[The Viewpoint] Sound Marks in India: Exploring non-conventional branding

As an ever-growing field of law, trademark law accommodates the advancements in society irrespective of the presence of exclusive laws, for each advancement. One such notable advancement is the growing registration of ‘sound marks’ which are non-conventional marks covered vaguely under The Trademarks Act, 1999.

The use of sound marks as a branding technique has been rapidly growing across the globe since 2017. These marks are not only limited to musical works, but also include non-musical sounds. Non-musical sounds have been approved as sound marks owing to their acquired distinctiveness. An example of this is “MGM’s lion roar”.

However, for successful registration of a sound mark, assessing ‘distinctiveness’ is complicated, as there are no tools to assess non-conventional like sensory marks. Eventually, legal command over the same remains a grey area, though sounds representing a brand are not new in India. This article critically analyzes the legal position of sound marks to effectively address the gaps and possible complications.

Evolution Of Sound Mark Protection

Since the advent of electronic media, sounds have been used to represent a brand, product and service over the traditional mediums, since they are connected to the sensory organs. Sound marks which belong to the domain of sensory marks have been associated with branding even before they earned legal recognition. Famous examples of such branding would be the “lion roar” by MGM productions established in the year 1924 (Trade mark number: 844282 in Australian Trademark Registry), the “trumpet music” of Gemini established in the year 1940, the “Intel chimes” that play when the Intel logo appears, introduced in the year 1968. These examples had reached the audience as a representation of the brand irrespective of the legal protection available to them. Despite the strong establishment of this branding technique, legal protection for these marks were sought late due to the absence of specific laws.

In the United States, the first sound to receive legal protection was the “NBC chimes”, which had the musical chords ‘G, E, C’ played on chimes. It was recognized as a sound mark in the year 1947 by the United States Patents and Trademark Office (USPTO). Following the same, NBC obtained sound mark protection for their “3 Chime like notes” for all their broadcasting services. In 2007, Australia received its first registered sound mark by Nokia for a “five toned” jingle. Though this sound mark has been rejected thrice before, the Australian Trademarks Office allowed the said registration. In 2017, the European Union Intellectual Property Office (EUIPO) released guidelines on registering sound marks which were more exclusive than the previous legal regime that encouraged registration of more sound marks in Europe.

India also got its first sound mark registration from Yahoo in 2008. Later, India adopted the provisions of EUIPO and released the Trademark Rules, 2017, which stipulated the manner in which a sound mark should be registered under Section 26. Though sound marks were not barred by law before the introduction of 2017 Rules, there was no prescribed formula in which a sound mark could be registered. The Trademark Rules, 2017 [Section 26 (1)(iii)(ii)] mandate that a sound mark seeking registration, should be presented in an MP3 format with its length not exceeding 30 seconds, and along with a graphical representation through musical notations of the particular mark.

Conventional standards of assessing distinctiveness of sound marks

Distinctiveness of a sound mark is very essential for its registration. Rule 26 of the Trademark Rules, 2017 mandates the production of sound mark in a recorded MP3 format along with its musical notations. This undoubtedly aims at approving distinctive and novel marks for protection, which is also a fundamental principle in the domain of trademark law. Since sound marks cover both musical and non-musical sounds, upholding distinctiveness and novelty in the latter set of marks is problematic. The following two questions arise.

Whether usage of common sounds as sound marks should be disapproved?

When brands come up with a sound mark that denotes their name, should it be awarded protection?

Common sounds as sound marks

To answer the first question, the spectrum of distinctiveness will need to be studied. The spectrum of distinctiveness guides trademarks; it was initially designed for word marks. Hence, the same conventional criteria to assess the distinctiveness of a mark does not accommodate non-conventional marks such as sound marks. As far as common sounds are concerned, it is vital for them to establish ‘acquired distinctiveness’ to the utmost level. To that end, The USPTO approved non-musical sound marks like the “lion roar of MGM” (US Registration Number: 1413137) and the “Piercing siren sound of federal signal corporation” (US Registration Number: 2712396) owing to their acquired distinctiveness.

Though the USPTO has allowed registration of common sounds like the siren of a fire engine owing to their acquired distinctiveness, there have also been instances when famous brands like Harley Davidson were denied sound mark protection. In the case of Harley Davidson, an application for registration of ‘V-twin engine’ sound was submitted by the Appellant (Trademark Application Number: 74485223). Oppositions were raised for the same based on two grounds, one being that the sound is not inherently unique and other being the sound is subject to variations depending on the motorcycle model it is installed in. Harley Davidson therefore had to abandon its application in the year 2000.

Brand names as sound marks

Though sound marks of brand names are not common and popular, such marks do exist and have also been registered successfully. One such example is of “American Family Life Assurance” where the abbreviation AFLAC was made into a duck sound and registered as a sound mark (US Registration Number: 2607415). The creativity devoted to this sound mark has undoubtedly substantiated its distinctiveness and contributed to its successful registration. Firstly, AFLAC is an abbreviation of the service provider and not a mere recital of the brand’s name. Secondly, spelling it out in a duck voice reflects the creativity involved. Since there are satisfactory elements present in this mark to qualify as a sound mark, it could be inferred that brands can indeed create a sound mark of their names and register the same if there is a satisfactory amount of creativity involved.

When analyzing AFLAC using the ‘spectrum of distinctiveness’ criteria, AFLAC is neither arbitrary nor fanciful in nature, but highly creative for it to be considered ‘distinct’. For a non-musical mark lacking musical notations, it is hard for the trademark owner to defend a case of infringement. Brands planning to use their names as non-musical sound marks must invest creatively to enjoy absolute protection. T

he US courts have expressed a similar opinion in the case In re Vertex Group LLC, where the judges stated that “a sound mark enjoys protection combined with a “presumption of validity” throughout the United States as long as the mark is “arbitrary and distinctive” that gives the impression that “the mark must attach to the mind of the listener and be awakened on later hearing.” However, this opinion leaves an impression that marks have to acquire distinctiveness even before the registration. Further, requirement of arbitrariness in sound marks needs further explanation, since this analogy once again creates confusion while applying conventional criteria to assess non-conventional marks.

Conclusion

Despite competent legislation, irregularities do exist since the tools to assess distinctiveness are not apt for non-conventional marks like sound marks. The spectrum of distinctiveness as an outline certainly helps in understanding and assessing distinctiveness of a sound mark to a certain extent, but cannot be always relied upon. When it comes to sound marks of common sounds, acquired distinctiveness becomes an unavoidable ground to satisfy, which can be hard for new players in the market who might not be able to afford the publicity.

Therefore, an adaptation of conventional assessment might not work well for sound marks in all situations. This eventually calls for exclusive rules in addition to the existing provisions for sound mark protection. Since there is a huge scope for sound marks in India, it is crucial to have appropriate laws in place. Overall, it can inferred that sound mark protection in India is as progressive as that of western countries and offers scope for development.

*The authors are Founder and Associate respectively with Shivadass & Shivadass (Law Chambers).

The contents and comments of this document do not necessarily reflect the views/position of Shivadass and Shivadass (Law Chambers) but remain solely of the author(s). For any further queries or follow up, please contact admin@sdlaw.co.in.