What is a Sound mark?
A sound mark is a non-conventional trademark where sound identifies the source of goods or services from a particular entity. The Trade Marks Act of 1999 in India does not explicitly define sound marks, but they are recognized as distinct from traditional trademarks like logos and phrases.
The first Sound Mark Registration in India was the “Yahoo yodel” in 2008, followed by ICICI Bank’s corporate jingle “Dhin Chik Dhin Chik” in 2011. Initially, there were no clear guidelines for sound mark registration in India, particularly regarding graphical representation. However, the amendment of the Trade Marks Rules in 2017 established explicit criteria for their registration.
Legal Framework for Sound Mark Registration in India
The Trademarks Act of 1999 defines a trademark broadly, stating it must be graphically representable and used to distinguish goods or services.
Rule 2(1)(k) of the Trade Marks Rules, 2017 further explains that graphical representation can include both paper and digital formats. For a sound mark registration in India to be accepted, it must demonstrate factual distinctiveness and be capable of graphical representation, which can be done through musical notation, verbal descriptions, onomatopoeic words, or spectrograms.
In Trademark Rules, 2017, Section 26(5) it is mentioned that the registration process requires an MP3 file of the sound, not exceeding 30 seconds, accompanied by a graphical notation.
Requirements for Application
To apply for a sound mark registration in India, applicants must follow specific guidelines laid out in Rule 26(5) of the 2017 Trademark Rules.
- The application must explicitly indicate that the mark is a sound mark.
- A graphical representation of the sound using musical notation must be included.
- The sound must be provided in MP3 format, not exceeding thirty seconds.
Furthermore, sound marks must fulfil the fundamental criteria for trademark registration, notably demonstrating distinctiveness. Generic sounds are not eligible for sound mark registration in India.
Steps to Follow for Sound Mark Registration in India
Sound Mark registration in India involves a process similar to standard trademark applications but with specific considerations due to its unique nature:
- Application Submission: The applicant submits essential details such as name, address, legal status, classification of goods/services, date of first use, and supporting documentation for the sound mark’s use.
- Trademark Examination: Applications undergo thorough examination regarding their distinctiveness and public perception. An accurate audio representation of the sound is critical.
- Trademark Journal Publication: Approved applications are published in the Trademark Journal to allow for any oppositions.
- Trademark Hearing: If objections arise, a hearing is conducted where both the applicant and opposing parties can present their cases. The Officer will decide on the application based on this.
- Trademark Registration: If no objections are raised, the trademark registration certificate is issued, granting the applicant exclusive rights to the sound mark.
- Post-Registration Obligations: Registered sound marks must be used actively and renewed every ten years to maintain protection.
Leading Case Laws on Sound Mark Registration in India
Netflix, Inc. faced challenges in the EU when its attempt to register a sound mark for its preshow audio cue was rejected by the European Union Intellectual Property Office (EUIPO) in 2017. The EUIPO argued that the sound was too short and simple to signify the origin of Netflix’s services, ultimately failing to meet trademark criteria. A subsequent multimedia application, incorporating the sound with the Netflix logo, successfully registered the mark in 2021.
Suzuki Motor Corporation encountered significant challenges in registering a sound mark for its “Distinct Car Running Sound,” which resembles a jet aircraft. The application faced scrutiny under Section 9(1)(b) due to functionality issues and potential similarities to existing marks, leading to ongoing difficulties in convincing the Examiner of its eligibility.
The case of Shield Mark BV v. Joost Kist influenced global recognition of sound marks, establishing that they must be graphically depicted and capable of distinguishing goods.
The Value of Sound Mark Protection
The primary benefit of securing a sound mark registration in India is the exclusive statutory rights conferred to the registrant, enabling them to prevent unauthorized use of the mark. This protection helps maintain the brand’s goodwill and reputation while preventing dilution. Timely renewal ensures that registrants can fully leverage their investment in developing the sound mark.
Conclusion
Sound marks provide businesses with a unique way to identify their brand through specific sounds. With established registration rules in India, companies can protect their unique audio signatures, helping them stand out in the market. This legal protection not only builds brand identity but also maintains goodwill with customers. By actively using and renewing their sound marks, businesses can maximize their investment in sound branding, fostering stronger connections and enhancing their overall presence in the marketplace.
Author: Ketan Joshi, Senior Associate
