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
[4] Alex Butler, The smell of ripe strawberries:
representing non-visual trademarks, www.iammagazine.com,26/03/2011
[5]
“Non-traditional Marks: Smell, Sound and Taste” in WIPO
Magazine, February 2009, p.5
No comments:
Post a Comment