If sound marks are distinctive and can play the role of trademarks, which is to exclusively identify and associate the goods and/or services as emanating from a particular undertaking (in other words, a ‘source identifier’), they are registrable and deserve full protection under the Trade Marks Law. In India, sound marks such as the Yahoo yodel and the corporate jingle of ICICI Bank have already been registered. The former was the first sound mark to be granted registration in India and the latter was the first sound mark to be registered in the name of an Indian entity. Other sound marks that are registered in India include the sound of ‘Hisamitsu’ sung over certain musical notations and applied on a ‘proposed to be used’ basis by Hisamitsu Pharmaceutical Co of Japan; certain sound marks of Allianz of Germany in respect of insurance and financial services; and the popular musical sequence of Raymond: The Complete Man.
Soundmark under New Trademark rules
Coming back to the new Trade Marks Rules 2017, applications for sound marks must now be submitted in an MP3 format, not exceeding 30 seconds in length and recorded on a medium allowing easy and clear audible replay. This has to be accompanied with a graphical representation of the notations constituting the sound mark, according to Rule 26(5). Although the term “notations” has not been defined under the new rules and there is no explanation given as to what may be acceptable to fulfil the requirement of “a graphical representation of its notations”, generally, modern staff notations are acceptable for musical compositions.’
Coming back to the new Trade Marks Rules 2017, applications for sound marks must now be submitted in an MP3 format, not exceeding 30 seconds in length and recorded on a medium allowing easy and clear audible replay. This has to be accompanied with a graphical representation of the notations constituting the sound mark, according to Rule 26(5). Although the term “notations” has not been defined under the new rules and there is no explanation given as to what may be acceptable to fulfil the requirement of “a graphical representation of its notations”, generally, modern staff notations are acceptable for musical compositions.
Application Format
Now, the requirement of submitting applications for sound marks in MP3 format will make a positive change in the uniformity and accessibility of records for users as well as the trademark office. In any case, describing one’s sound mark application is not barred and this brings only further clarity on the scope of rights asserted in the application. The uniform process under the new rules, coupled with digitization of records, would also positively affect conducting sound mark searches via the online database to ascertain conflicts and for due diligence activities. The MP3 format, which can be easily accessed and heard by users including the laymen, as opposed to reading sound notations, which is a difficult proposition for those who are not well versed in them, would, in the near future, enable better examinations and dealings in contentious matters (such as oppositions and cancellations) concerning sound marks.
CONCLUSION
Though ignored until now, this requirement is imminent given the rising popularity of sound marks in branding, trade and commerce. Another aspect would be issues concerning the preservation of the moral rights of authors/composers in the musical work of which only a segment may be used and applied for as a trademark by another party having been assigned the exclusive rights of exploitation, commercial or otherwise, in the work.
An obvious yet important point of law in respect of composite sound marks, such as melody sequences expressed or articulated in a particular manner such as by the use of words, would be the role of Section 17 of the Trade Marks Act of 1999. While filing sound mark applications, proprietors need to make sure that they are able to justify that the sound they are seeking exclusivity over in respect of their goods and/or services is worthy of such protection. In other words, the sound mark should be distinctive and issues regarding its functional role (if any), or the sound being common to trade, descriptive or just non-distinctive for any rational reason, would have to be dealt with. However, an original tune constituting a sound mark may entail trademark protection across classes on account of its inventiveness and inherent distinctive value.
