A sound mark is a non-conventional trademark which is different from traditional trademarks such as a word mark or a device mark. It is a type of a trademark wherein consumers are able to identify the origin of goods and services from a particular sound.
The requirements to apply for a sound mark was brought in recently through the Trade Marks Rules, 2017 wherein Rule 26(5) states that “Where an application for the registration of a trademark consists of a sound as a trademark, the reproduction of the same shall be submitted in the MP3 format not exceeding thirty seconds’ length recorded on a medium which allows for easy and clearly audible replaying accompanied with a graphical representation of its notations.”
Accordingly, the application form now provides for the option to apply specifically for a sound mark and requires the audio clip along with graphical representation of musical notations. Some examples of sound marks include the 21st Century Fox tune, the Looney Tunes Theme and the Netflix (Ta-Dum) Sound.
Like any other trade mark, a sound mark also needs to have a distinctive character. Even though the express rules for registering a sound mark were established only in 2017, Indian law allowed the registration of a sound as a trademark well before it. Yahoo Inc. was the first enterprise to apply for a sound mark registration in India (Application No. 1270406) thereby setting the platform for allowing the registration of sound marks in India. It is relevant to note that as per the Trade Marks Act 1999, a trademark is a mark that can be graphically represented. Accordingly, most trademark applications before 2017 were applied with graphical notations of the mark along with the sound clip that it was applied for but the 2017 Rules have made these requirements even more clear and in line with the international standards that are being followed.
However, it has been only 4 years since these rules have been in use and therefore the jurisprudence for sound marks has to be taken from a common law source. In the case of Shield Mark v. Joost Kist Memex, the Supreme Court of Netherlands stated that a sound mark should be capable of distinguishing their goods and services from those of another as well as capable of being graphically represented. It also went into the degree of graphical representation that is required and stated that such representation should be precise and clear in the form of a musical notation. This is also a requirement under the 2017 Rules wherein it has been made crystal clear that an application for the registration of a sound mark will not be accepted if it exceeds 30 seconds. The intent of this rule is to not permit any sound, jingle or tune to be longer than a specified time.
However, in jurisdictions such as the European Union and the United States of America, this position differs as sound marks are permitted to be more than 30 seconds. For example, the USPTO has accepted sound marks such as ‘Sweet Georgia Brown’ of the Harlem Globetrotters which is over 120 seconds. The only restriction is that the audio file cannot be over 5 MB. The length of a sound mark in the USA, is therefore not in question as long as it is able to distinguish its goods and services and indicate its origin arising from distinctiveness. There is also no requirement for the graphical representation of the mark.
Similarly, the European Union also has no limitations over the length of a sound mark. However, there have been instances where the question on the length of a sound mark has arisen. For example, Danjaq LLC, a company incorporated in USA had applied for protecting the theme song for the James Bond films. The sound clip in question was 25 seconds long. The European Union IP Office rejected the mark on the grounds that the mark was too long to be distinctive and therefore cannot be memorized by the public. In an appeal against this decision, the Fifth Board of Appeal predominantly observed that it was not important that a person memorizes the whole song or tune. It took into consideration the marks provided as examples by the Applicant which go up to 36 seconds and earlier accepted by the Office and held that in cases of sound marks with long duration, consumers generally take note of the first part of the song or tune. The test for distinctiveness is that if a part of the sound mark can trigger the memory of the consumer, it has a distinctive character. Therefore, the Board overruled the Office’s decision and granted registration for this sound mark. Thus, even though there is a requirement for a graphical representation of the sound mark in EUIPO similar to the 2017 rules, the length of such a sound mark is not limited.
So far in India, such discrepancies have not been seen in sound marks and it would be interesting to see how such examinations will be conducted. It is a possibility that the limitation of 30 seconds is mentioned in order to avoid any overlap with musical works falling under the Copyright Act, 1957. It appears though, that sound marks which are registered in various other jurisdictions might have a tougher registration process in India due to the 30 second limitation. However, the scope for interpretation will grow with time as these Rules have been in existence only since 2017.
This article has been authored by Shubhankar Mathur.
