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Tuesday, 6 December 2011

Sound As Trademarks

In today’s world with all the various technologies available to people sound has begun to play a more important role in the marketing process. People only have to hear the song and they can tell you the product it is associated with. Most people even have their own personal favourite jingle for a specific product. Sound plays probably the most important role of identifying the goods and services than any other unconventional trade mark.
The United States of America has been the leader when it comes to registration of sound marks. They have paved the way for registration of sound marks by allowing registration of sound marks for the past 60 years. National Broadcasting Corp (NBC) was the first to register a trade mark for their radio broadcasting services. One of the most famous sound trademarks is Metro-Goldwyn-Mayer’s lion roaring for all their movies. The musical score used in the Looney Toons cartoon series which is famous with children of all ages for Bugs Bunny, Daffy Duck and other famous cartoon characters was registered as a sound mark. “The song “Sweet Georgia Brown” for the Harlem Globe-Trotters basketball team, the spoken letters “AT&T” with a distinctive musical flourishing in THE background are other sound trademarks”[1].
Although registration of sound marks is allowed it is have its own drawbacks. Firstly a sound mark is something you hear, you have to hear it to experience it so if u reduce a sound mark to a written description it will not give enough sensory information to experience the mark. Secondly in some jurisdictions accept a musical score of the mark and an image of that mark instead of a written description ,so if a mark has been registered like this that mark lacks meaning especially if it is not famous.
In the United States of America a description of the sound mark is required however compact disks may be give as specimens. That specimen should contain a good amount of the sound content to indicate what the nature of the goods and services are. A musical score may be submitted as a specimen if the mark comprises music or words set to music[2].
All across the globe the conditions of graphical representation required for the registration of sound marks are different, but in modern times two approaches have evolved as the way forward, these two approaches are the US and UK approach. In the UK it is not sufficient just to describe the sound along with the description the mark has to be represented graphically in the form of musical notations. In the US a description of the mark is required and along with that description an audio or video reproduction of the sound must be provided.
Both these methods have their pros and cons, while the UK approach makes sure that the mark will be clear and precise the US ensures that the common man will also be able to understand the mark as well as not everyone is able to read musical notations.
In Shield Mark BV v Kist[3] the ECJ had to consider application for two sound marks. The first nine notes of Beethoven’s Fur Elise represented by musical notation and second the crowing of a cock, represented by an onomatopoeia.   It was held that seven Sieckman criteria requirements were said to be satisfied by a musical notation if it was “represented by a stave divided into measures and showing, in particular, a clef, musical notes and rests whose form indicates the relative values and, where necessary, accidentals”[4]. The verbal descriptions and onomatopoeia were rejected on grounds of lack of clarity. The court held that there was no consistency between the sounds.

In 2005 the OHIM held that applicants can attach sound files to their online applications for trademarks, the attachment should be in the format of an MP3 and cannot be larger than 1 megabyte. The only purpose of this is to support the application of the candidate.
The WIPO Standing Committee on the Law of Trade Marks, Industrial Designs, and Geographical Indications held (SCT) agreed that ““Offices may require that the representation of sound marks consist of a musical notation on a stave, a description of the sound constituting the mark, or an analog or digital recording of that sound -- or of any combination thereof. Where electronic filing is available, an electronic file may be attached to the application. However, for some jurisdictions, only a musical notation on a stave may be considered to adequately represent the mark.”[5]
In India the Trademarks Act 1999 neither recognises or restricts registration of sound as a trademark, all it says is that a trademark can be registered provided it is distinctive and is capable of being represented graphically. The Yahoo yodel for the American based internet firm Yahoo was the first sound mark to be registered in India on August 18,2009 a step that has been welcomed by most traders in the market.

[1] Neha Mishra, “Registration of Non-Traditional Trademarks” (2008) 13 Journal of Intellectual Property Rights 43, 45
[2] Report for the APEC Survey on Non-Traditional Trade Marks (April 2008).

[3] Shield Mark BV v Kist (C-283/01) [2004] Ch. 97; [2004] 2 W.L.R. 1117.

[4] Alex Butler, The smell of ripe strawberries: representing non-visual trademarks,,26/03/2011   

[5] “Non-traditional Marks: Smell, Sound and Taste” in WIPO Magazine, February 2009, p.5

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