SOUND MARKS: A DOMESTIC AND INTERNATIONAL PERSPECTIVE

Over time there has been a considerable amount of shift from the traditional marks such as word mark or a logo mark towards non-traditional marks such as sound marks, position marks, smell marks amongst others. 

 

In this article, we are focusing on sound marks; however, before we discuss various aspects, we are defining what a sound mark actually. Typically, a mark which is audible (which may amount to a melody) and is distinctive enough to act as a source identifier of one's goods or services qualifies as a sound mark. 

 

Just like the nature of a sound mark which is unconventional, the prosecution of an application of a sound mark is equally unconventional and quite challenging. Therefore, it becomes imperative to take a brief look at the international stand on granting registrations to sound marks.

 

Sound Marks in the United States of America

 

Having the first sound mark registered nearly 70 years ago, the material information and guidelines for obtaining registration of a sound mark in the United States of America, include but are not limited to- a description of the sound mark along with an audio reproduction of the sound (as an electronic file) must be provided, a musical score sheet submitted as a .jpg or .pdf file.

 

Some of the recognized and well-known sound marks that have been registered in the U.S include:

 

1. Lion's Roar of MGM (https://www.uspto.gov/kids/MGMRoar.mp3, U. S Registration No. 1395550)
2. Mattress Discounters' HAVE A GOOD NIGHT'S SLEEP ON US, MATTRESS DISCOUNTERS jingle (U.S. Registration 1754344- https://www.uspto.gov/sites/default/files/74219263.mp3)
3. ESPN's repeated three notes on Sports Center (U.S. Registration No. 2450525).

 

Sound Marks in the European Union

 

In the landmark case of Shield Mark BV v. Kist, the European Court of Justice (ECJ) laid down that for a sound mark to be considered registrable, it should be capable of being graphically represented and should have the characteristic of distinctiveness that will enable consumers to distinguish between the goods and services of one from another.   

 

It also laid down that a stave divided into bars and showing a clef, musical notes and the rest showing the relative value helped determine the pitch and duration which may constitute an authentic and realistic representation of the melody/sound. This mode of graphical representation of the sounds meets the requirements and may be considered easily intelligible. Such representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective to qualify for registration.

 

On the other hand, requirements to qualify as a sound mark are not satisfied when the sign is represented graphically by means of a description using the written language, such as an indication that the sign consists of the notes going to make up a musical work, or the indication that it is the cry of an animal, or by means of a simple onomatopoeia.[1]

As a description of a sound may lack precision and clarity and quality, the ECJ has refused a written description of sounds as being equivalent or satisfying the requirement of graphical representation.

 

Famous sound marks in India and judicial interpretation governing their registrability-

 

The India Trademarks Act, 1999 defines a trademark under Section 2(1)(zb) as "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."

 

With the rise in cut-throat competition, brand recognition, variety of marketing strategies and an increase in the need to cater to a larger consumer base with more creative and innovative ideas, the trademark regime in India is aiming at providing for protection for various non-traditional/ non-conventional marks.

With the earliest sound mark registrations being granted in the name of Yahoo Inc for their three-note yodel in as early as the year 2008 (Registration No. 1270406 in Classes 35, 38, and 42), to ICICI Bank's acquiring statutory rights on their corporate jingle (Registration No. 1807773 in Class 36), the biggest challenge with the registrability of non-traditional marks has been the ability to represent them graphically (which is a sine qua non for registration) and to prove distinctiveness.

 

As per the Trademarks Manual, an application for a sound mark should:-

 

• clearly state that the mark applied for is a sound mark (otherwise the application will be examined as if it were a word and/or device mark);
• meet with the graphic representation requirements with a representation of the sign by a musical stave divided into measures and showing, in particular, a clef, musical notes and rests, indicating relative value, and sharps, flats and naturals (accidentals).
• The acceptability of a sound mark must depend upon whether the sound is or has become a distinctive sign; and
• Prima facie, no sound marks will qualify for acceptance without evidence of factual distinctiveness.

 

Also, as per the Trademarks Rule, 2017, an application for the registration of a sound trademark should consist of the reproduction of the same 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. In light of the rise in audio branding and associated benefits, this rule was incorporated with an attempt at making procedural and rights perspective uniform.  Such an MP3 format is beneficial, as the same can be accessed and heard by one and all including laymen who may in a general course not be able to comprehend the notations as they would not be well versed with them. This shall in turn also ease the whole examination process and litigious actions/proceedings.

 

The most common objection being raised by the Trademarks Office while adjudication of the registrability of the sound marks in India is Section 9 - descriptiveness and lack of distinctiveness or procedural objections such as submission of the sound clippings in MP-3 format.

 

On the other hand, a few of the known and registered sound marks in India as on date are as follows:-

 

1. Royal Enfield's 'thump sound' produced by idling and throttling of the bullets (Registration No. 3044833). For this particular case, the TMO had raised objections on relative grounds of refusal, in response to which the Registered Proprietor claimed dissimilarity in the competing sound marks;
2. ZIPPO MANUFACTURING COMPANY's obtained registration in the year 2019 for their signature click of the cigarette lighter (Registration No. 3995841 and can be heard at- https://tsdr.uspto.gov/documentviewer?caseId=sn87264868&docId=MRK20161212080312#docIndex=21&page=1)
3. Mastercard acceptance tone (Registration No. 4104215 and also available to be heard at - https://newsroom.mastercard.com/videos/acceptance/)

 

Pitbull's famous loud "EEEEEEEYOOOOOO!" now a registered trademark

 

The United States of America being at the forefront in granting registrations to sound marks has once again granted a rather unusual sound mark a trademark registration. The same being that of Pitbull's famous loud yell, also known as, GRITO. While it is not the first sound mark registration granted by the USPTO, it is a unique one, because this is the first time that an artist has acquired a trademark registration for a sound for the same as a musical recording as well as live performances (US Registration Nos. 5877076 and 5877077). The intent to have this GRITO registered as a trademark began in 2017, when a similar yell was used in the famous Columbian track 'Mi Gente'.

 

Trademark Laws worldwide, including in the Lanham Act, defines a trademark as something that acts a source identifier and is capable of distinguishing the goods and services under one trademark from that of another. Over the years, even 'sensory marks' like sound, smell and colour have acquired registrations for trademark because they have satisfied the most important criteria i.e., acting as a source identifier and capability of distinguishing the goods and services with others in the trade. When we speak of these criteria, especially for artists, it is their immediate recognition by the public that speaks of their success. Pitbull has achieved this success and his yell or GRITO, which is used in almost all of his songs, has now come to be easily recognized by the audience as originating from him - thereby not only acting a source identifier for Pitbull but also having the capability of distinguishing his musical works from those of others. However, in addition to the above requirements, just like a common or to say non-inherently distinctive word mark, a common sound mark also must show that it has 'acquired distinctiveness' by way of its use. That is to say, people yell all the time, so in order for a particular yell to become a trademark, it must acquire distinctiveness so that people recognize that it identifies a source rather than simply being a yell.[2] In this regard, the Trademark Trial and Appeal Board (TTAB) of the USPTO has held[3] that "a sound mark depends upon aural perception of the listener which may be as fleeting as the sound itself unless, of course, the sound is so inherently different or distinctive that it attaches to the subliminal mind of the listener to be awakened when heard and to be associated with the source or event with which it is struck. Thus, a distinction must be made 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".

 

Pitbull's GRITO, being able to satisfy all the conditions, was held to be a trademark.

However, had the Pitbull's GRITO been applied for in India, it would have in all likelihood faced the following challenges:

 

1. Objection on Section 9 of the Trademarks Act, 1999 - As highlighted above, a prima facie requirement for a sound mark to be registered in India, per general practice of the Indian Trademarks Office would be to show that the sound mark is distinctive and has acquired distinctiveness by way of its use. Pitbull's GRITO has acquired distinctiveness since it has been used by him in almost all his songs over the years, what would have to be established is its acquired distinctiveness and use in India.

 

1. Musical notation of the sound mark - As opposed to the USPTO's requirements in filing of sound marks where the Applicant only needs to give a description of the sound mark and its audio recording; in India, it is important that the sound marks when applied for, are submitted with musical notation of the same. The question that arises is, would a trademark like the GRITO, which is a unique yell, would be written in the form of musical notation.

 

Conclusion

 

It is evident that the essence for any unconventional mark such as a sound mark to be qualified as a trademark remains the same in almost all jurisdictions i.e., their capability to act as a source identifier, ability to distinguish the goods and services from those of others in the trade and acquired distinctiveness if it is a common sound. However, whether or not a sound mark will be registered in a particular jurisdiction is also directly proportional to the kind of sound mark it is and if it accurately fits the filing criteria of that jurisdiction.