Protection of Sound Marks in India
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INTRODUCTION
Intellectual Property Law has always focused on protecting the rights of inventors and encouraging innovation and modernisation. Following its purpose and objective, the discovery of the importance of sound in a particular brand’s value was recognised in India and the rules relating to registering Sound Marks were added in Rule 26(5) of the Trade Marks Act in 2017.
In simple terms, a Sound mark is a form of a trademark wherein the brand utilises a particularly unique sound to signify the commercial origin of the goods/service.
Classic examples include the famous Intel logo composed by Walter Werzowa, the MGM Lion roaring or the Netflix logo in recent times.
Sound Marks, however, are classified as Non- Conventional trademarks i.e. trademarks that involve aspects like the appearance, smell, colour, the texture of the products.
It is not specifically stated that marks of such nature are a part of the general definition of a trademark as section 2(z)(b) of the describes that a “trademark” means 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.
However, the Trademark Rules, 2017 provided a clear acceptance and clarity with regards to sound marks.
RISE OF SOUND MARKS:
With technological advancements on the rise, companies had to catch up with the times and strive to carve a distinct image. Every aspect of a product is used to ensure that customers recognised and chose their product/service.
Creating a unique sound is one of the tools of "Audio Branding". Audio Branding simply put, is a strategic way of positively encouraging consumers to register and differentiate among similar products.
NBC Universal Media or commonly known as NBC was the first company to understand the importance of investing in a sound mark and to register the classic three-note chime. The sound originally was composed in 1927 but was officially recognised as a trademark of the media giant in the year 1950.
Registering a sound mark, however, proved to be a difficult task to accomplish. This was demonstrated by the unsuccessful attempt of the motorcycle brand, Harley-Davidson. In the year 1994, the company applied to register the sound they claimed was unique to the Harley V twin engines. The application faced tremendous amounts of opposition where the matter reached litigation, with the competitors claiming that the sound wasn’t a unique feature rather a common sound that all single-crankpin V-twin engines produced. The company eventually had to drop its application in the year 2000.
The first sound mark to be registered in India was the Yodel of Yahoo Inc, in the year 2008. The company initially applied to register a human voice yodelling the word “Yahoo” in 2004.
ICICI Bank, however, was the first Indian owned entity to obtain registration in 2011 from the Indian Trademark Registry for its corporate jingle. This paved the way for audio branding sounds in India.
Some of the registered sound marks in India include sounds like the four-note bell chime of Britannia, the National Stock Exchange theme song & the well-known guitar theme song of Nokia.
REGISTRING A SOUND MARK IN INDIA
Sound Marks till the year 2017 were not recognised as valid trademarks. The Trademarks Registry followed a conservative approach and did not entertain the idea that sound marks could provide brands with a distinct image.
The restrictive definition of trademarks mentioned in Section 2(z)(b) of the Trademarks Act, 1999 -created various obstacles for brands.
Before 2017, to register a sound mark a company had to represent the mark graphically, in the case of sound marks, graphical representation meant in the form of musical notes. This proved to be a major complication as the process was highly impractical.
The Trade Mark Rules, 2017, however, simplified the process of registering a sound mark and focused on the growing trend of digitization.
Rule 26 states that “Where an application for the registration of a trademark consists of a sound as a trademark, the reproduction of the same shall be submitted 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".
The other pre requisite for brands is to make sure that the sound is “factually distinctive” and represents them properly.
PROTECTION OF TRADEMARKS
Section 29 of the Trade Marks Act, 1999 states various remedies to ensure that infringement of registered trademarks does not take place and they remain protected. As sound marks are officially a trademark the same remedies can be used to tackle with infringement.
A trademark is said to have been infringed upon when an unregistered user attempts to use trade a mark that is similar or identical to a registered mark in the course of his trade thus rendering the registered mark obsolete and creating confusion among the consumers.
This is best explained in the S.29(1) as “A registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trademark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trademark".
There are civil and criminal remedies that one can turn to, Section 27 of the trademark act states that one can apply for the court to either a grant an interim injunction or a Permanent Injunction.
The court has the power to not only pass interim injunctions but also the ability to order for the delivery of the infringing material bearing the trademark of the plaintiff.
The court can also order the alleged infringer to submit a detailed list of profit that has been earned at the cost of causing damage to the trademark owner.
Recently, there has been a slow but steady rise of trademark judgements, some of them have set forth precedents that ensure that registered trademarks have a strong layer of protection.
- Cadila Health Care v. Cadila Pharmaceutical Ltd.
The Supreme Court held that it is insignificant whether the plaintiff and the defendant trade in the same field or the same or similar products. The court laid down certain criteria to work out passing off of an unregistered trademark:
o The nature of the mark
o The degree of resemblance between the marks
o The nature of goods for which the marks are used
o Similarities in nature, the character of goods of rival traders
o The group of purchasers who are likely to buy goods bearing the marks
o Other circumstances that may be relevant.
CONCLUSION
Primarily there is no specific difference between “non-conventional” and “conventional” trademarks. There is also no reason to debate about how the previous represents an undesirable restriction of free property resources. Since trademark law is globally applicable and progressive in nature, domestic laws need to evolve and be ready to tackle the technical impediments that we may encounter frequently.
India is an active member of the world property arena and should be ready to progress and protect its companies and consumers.
