By Ananyaa Banerjee and Sandhya A. Parimala
A sound plays a crucial part in recognizing a brand and, as a result, plays an important role in recollection of that brand. For example, Britannia’s jingle, ‘Ting Ting Ti Ting,’ is instantly associated with the brand when heard. The function of a sound trade mark is to uniquely identify the origin of the products/services, transcending language and visual elements. A sound lingers in the mind of the listener and the listener subsequently associates the source or event with that sound and, thus, the sound may be eligible for trade mark registration. Further, a sound trade mark also helps the illiterate and visually impaired people to immediately associate a brand and aids in promotion over audio platforms/media. Sound mark builds an image of the brand in the mind of the listener and helps them to identify it with ease.
Position of sound trademarks in different jurisdictions
Article 15(1) of TRIPS states 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”. The registration and protection of trade marks is governed by the TRIPS agreement and as far as the agreement is concerned, a trade mark should be able to perform its primary functions and it is not mandatory for a trade mark to be tangible, visually perceptible or graphically representable.[1] Therefore, the registration of non-conventional trade marks, especially sound, has become very common in the United States and the European Union.
POSITION IN THE EUROPEAN UNION
In the European Union, previously according to Article 2 of the EU Directive 89/104/EEC[2], the capability of representing a trade mark graphically was an important factor in determining the registerability of a trade mark.
In the case of Shield Mark BV v. Kist[3], the ECJ has held that a sound could be trade marked so long as it was distinctive in nature and could be represented graphically. Further, the court has held that description of a sound trade mark in a written manner (by words, onomatopoeia) would not amount to graphical representation as the same is not precise and clear. This had very strictly restricted the registration of sound trade marks, especially the ones that are non-musical.
However, with the implementation of Regulation (EU) 2017/1001 on the European Union Trade Mark, sound marks were added to the definition of trade marks[4] and the requirement of graphical representation was removed. Now, the requirement of graphical representation is no longer a pre requisite while submitting a trade mark application. Article 3 (3) (g) of the EU trade mark Implementing Regulation (EUTMIR)[5] states that in case a sound trade mark is applied for registration, the said mark shall be represented by submitting an audio file reproducing the sound or by an accurate representation of the sound in musical notation and the trade mark shall be entitled to be registered as long as it is distinctive. This has increased the possibility of registering more number of sound trade marks (including non-musical trade marks) and also the legal certainty for users.
As per Guidelines, representation of sound trade mark by way of onomatopoeia, musical notes alone and sonograms are not accepted as a valid representation of the trade mark for EUTM applications, as these would not enable the competent authorities and the public to determine the clear and precise subject matter of protection. The EUTM has not accepted the registration of the sound of a Roaring Lion which was represented by way of sonogram ( 
) as the same did not contain a representation of scale of the time axis and the frequency axis.[6]
The musical notations may be submitted in one single JPEG file or one single A4 sheet and the musical notations must include all elements necessary for interpreting the melody. If the applicant submits an audio file and a representation of a sonograph, the sonograph will be removed from the file by the office.[7] The acting executors of the Estate of Professor Stephen Hawking applied for a sound trade mark in EUIPO.[8] The below mentioned picture depicts how the sound trade marks are represented in the database of EUIPO:
It is pertinent to note that recently Ardagh Metal Beverage has applied for a sound trade mark in the EUIPO for a the opening of a drink can, followed by silence for about one second and bubbling for about nine seconds. In this regard, the Hon’ble General Court of EUIPO in the case of Ardagh Metal Beverage Holdings v. EUIPO[9] has held that the criteria for evaluating the unique character of sound marks is that it must have a resonance that allows the target consumer to recognize it as a trade mark rather than a functional element or an indication with no intrinsic qualities. Therefore, the sound of a can or bottle being opened is purely technical and functional element and that the sound of fizzing bubbles is immediately associated with beverages in the minds of the target audience. Since the appellant failed to prove the distinctiveness of the sound made when opening a drink can, the said mark was not granted registration.
This establishes that sound applied for registration with a functional character, shall not be capable of registration.
Position of Sound Ma
The United States of America has seen more registrations on account of a liberal outlook towards the registration of non-conventional trade marks such as the sound marks.
According to the Lanham Act, the ability to represent a trade mark graphically is not mandatory[10], though, according to Section 1052 of the Lanham Act, a trade mark should fulfill the requirement of non-functionality, distinctiveness, in order to become eligible to registration.[11] The definition of a trade mark according to 15 U.S.C. § 1127[12] includes the terms “symbols” and “devices” which establishes that the USPTO does not prevent any registration of non-conventional trade marks such as the sound marks.
In Oliveira v. Frito Lay[13] the singer claimed that a song sung by her had become her signature performance and that Frito Lay had infringed her trade mark in that song by using it an advertisement. In this regard, the court has held that musical works are entitled for trade mark protection and they cannot be deprived of trade mark protection merely because it was already protected by copyright. Further, the court held that, since the song does not possess the feature of distinctiveness, the same is not entitled for protection.
Further, the courts in US have accepted representations through sonograms or sound recordings.[14] MGM has registered the Lion Roar trade mark in the US through a sonogram.[15] Further, ESPN’s repeated three notes on Sports Center is registered as a sound mark in the US.[16]
The United States mainly focuses on the doctrine of functionality and distinctiveness, while determining the registerability of a trade mark and therefore, registering a sound trade mark in United States is simpler, provided the same satisfies the doctrines of functionality and distinctiveness. Some of the examples of sound trade marks registered in United States are NBC Entertainment Chimes[17]; Looney Tunes Theme Song[18] etc.
It is interesting to note that the USPTO has allowed the registration of common sounds as trade marks, owing to their acquired distinctiveness. However, when Harley Davidson applied for the registration of a “V-twin engine” sound as the trade mark[19], the same was rejected registration and oppositions were also raised against it stating that said sound is not unique and that the sound is not constant for all of its motorcycles and varies depending on the model of the motorcycle. In view thereof, Harley Davidson had to abandon its application in the year 2000.[20]
Further, music artist Pitbull’s famous yell “EEEEEEEYOOOOOO!” has been registered as a sound mark in the US. It is an interesting one since this is an unusual case of an artist getting a trademark registration for a sound for the same as a musical recording as well as live performances. [21]
Position of Sound trademarks in India
The United States of America has adopted a liberal approach towards the registration of non-conventional trade marks including the sound marks, whereas the European Union is more cautious in its reception of these marks. India, through the Draft Manual of Trade Marks, has mostly adopted the European Union’s approach towards the registering of a non-conventional trade marks.
Even though a sound trade mark is not expressly defined in the Trade Marks Act, the Trade Mark Rules 2017 has specifically mentioned about the process of registering a sound trade mark, which establishes that the Indian Trade Marks Act does not prevent any registration of the sound trade marks. Therefore, as per the definition of a trade mark in Section 2(1) (zb) of the Trade Marks Act, 1999, the essentials for registering a sound trade mark is also (a) capability of representing it graphically (b) capable of distinguishing its goods or services. According to Rule 26 of the Trade Mark Rules, 2017[22], a sound track can be registered as trade mark by submitting a sound clip along with the musical notations, with the length of the sound clip not exceeding 30 seconds. The submission of musical notations should also fulfill the criteria of graphical representation. Further, the draft Manual of Trade Marks also provides that “A trade mark may consist of a sound and represented graphically by a series of musical notes with or without words. Applications for sound marks must clearly state that they are sound marks. Otherwise the application will be examined as if it were a word and/or device mark (e.g. in the case of musical notation)”
A sound mark as a trade mark can uniquely identify the commercial origin of the products and services. Later, the sound track should have factual distinctiveness and should be able to immediately recall value of sound with the product or the service.[23] The acceptability of a sound mark must, like words or other types of trade marks, depend upon whether the sound is or has become a distinctive sign; that is whether the average consumer will perceive the sound as meaning that the goods or services are exclusively associated with one undertaking.[24] Non-musical sounds are also accepted as trade marks by the Indian Trade Marks Registry, and they can be represented in conventional staff notations to get most possible close resemblance to the sound.[25]
As per the draft of Manual of Trade Marks Practice & Procedure, issued by the Trade Marks Office, India, the following sounds may not be accepted for registration as trade marks:
- Very simple pieces of music consisting only of only I or 2 notes;
- Songs commonly used as chimes:
- Well known popular music in respect of entertainment services, park services;
- Children nursery rhymes, for goods or services aimed at children;
- Music strongly associated with particular regions or countries for the type of goods/services originating from or provided in that area.
Some of the registered sound marks in India are:
| Sound Trade Mark | Application Number | Graphical Representation | Applicant | Application Date |
| TARZAN YELL (sound mark with spectrogram) | 1748778 |  |
M/S. Edgar Rice Burroughs Inc. | October 29, 2008 |
| ICICI Bank (corporate jingle music) | 1807772 |  |
ICICI Bank Limited | April 16, 2009 |
| – | 1904243 |  |
Britannia Industries Limited | January 01, 2010 |
| WEB EX SOUND MARK (logo) | 1988652 |  |
Cisco Technology, Inc. | July 02, 2010 |
| NSE theme song-sound mark | 2152244 |  |
National Stock Exchange of India Limited Trading as National Stock Exchange of India Limited | May 31, 2011 |
| Thump of a motorcycle in speeding state | 3044834 |  |
Eicher Motors Limited | September 01, 2015 |
| Sound mark | 3838573 |  |
Reliance Industries Limited | May 21, 2018
|
| Sound Mark | 3995841 |  |
Zippo Manufacturing Company | November 12, 2018 |
| YOODLEE (sound mark) | 4350866 |  |
SAREGAMA India Limited | November 18, 2019 |
| MASTERCARD acceptance tone | 4104215 |  |
Mastercard International Incorporated | March 01, 2019 |
From the above mentioned list of trade marks, it can be observed that the Indian Registry has also allowed sonograms, spectrograms and onomatopeia to be registered as trade marks. There are multiple marks, including the famous Tarzan’s yell[26], which have been registered on the basis of sonograms and spectrograms along with the electronic music file (even though the Registry called for staff notations).
It is important to note that, a proprietor, while filing for a sound trade mark should be able to prove (a) the distinctiveness of the sound, (b) that the sound is not functional in nature such as the sound of a motorbike for motor vehicles, (c) that it is not common to trade.
Challenges faced in Protection of a Sound Mark
Even though there is a possibility of registering a sound track as a trade mark, there may be various practical problems during the registration and subsequent enforcement of a sound mark.
-
- 1.
Difficulty in Decoding the Musical Notes
-
- : In the Shield Mark case
-
- , the ECJ has held that musical notes comprising a stave and cleft is an intelligible, precise and stable method of representing sound, and the same has been followed in India. We see most of the sound \ marks registered only by way of musical notations, though, in this regard, there occurs a major difficulty for the people who are not music-literates, to read and decode the musical notes in order to establish whether there is any similarity or conflict in order to raise objections against the same. Also, determining or establishing the distinctiveness of a sound mark may be difficult where there are only few pitches changed, be it during the examination stage or an opposition procedure. In a musical work, such as the classical chords which are found on the same 7 chords, it appears that there is same chord progression used in the opposed song
-
- , and therefore, determining the distinctiveness of the mark would become difficult. Also, in the case of proving the infringement, it might be difficult to establish the similarity between the sound and its tone. There might also be confusion with respect to the composition and comparison of the aural similarity.
-
- With the enactment of the Trade Mark Rules, 2017, the Registry has now started accepting the submission of the audio clips for applying for a sound trade mark. The MP3 format can be easily accessible and heard by any person, and this would enhance the process of examination of trade marks and contentious matters such as cancellation and opposition proceedings with respect to sound marks.
-
- The same would be enabled by proper access to the audio clip in the Trade Marks Journal and the Registry’s online status page. However, establishing the distinctiveness of a sound by way of just a 30 second sound track may prove to be difficult.
2. Problem in Registering a Non-Musical Trade Mark: A musical sound mark may be represented through the graphical representation of the musical notes. However, in case someone wishes to register a non-musical trade mark in India, then the same would be difficult to represent it graphically. The proprietor must invest in extra care while representing the non-musical trade mark. The main difficulty with representing the non-musical trade marks graphically is that, they do not give knowledge on the exact frequency or pitch of the sound that is to be registered. Further, if such sound is played on different instruments, it would give different variations of the sound, thereby not having any specific way of identifying the sound.[30] However, the Indian Trade Marks Registry is encouraging the registration of non-musical trade marks by way of representation through staff notations. In order to ease the registration of non-musical trade marks in India, it would be advisable to adopt the United States’ process of registering a non-conventional trade mark, wherein graphical representation is not a pre-requisite for registering a trade mark.
3. Overlap with the Copyright Law and Chances of Copyright Infringement: Even though a separate relief is sought through the Copyright law and Trade Mark law respectively, there is still ambiguity on the point regarding issues containing the preservation of the moral rights of the music composers. The question is whether the use of a short segment from a copyrighted musical work will invoke copyright infringement. It is pertinent to note that Section 11(3)(b) of the Trade Marks Act, 1999 states that a trade mark shall not be registered and/or its use in India is liable to be prevented by virtue of law of copyright. This infers that, a trade mark is rejected registration if it is in conflict to any copyrighted work. In this regard, the Indian courts have stated that, if the owner of the copyrighted work and the author have given their consent for registering a small segment of the copyrighted work, then in such case, a sound mark may be eligible for registration.[31]
Conclusion
With the enactment of the Trade Mark Rules, 2017, the process of registering a sound trade mark has become much simpler. Further, to reduce other challenges such as the representation of the non-musical trade marks, the way forward may be to adopt the method of accepting graphical music notations written on a digital medium by way of free software available on the Internet. This helps the composer to listen to their composition and determine if the musical notations actually sound like the one which they intend to apply for. Further, this method would also be helpful to the examiners of the trade marks in determining the actual sound and graphical representation of the sound trade mark. In any case, with the change in perception with respect to audio marketing, advertising slogan and environmental sound design and branding, brand owners must invest in creating sound marks for a wider connection with the brand and take steps to protect the same.
[1] Dr. Mwirigi K. Charles & T. Sowmya Krishnan, Registrability of Non-Conventional Trademarks: A Critical
Analysis, 6 International Journal of Research and Analytical Reviews 914, 914-923 (2019).
[2] A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.
Ms. Sanshya Parimala, Junior Associate at SSRANA has assisted in the research of this article.
[3] Shield Mark BV v. Kist, Case C-283/01, The European Court of Justice.
[4] Article 4 of Regulation (EU) 2017/1001
[5] COMMISSION IMPLEMENTING REGULATION (EU) 2018/626 of 5 March 2018, laying down detailed rules for implementing certain provisions of Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark, and repealing Implementing Regulation (EU) 2017/1431.
[6] https://guidelines.euipo.europa.eu/1803468/1789996/trade-mark-guidelines/2-5-sound-marks
[7] https://guidelines.euipo.europa.eu/1803468/1789732/trade-mark-guidelines/9-7———–9-3-7-sound-marks
[8] EUTM 017975948
[9] Ardagh Metal Beverage Holdings v. EUIPO, T-668/19.
[10] Linda B. Samuels & Jeffrey M. Samuels, Colour Trademarks: Protection under U.S. Law, 15 Journal of Public Policy & Marketing 303, 303-307 (1996)
[11] 15 U.S. Code § 1052
[12] 15 U.S.C. § 1127: The term “trademark” includes any word, name, symbol, or device, or any combination thereof— (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
[13] Oliveira v. Frito-Lay Inc (251 F3d 56 (2d Cir 2001).
[14] Vatsala Shay, Conventionalising Non-Conventional Trademarks Sounds and Scents: A Cross-Jurisdictional Study, (2011) 6 NALSAR Student Law Review 128 available at: http://www.commonlii.org/in/journals/NALSARStuLawRw/2011/9.html, last accessed on January 17, 2022.
[15] Registration No. 1395550, Dated August 15, 1985.
[16] Registration No. 2450525, Dated April 06, 1999.
[17] Registration No. 916522, Dated January 23, 1970, https://www.uspto.gov/sites/default/files/72349496.mp3
[18] Registration No. 2469364, Dated February 29, 2000, https://www.uspto.gov/sites/default/files/75934534.mp3
[19] Application No. 74485223, Dated February 01, 1994.
[20] Prashanth Shivadass, Sound Marks in India: Exploring non-conventional branding, Bar and Bench available at: https://www.barandbench.com/view-point/sound-marks-in-india-exploring-non-conventional-branding#:~:text=One%20such%20notable%20advancement%20is,under%20The%20Trademarks%20Act%2C%201999.&text=Non%2Dmusical%20sounds%20have%20been,is%20%E2%80%9CMGM’s%20lion%20roar%E2%80%9D, last accessed on January 16, 2022
[21] Registration Nos. 5877076 and 5877077.
[22] Rule 26(5) of Trade Mark Rules, 2017 states the following: 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.
[23] Registering Sound Marks in India-Trade Mark Rules 2017, accessible at: https://www.mondaq.com/india/trademark/603306/registering-sound-marks-in-india-trade-mark-rules-2017#:~:text=A%20sound%20mark%20is%20a%20non%2Dconventional%20trademark.&text=Sounds%20can%20serve%20to%20identify,does%20not%20exclude%20such%20marks. , last accessed on January 17, 2022.
[24] Draft Manual Ch II, at 12.2.5.
[25] Akshay Ajayakumar and Srinjoy Das, Sound Marks: How Sound is the Requirement for Graphical Representation?, Indian Journal of Law and Technology, available at: https://www.ijlt.in/post/sound-marks-how-sound-is-the-requirements-for-graphical-representation, last accessed on January 17, 2022.
[26] Application No. 1748778, Dated October 29, 2008
[27] Shield Mark BV v. Kist, Case C-283/01, The European Court of Justice.
[28] Shradha Rajgiri, Anita Bharathi, Sound Marks in India: Exploring non-conventional branding [Part II], Bar and Bench, available at: https://www.barandbench.com/view-point/sound-marks-in-india-part-ii-exploring-the-non-conventional-branding
[29] Dheeraj Kapoor, India: Sound Mraks: A New Perspective available at: https://www.mondaq.com/india/trademark/598438/sound-marks-a-new-perspective#:~:text=India%3A%20Sound%20Marks%3A%20A%20New%20Perspective&text=In%20India%2C%20sound%20marks%20such,name%20of%20an%20Indian%20entity.
[30] Akshay Ajayakumar and Srinjoy Das, Sound Marks: How Sound is the Requirement for Graphical Representation?, Indian Journal of Law and Technology, available at: https://www.ijlt.in/post/sound-marks-how-sound-is-the-requirements-for-graphical-representation, last accessed on January 17, 2022
[31] Shradha Rajgiri, Anita Bharathi, Sound Marks in India: Exploring non-conventional branding [Part II], Bar and Bench, available at: https://www.barandbench.com/view-point/sound-marks-in-india-part-ii-exploring-the-non-conventional-branding