The trademark of a product is its identity, an identity which tells the story of its origin and traits.[i] When we say that the trademark of a product is its identity, what we mean is that it is the differential between two products in a marketplace. This ‘differential’ in intellectual parlance is what is known as the ‘distinctiveness’ of a trademark.
But how do we really ascertain whether one product is distinctive in relation to another? The definition of trademark in the Trademark Act[ii] states that it is a mark which is capable of being represented graphically, and the term mark itself is defined as any device, brand, label, heading, word, shape of goods, combinations of colors, etc.[iii] In a 1998 case at the Madras High Court,[iv] it was opined that to gauge whether a trademark is deceptively similar or not, among many other things, the marks have to be looked at from the first impression of a person of average intelligence and that the broad and salient features of both the products have to be considered.[v] On reading both the provisions and the case together, it is clear that the distinctiveness to a great extent is ascertained by an audience’s visual perception.
But is the visual perception the only sensory element which is capable of drawing distinctions in our external environment? Definitely not so. It has been recognized recently that since the fundamental principle of trademark is its distinctiveness, any mark which is capable of being identified by any other sensory perception shall be considered as trademark.[vi] These set of trademarks have been aptly named as non-conventional trademarks, and one form of such trademark is known as sound trademark.
In general terms, sound trademarks are those form of trademarks wherein sounds are utilized as a form of unique identifier, associated with a brand. The Indian Trademark Act, 1999 nowhere defines what is a sound trademark, but considering that the definition of trademark list of different forms is not exhaustive in any way, it is a matter of statutory interpretation that sound trademarks be recognized. And they have been so; in 2008, Yahoo Inc. was the first proprietor to have its iconic yodel to be recognized as a sound trademark. The National Stock Exchange, ICICI Bank, Cisco, Nokia, etc. are some other registered proprietors.[vii]
With no specific provision in picture, how were these trademarks registered? On a perusal of the definition of a trademark, two essential conditions can be listed:
- The mark is capable of being represented graphically
- The mark is capable of being distinguishable from that of any other product.
Both these conditions have to be met, and it is the first condition itself which acts as the primary obstacle for registration of sound trademarks. The graphical representation for a sound trademark is the written description of the musical notes involved. While that seems straightforward in theory, in practice it the varying musical notes just state the pitch of the music, and not necessarily the tone. Both the audience member and the examiner would have to adequately conscious of musical theory to understand the minute differences, which basically throws our test of person with average intelligence out of the window.
Recognizing the problems presented, the Trademark Manual 2017, which deals with the process of registering trademarks, explicitly stated[viii] that where an application for the registration of a trademark consists of a sound, the same shall be submitted in an MP3 format not exceeding 30 seconds, accompanied with the graphical representation of the relevant notations. This measure ensures that graphical representation be substantiated with actual audible recordings to holistically assess the trademark in question. Another set of challenges relates to the nature of sound itself. Questions like whether a single note of music is enough or whether there needs to be a sequence of notes, whether a portion cut from a well-known song, a song which is inherently well known and not distinctive, can be availed as distinctive, whether a sound can be defined as descriptive to the nature of goods, etc. are all questions which require further discussion. Until then it seems like the unique nature of sound trademarks are to be confronted on a case-to-case basis.
Author:- Arjun Sajeevan
LLM Student, Cochin University of Science and Technology
[i] ‘Introduction to Trademark Law and Practice’, WIPO training manual, 10, (World Intellectual Property Organisation, Geneva, 1993)
[ii] Section 2(1)(zb), The Trade Marks Act, 1999, Act no. 47 of 1999
[iii] Section 2(1)(m), The Trade Marks Act, 1999, Act no. 47 of 1999
[iv] Wockhardt Ltd. Vs. Aristo Pharmaceuticals Ltd., 1999 PTC 540
[v] Ibid., Para 25
[vi] Article 15(1), Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), 1995
[vii] Surbhi Pandey, ‘Registering sound marks in India’, Intepat, accessed on 12th July 2020, <https://www.intepat.com/blog/trademark/registering-sound-marks-india/>
[viii] Rule 26, Clause 5, The Trademark Manual, 2017