Auditory Trademarks and Their Registrability

The 2017 Trademarks Rules provide for cancellation forms to be lodged

Brands, logos, and other artistic design and images have all been associated with the title “trademark” in the past. But it doesn’t end there, people might be amazed to know that sounds can be used as a trademark as well.   Corporations are upping their game nowadays by launching innovative means of what could be considered a “trademark” in hopes to pique customers’ interest and excite their senses—smell, taste, sound, touch, and, of course, sight. Sound, like aroma and taste, may instantly grab the interest of customers by instilling a good emotion in their brains, which businesses and brand owners seek to achieve through trademarks in effort to build a distinct customer base. Sound marks are equally as complex to register as other non-traditional marks due to the sheer obstacles it faces in order to be protected, considering that audio was not originally considered as a “trademark.” 

This issue was recognized and widened by the WTO Agreement on TRIPS, which reframed the legal concept of trademark law (Article 15(1)) to encompass any indication capable of differentiating goods or services of a particular source from those of the other in order to be eligible for trademark registration and protection.

Sound marks have been studied and safeguarded in India since a long time, and now that sound has been explicitly recognised as a trademark under the revised Trade Mark Rules of 2017, businesses can obtain specific legal protection for their creative marketing and advertising initiatives to attract customers in the modern day’s fiercely competitive environment. In India, the request for registration of a sound trademark begins with delivering the sound in MP3 format, which must be less than 30 seconds long and produced in a coherent and perceptible manner. That’s not all; in addition to MP3 formatting, graphical portrayal is a required. 

As per the Trademark Act, 1999, trademark 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.“

In accordance with Rule 26 (5) of the Trademark Rules, 2017, the sound mark ought to be a graphical representation of the concepts. Rule 26, Sub rule 5 of the Trademark Rules, 2017 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“.  

It should also be able to independently distinguish and relate itself to the range of products and services of the type of business in order to be registered and protected under the Trade Marks Act of 1999. Sound marks, like other trademarks, must be unique and distinguishable from other sound marks that have previously been used. Sound markings can be recorded as either mechanical or musical sounds.

A community trademark (CTM) must be capable of being visually represented, according to Article 4 of the Council Recognition in the European Union. A sign/mark like this must be capable of standing out amongst its competitors in the market. The European court affirmed the conditions listed in Sieckmann V German Patent Office in Shield Mark V Joost Kist, stating that the essential ingredients of trademark registration are:

• visual representation in the form of images, lines, or characters
• such a representation must be clear, self-contained, precise and accurate, long-lasting, easily accessible, understandable, and objective.

Due to the EU’s strict graphical representation approach, candidates who seek registration of their sound marks face obstacles. Consequently, an application for a CTM may utilise musical notations to visually display their mark. It should therefore be registrable and distinctive enough to pass the Community Trademark Tests.

In US, the criteria to determine whether a sound can obtain trademark registration was extended by the case of In Re General Electric Broadcasting Co., where it was ruled that sound mark registrations were based on the listener’s “aural perception,” which can often be as transitory as the audio itself. That is, the sound is so clearly and innately distinct that it can cling to the listener’s subconsciousness and be connected and correlated with the source through which it entered the listener’s mind, also termed as “source identifier.”

In order to be granted protection in the United States, a sound mark should first prove itself with a unique source identification. In the present day’s extremely competitive and hostile marketplace, firms focus on guaranteeing that they have a profound effect not just on what customers are seeing but also on what they are hearing. Nevertheless, the difficulties are a part of this aggressive promotional approach, and protecting a non-functional mark like sound has merits if a person have a tone that is distinctively linked with their brand. 

Author:

Snehal Bhatia, Research intern at IPTSE Academy & fourth-Year, Symbiosis Law School NOIDA Symbiosis Law School, Noida -Research Scholar for IPTSE Academy