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:
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.
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:-
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:-
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. In this regard, the Trademark Trial and Appeal Board (TTAB) of the USPTO has held 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:
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.