Understanding Sound Trademark

A Trade Mark is an intellectual property that may consist of a sign, symbol, sound, movement, color, or any other distinctive mark that differentiates a product of one brand from products of other brands. According to the official WIPO website, a trademark is a seconds sign capable of distinguishing the goods or services of one enterprise from those of other enterprises.’ Traditionally, trademarks have been considered mainly as signs or symbols that could be represented as a picture (graphical representation) as well as described in words. But there is an increase in few unconventional trademarks such as the ‘Sound Trademark’.

A Sound Trademark is a type of trademark, whereby sound is used instead of, or along with signs and symbols to perform the functions of a trademark. The Sound Trademark is gaining immense popularity amongst major businesses. According to the WIPO, a sound mark is a mark that may represent a melody that is graphically presented by notes.¹

The Emergence of Sound Trademark in a nutshell

Sound Trademark is a concept that started not very recently and instead has a very long history. One of the oldest Sound Trademark Registrations is of the Lion Roar of Metro Goldwyn Mayer (aka MGM). The first sound to be trademarked was the NBC Chimes.² There have been several Sound Mark Registrations across the globe where the first such registration in India was in the year 2008 whereby Yahoo Inc. was granted Trademark for their ‘Yahoo Yodel’. Several registrations in India followed thereafter.

How-To Register a Sound Trademark

Pr-Requisites

Rule 26(5) provides for registering Sound Marks. To register a particular sound as a trademark, the following are required:

1. The recording of the sound should be in ‘.mp3’ file format loaded onto a USB stick or a CD/DVD.
2. The recording of the sound should not exceed thirty seconds’ time.
3. The recording should be accompanied by a graphical representation of its notation.

All other documents that may be required to file a trademark are required depending upon the case of the applicant.

Registration Process

The entire procedure for registering a sound trademark is the same as registering any other trademark. The following are the steps:

1. Search: In this step, it is searched whether any existing trademark exists or not, which might be similar to the one desired to be registered. Also, it is searched whether the same trademark which is proposed to be used already exists or not.
2. Application Filing: An application has to be filed by the applicant with the Trade Marks Registry.
3. Examination: After a trademark application is filed, it will be examined for any discrepancies. The examiner might accept the trademark, conditionally, or object.³

Once accepted, the trademark is published in the Trademark Journal.

4. Publication: In this step, the Registrar advertises the proposed trademark in the Trademark Journal. During this time, oppositions may be filed by Third Parties. In case, there is no opposition filed for 3-4 months, the trademark then proceeds for registration. In case there is any opposition filed; there is a fair hearing and decisions are given by the Registrar.
5. Registration: Once, the preceding steps are completed, the proposed trademark is then registered. A registration certificate is sent to the applicant and the trademark then remains valid for a period of up toBefore 10 Years.

Government Fees

For Individuals/ Startups/Small Enterprises

The Government Fees charged is about INR 4,500 to INR 5,000.

For all Other Cases

The Government Fees charged is about INR 9,500 to INR 10,000.

India and United States of America: A Comparison

India

Sound Trademark is an old concept though it has only started gaining popularity in very recent times. There has been only a handful number of registrations for Sound Trade Marks in India; the first one being Yahoo Inc.’s yodel in the year 2008. There have been many other sound mark registrations thereafter; some of them are as follows:

1. ICICI Bank – (Corporate jingle – Dhin Chik Dhin Chik)
2. Britannia Industries (Four note bell sound)
3. Cisco – (Tune heard on logging in to the conferencing service Web-Ex)
4. Nokia – (Guitar notes on switching on the device)
5. National Stock Exchange Theme Song

There have even been no cases relating to sound marks. As such, this area of Trade Mark Registration is slowly gaining importance in India. Prior to the passing of the Trade Mark Rules, 2017, non-conventional trademarks were difficult to be registered; the reasons for which could be attributed to mainly the deficit in the scope of the procedure of registration. This lacuna was eradicated by the Trade Mark Rules, 2017. Rule 26 speaks of various types of registrations that may be made under the Trade Marks Act, 1999 and its Rules thereof.

United States of America

The United States of America is one of the fastest-rising markets for intellectual property registrations. The USPTO has dozens of sound marks registrations that are available for listening on its website.⁴ In the United States of America, the Lanham Act is the legislation that controls all federal trademark laws⁵.

According to the USPTO, there exists a difference between “unique, different, or distinctive sounds and those that resemble or imitate ‘commonplace’ sounds or those to which listeners have been exposed under different circumstances” and which lack distinctiveness or brand association.

In the year 1994, Harley Davidson applied for registering its V-twin engine exhaust sound as its sound mark. Nine oppositions were filed subsequently and after 6 years of litigation, Harley Davidson withdrew the application.

Similarity among all jurisdictions

The main similarity between all jurisdictions is the requirement of a ‘.mp3’ sound file along with its graphical representation in the form of notation. Also, the mark proposed to be used must be distinctive. The same is the primary requirement in the US, UK, Australia, India, etc.

Significant Aspects related to Sound Trademark

Can it be used internationally?

Under the Madrid System, a Sound Mark, or rather any Trade Mark can be used internationally. The requirements will be notified by the regional Trade Mark Registry or Offices of each territory. The official website of WIPO states:⁶

“The Madrid System is a convenient and cost-effective solution for registering and managing trademarks worldwide. File a single application and pay one set of fees to apply for protection in up to 124 countries. Modify, renew or expand your global trademark portfolio through one centralized system.”

What are the remedies available for infringement?

Every remedy that is available to the owner or a licensed user of a Trade Mark under ordinary circumstances is available in the case of Sound Marks.

How does Sound Trademark differ from Conventional Trademarks?

Sound Mark is not a conventional trademark, which was used to be categorized as comprising only of logos, pictures, signs, symbols, etc. Instead, Sound Marks comprise the original sound proposed to be used as a trademark as well as its graphical representation in the form of notation.

The main point of difference is that Sound Marks are not static, instead, they are used for ‘Audio Branding’. In the case of Sound Marks, the audio is used to quickly convey to a receiver or consumer, the fact of distinction that the Sound Mark makes regarding its products.

How is Sound Trademark more Beneficial than Conventional Trademarks?

Sound Mark helps in the Audio Branding of products of a business. It not only protects the intellectual property of the user of the trademark but also helps in quickly attracting the attention of consumers when suitable advertising media is used.

How can Startups Impact the Business Environment?

Since Sound Marks are only in the stage of gaining popularity in India, Startups aiming to expand their businesses should make use of Sound Trade Marks which would enable such Startups to create a better brand awareness alongside protecting their intellectual property.

Using Sound Marks through suitable media will also improve in better consumer attraction and will also help in the consumer recalling a brand more clearly than other brands. These can give competitive advantages to Startups.

References

1. https://www.wipo.int/export/sites/www/sct/en/comments/pdf/sct17/bg_1.pdf.
2. https://www.mentalfloss.com/article/12341/8-sounds-are-trademarked.
3. https://www.mondaq.com/india/trademark/517806/process-trademark-registration-
4. https://www.uspto.gov/trademarks/soundmarks/trademark-sound-mark-examples.
5. https://www.uspto.gov/trademarks/soundmarks/trademark-sound-mark-examples
6. https://www.nolo.com/legal-encyclopedia/trademarking-a-sound.html.
7. https://www.wipo.int/madrid/en/.