Author – By Chitwandeep Kaur and Anshit Aggarwal
Introduction:
The increasing advent of the technology in the Indian commercial consumer market and rapidly changing consumer preferences, have made the companies to become think tanks. To compete in the commercial market, distinguish its products, and gain repetitive consumers, the company has to adopt innovative methods. The sound composition or music is one of such innovative methods. The sound/music will play the similar role of logos or symbols used for brand recognition. The legislation only protected logos, letters, and words, but with the introduction of a new notion of a non-conventional trademark in India, the trade-related components of intellectual property rights have expanded. This raises the question whether the sound/music is capable of being registered as a trademark under the Indian Trademarks Act, 1999 (“Act”). This article analyzes the issues of registration of sound marks, without explicit definition under the Act.
Meaning of Trademarks & Sound marks
- Trademarks: Trademarks as per section 2 (zb) of the Act[1], means a mark having following characteristics:
- Graphically Representable
- Distinguishable
- Includes shapes, packaging, and color combination.
To get a trademark registered in India the mark/name should have ‘uniqueness’ and ‘distinctiveness’.[2] In layman’s language any mark, name, symbol capable of being legally or established by use to distinguish the company or it’s product from other market players.
- Soundmarks: Trademarks are further divided into various categories such as word marks, well-known marks, device marks, unconventional marks, etc. Sound marks are the unconventional marks, which are not expressly defined under the Act. But the music represented in the form of musical notes can be said as the sound mark.
For Example: The First sound mark that got registered under theTrademarks Act, 1999 was yodel of Yahoo in 2008.
Sound Marks in India
Recognition of Sound Marks in India:
As per section 2(z) of The Trademark Act, 1999, a trademark is a “mark” representable in “graphical form” and capable of distinguishing the products and services to that of others. It is very important to understand the scope of words, “mark” , for registration of the sound marks. The “Mark” is defined under section 2(m) of the act. “The marks include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.”[3] The non-exhaustive nature of the definition of the marks widens the scope for non-conventional marks such as taste, smell, sound/music, etc. to be registered as trademarks.
Before 2017, due to a lack of technological advancement, it was difficult to get a sound mark registered. But, in 2017, the technology made it possible to get sound marks registered by the introduction of Trademark Rules, 2017. As per Rule 26 (5)[4], for the sound mark to be registered, following essential elements must be submitted:
- MP3 track not exceeding thirty-second in pendrive, and,
- Graphical representation of the track.
From the above discussion it is very clear that, “graphical representation”, of the MP3 track for registration of the sound mark is a very essential element. We need to understand the objective behind the graphical representation. In “Shield Mark BV v. Joost Kist H.O.D.N. Menex”,[5]the courts laid down the objective behind graphical representation was a clear description of the pitch and duration of the sound. It can be said that despite the lack of explicit definition of the sound marks, they can be registered as trademarks in India.
Criteria for Registration of Sound Marks in India:
There are no explicit grounds mentioned under The Trade Marks Act, 1999 for the refusal or grant of sound marks. The ground which can be drawn are:
- Distinctiveness: As per Section 9(a) of the act, the mark should be distinctive from the products of the other. In “Imperial Tobacco Co. of India Ltd. v. Registrar of Trademarks and Anr”[6], the court held that distinctiveness is an essential feature for registration of a trademark. A trademark can acquire distinctiveness, even overnight, and therefore, it depends from case to case.[7] . In plain language distinctive means, characteristic of one person or thing, and so serving to distinguish it from others and distinguish means, be an identifying characteristic or mark of or which is able to be recognized or point out a difference.
- Graphical Representation: According to section 2(z) read with Rule 26(5) of the Trademark Rules, 2017, the graphical representation is an important criteria. The graphical representation of the said mark is one the criteria as it makes it comfortable for the other right holders to understand, for what the trademark registration has been sought. Further, it makes it easy for the public to understand the content of the trademark.[8]
- The other criteria mentioned under the Trademark Rules, 2017 is a submission of an MP3 track not exceeding thirty seconds.
The introduction of Trademark Rules, 2017, has aided innovators in surviving in the commercial market, as well as assisting innovators in coming up with more and more company ideas, which will eventually help to target a larger number of consumers.
International Perspective of Sound Marks
Ardagh Metal Beverage Holdings submitted an audio file containing the “sound of a drink tin can being opened, followed by one-second silence and last, the fizzy sound for nine seconds approximately”.[9] The court rejected the application for the grant of sound mark on the subsequent basis:
- Distinctive Character & Three-Dimensional marks: The court ruled that, for assessing the distinctiveness of the sound mark, the standards are the similar as of the other marks as per Article 7(1)(b) of Regulation (EU). Through the above judgment, the court meant that the sound mark should be able to be perceived in such a manner that the general public could not associate or link it with any other commercial origin of goods and services.
- Commercial Origin: The court additionally pointed out that the commercial origin of the drink can not be assessed on the basis that “those goods are silent until they are consumed”. The court discovered that there are many products within the market, which make sound only when they are consumed otherwise they are silent. So, it will be still unfair for the whole market if the commercial origin of the drinks can be assessed on this basis.
Remarks:
It is evident that “graphical representation” is essential for the registration of the soundmarks in India. According to Section 17 of The Trade Marks Act, 1999, the mark should not be considered in part but entirely. It means that the exclusive right of the trademark will be granted to the owner for the sound only. That leaves the graphical representation of sound in musical notes unprotected and is a problem . For the protection of the graphical representation, the owner needs to separately file an application beneath the Copyright Act, 1957. That means for the registration of the sound mark, one has to pay the expenditure of two IPR entirely.
It is suggested that the requirement of the graphical representation ought to be removed. The sound marks have been recognised in MP3 format as a result of technological advancements There is an incentive to reduce the graphical representation requirement if extra technological enhancements can be accommodated in India.
[1] The Trademarks Act, 1999, Section 2(zb)
[2] Yahoo! Inc. v. Akash Arora & Anr., 1999 ARB. L.R 620
[3] The Trademarks Act, 1999, Section 2(m)
[4] The Trademark Rules, 2017, Rule 26(5)
[5] Shield Mark BV v. Joost Kist H.O.D.N Menex, (1999) RPC 392
[6] Imperial Tobacco Co. of India Ltd. v. Registrar of Trademarks and Anr., AIR 1968 Cal 582
[7] Ishi Kholsa v. Anil Aggarwal, 2007 (34) PTC 370 Del.
[8] Arka Majumdar et.al., ‘The Requirement of Graphical Representability for Non-Conventional Trademarks’, 11,313, JIPR, (2006).
[9] Ardagh Metal Beverage Holdings v. EUIPO, T-668/19
