being increasingly used as a popular means of identification of products in the marketplace.
Sound Mark in Indian Law
Several countries have expressly included ‘sound’ in the definition of a trademark through amendments to the domestic trademark laws. Although the Indian Trademarks Act, 1999 does not define a ‘sound trademark’, the act has explicitly laid down that the marks have to be capable of being “graphically represented”. Therefore, a sound represented graphically by a series of musical notes with or without words can receive protection under the act. Yahoo’s yodel registration in 2008 for instance was the first sound trademark to be registered in India. The registration of sound marks is quite rare in India because of the parameters set forth by the Act. As mentioned earlier, any trademark application for a sound mark must satisfy two conditions – 1. The application must clearly state that the mark is a sound mark, failing which the application will be considered as if it were a word / device mark. 2. Sound marks must be represented with graphic representation of the sign by a musical stave divided into measures and showing in particular, a clef, musical notes and rest, indicating relative value, sharps, flats and naturals.
Meanwhile, it is important to note that simple pieces of music consisting of only 1 or 2 notes, songs commonly used as chimes, well known popular music, nursery rhymes and music associated with particular regions cannot be registered as sound marks.
Sound Mark in United States
U.S has been the front runner when it comes to sound mark registration for the past 60 years. For registration of a sound mark in the US, a description of the sound mark along with an audio or video reproduction of the sound must be provided. This ensures that not everyone is able to read the musical notations.
Few popular sound marks that have been registered across the world include:
- Lion’s Roar of MGM
- The Tarzan Yell
- Sound of Harley Davidson
- Nokia tune
- ‘Intel inside’ music jingle
- ICICI jingle
The registration of unconventional marks in particular ‘sound marks’ is still a grey area that needs to be further explored.
Authored by the Trademarks division at BananaIP (BIP) Counsels.
