Sounding Off: Decoding Sound Marks in India

Conventionally, a trademark consists of a word, logo, design, device, characters, figures, or combinations thereof. However, sound could be a source identifier too. With the marketplace becoming increasingly competitive, businesses are constantly looking for innovative and sophisticated means to stand out and leave a lasting impression in the minds of the consumers.  

For instance, at least since the year 1996, Yahoo! started using the Yahoo Yodel to identify its services (click here to listen the audio clip of Yahoo Yodel). The Yahoo Yodel was registered in India in the year 2008 and continues to be in use today to identify its services.

The Trade Marks Act, 1999 (“Act”) does not explicitly define a sound mark. However, such marks are implicitly covered in the definition of a trade mark under Section 2(1)(zb) of the Act. Section 2(1)(zb) states that a “trade mark 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.”

Rule of 2(1)(k) of the Trade Marks Rules, 2017 (“Rules”) defines a graphical representation as “the representation of a trademark for goods or services represented or capable of being represented in paper form, including representation in digital form.”

A plain reading of the above section and rule suggests that the legislature intended the definition of a trade mark to be inclusive enough to include any source identifier as long as it can be represented graphically and can pass the test of distinctiveness.  A sound mark may fulfil such criteria.

Generally speaking, sound marks may not inherently be capable of distinguishing the goods and services of one party from the goods and services of another party.  Therefore, in the case of a sound mark, in general terms, it would be necessary to demonstrate that the mark has acquired distinctiveness before it can be registered. In other words, prima facie, a sound mark will not qualify for registration without evidence of factual distinctiveness  (that is, recall value of a sound).

A thorough examination of numerous sound mark applications or registrations at the Trade Marks Registry (“Registry”) reveals a pattern. Many applications for sound marks have been filed and/or registrations for such marks have been obtained on the basis of proposed use of the mark in the country. Others have been filed/ registered on the basis of use. The trend observed after examination of numerous applications/ registrations is that sound mark applications filed claiming use often encounter objections on the ground of non-distinctiveness and/ or procedural grounds. These applications appear to be subjected to greater scrutiny as compared to applications filed on the basis of proposed use. It was observed that a large majority of sound mark applications filed on the basis of proposed use do not encounter any such objections. Often, these applications have sailed through to acceptance without any objection at all. 

A review of the Registry’s records have revealed some notable registrations for sound marks that were granted without objection, namely, Reliance Industries Limited’s MOGO Jingle (registered in November 2018),  Twentieth Century Fox Film Corporation’s FANFARE sound (registered in December 2019), Mastercard International Incorporated’s Mastercard acceptance tone (registered in September 2019), TATA Consumer Products Limited’s ShikShikShik, (registered in June 2021), Chitale Bandhu Mithaiwale’s BINGEBAR tune (registered in January 2023) and Hewlett Packard Enterprise Development LP’s HPE SOUND (registered in July 2023), among others.    

A review of registrations for sound marks that were based on use reveal that the Registry advanced applications to registration on the basis of relatively scant supporting evidence. For instance, a sound mark application filed by Saregama India Limited in the year 2019, claiming use since 2017, was accepted on the basis of a single YouTube extract and a few advertisement expenditure invoices. Netflix obtained registration for its sound mark “Ta-dum”, filed on December 2021, claiming use since February 2015, by providing media articles to support its use claim, most of which were about Netflix.

It was also observed that objections on grounds such as functionality and identity/ similarity with other existing sound marks have also been raised. For instance, Suzuki Motor Corporation has filed for registration of a sound mark and describes it as “Distinct Car Running Sound (of a jet aircraft) in relation to certain type of automobiles." This application has faced an objection under Section 9 (1)(b) of the Act. Even after ample number of hearings, Suzuki Motor has failed to satisfy the learned Examiner as regards registrability of its sound mark.

An analysis of the practices in foreign jurisdictions reveals that sound marks are not registered without evidence of acquired distinctiveness. For instance, the United States Patent and Trademark Office requires that, in order to function as a source indicator, a sound mark must "assume a definitive shape or arrangement" and "create in the hearer’s mind an association of the sound." These guidelines further add that in order to be registrable, the sound must be "unique, different or distinctive" in connection with the goods/ services with which they are associated. Further, "commonplace" sounds or those to which listeners have been exposed under different circumstances can be registered only after having proved acquired distinctiveness.

Similarly, in European Union Intellectual Property Office (“EUIPO”), the registrability of a sound mark depends on whether the sound is distinctive per se. Further, the EUIPO guidelines even specify types of sound marks that are unlikely to be accepted without evidence of factual distinctiveness. It follows that the law regarding sound marks registration revolves around the aspect of distinctiveness.

In the United States, for example, Harley Davidson attempted to register a V-twin engine sound mark. However, competitors, including Japanese manufacturers Suzuki, Kawasaki, Yamaha, and Honda, as well as American manufacturer Polaris, filed oppositions, fundamentally, on the ground that the sound failed to “indicate the source of the motorcycles." Consequently, Harley Davidson withdrew its application.

While a review of the Registry’s records does not show any evidence that a sound mark registration has been the subject of a cancellation action, we believe that once a sound mark is registered on a proposed to be used basis, it may be open to challenge by third parties on the ground of being granted registration without proving distinctiveness. Also, while there has not been any court action against use of a registered sound mark, if a party were to take such action, there is a possibility that, as a counterattack, the opposite party can petition to cancel the sound mark registration. 

We hope that the landscape of sound mark registration in India will take into account the fact that, with innovative marketing strategies, more and more parties will come forward to register their sound marks. If this happens, undoubtedly, the Trade Marks Register will become a crowded field for such marks. In that case, it is inevitable that these applications will necessarily have to undergo more stringent examination in the years to come. Therefore, it is crucial to consider the long-term implications and strike a balance between facilitating innovation and preserving the effectiveness of trademark protection mechanisms in India.  

About the authors: Sujata Chaudhri is the Managing Partner of Sujata Chaudhri IP Attorneys. Shradha Prakash and Neha Mallik are Associates at the Firm.