Should graphical representation of sound trademark be omitted ?

As an IP Lawyer, I am thinking to write something on sound Trademark.

First of all it is correct to say that everyone is familiar with the words 'sound' and 'Trademark' in their individual capacity of word. The origin of sound i.e. 'Naad',   according to the mythology, first came into existence from the 'damaru' (a small drum)  played by Almighty Lord Shiva. As per medical science, sound is produced by the vocal cords. i.e. origin of sound.

Now coming back to the topic sound Trademark,  in the era of science and technology, sound is used as a Trademark in commerce and industry and it becomes a source identifier of the origin of goods or products or services. Smell, Sound and Taste are all considered as non traditional trade marks. In respect of Sound Trademark, there are certain methods to be considered like visual representation, made by sonogram, spectrogram, spectrum and oscillogram as per the information provided on www.wipo.int. It is also provided on web site of WIPO  as per standard committee  of WIPO,  for registration of a sound mark, the representation of sound mark is to be made of a musical notation on a stave or a description of the sound constituting the mark or of an analog or digital recording of that sound or any combination thereof.

When sound becomes a sign which is capable of being represented graphically and of distinguishing the goods or services of one entity from that of other, such sound is considered as trade mark, provided that it fulfills all the conditions of registration  mentioned in law of each country and therefore, Article 15 of TRIPS is directly hit to constitute sound as a trade mark.

As per the information provided on www.inta.org , INTA bulletin Vol63 no. 17, first sound Trademark was registered in India on August 2008. The application was filed by YAHOO ! Inc. for services falling in Class 35,38 and 42. The sound mark of Yahoo was made of a human voice yodeling the word YAHOO!

The countries like U.S.A., U.K. France, Australia have already adopted sound as a trade mark since long. I am going to mention few best examples of sound marks which are registered but not in India. This information is based on website www.uspto.gov

1)72349496 the NBC Chimes: it was first sound mark registered in 1950.

2) 73270308 Insurance "At Beneficial TOOT TOOT You're Good for More"

3) 73553567 MGM- Entertainment- Roaring Lion

4) 74219263 Mattress Discounters - " HAVE A GOOD NIGHT'S SLEEP ON US, MATTRESS DISCOUNTERS

5) 75528557 America Online " You've got mail.

6) 75807526 Yahoo- " YAHOO" yodel

7)76260633 Abbey Carpet " IT'S ABSOLUTELY ABBEY ,AND IT'S ABSOLUTELY THE PLACE TO BE".

8)76316851 America Online - telephone movie directory- " HELLO AND WELCOME TO MOVIEFONE"

9)76586726 Cisco technology- audio conferencing systems- xylophone.

10) 75743899 NOKIA - guitar musical notes.

The concept of registration of sound mark is also recently developed in China and ' Sound of China Radio International' is the first sound Trademark in China. When there is talk of sound mark, and  the name of motor cycle king Harley- Davidson is not remembered, is unfair, this company filed its sound mark application for sound produced by V-twin motor bike engine in 1994 when it was in use, however, in the year 2000 Harley- Davidson left the idea of registration of a sound as its application was opposed  and litigation was made thereafter.

The legal scenario in India in respect of the sound mark has been changed as registration of sound mark is Incorporated in Trademark Rules, 2017 , more particularly in Rule 26(5) of it which says that when an application for sound Trademark is made, the reproduction of the same  shall be submitted in the MP3 format . It should not be exceeding the length of 30 second of recording and it has a graphical representation of its notations.

Thus as per Rule 26 (5) read with section 2 (zb) of the trade marks Act, 1999, it concludes that there are  two  basic legal requirements to be satisfied to get the sound mark registered. 

1) sound mark must be capable of being  represented graphically.

2) it must be capable of distinguishing the goods or services of one person from those of others.

If the above-mentioned conditions precedent is not satisfied,  a sound mark can not be registered.

I am thinking that how it is possible  that all sound marks , being capable  of  distinguishing  the products or services , are  capable of being represented graphically .  Can  notations of sound be drawn in a paper ? Whether notations of sound  represented  on paper can be played by the way of mp3 ? Or  whether the purpose  of sound mark to identify the origin of goods or services  by the particular  music being played is maintained  if notes of music are on paper ? and moreover,  if another mode i.e. mp3 for sound mark is used, then what is the requirement of sound mark being represented  graphically ? How can chirping of birds, roar of lion, sound of water stream which makes human brain in relaxed or happy mood, be graphically  represented  ? Whether the natural rhythm of sound be coded on paper ?

The conclusion of this article would be better if  I give my opinion qua the terms "graphical representation ", should be amended to encourage the registration of sound marks in India.  As per the website http:europa.eu of European Union intellectual property office, in EUTM, the graphical repesentation requirement is no longer applied while submitting a trademark application for the sound mark from 1st October 2017.  The object behind this is to increase legal certainty and to avoid ambiguities. Should we initiate such type of welcoming step to increase the registration of sound marks?

 

Chirag Bhatt 
on 18 August 2017
Published in Intellectual Property Rights
Views : 120
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