This article is written by  Raksha Yadav studying at ISBR Law College, Banglore pursuing a Diploma in Law Firm Practice: Research, Drafting, Briefing, and Client Management. This article has been edited by Ojuswi (Associate, Lawsikho). 

This article has been published by Sneha Mahawar.

Introduction 

In our daily lives, we all use mobile phones and all the different brands have a default tone, whenever any person listens the tone immediately recognizes the brand. Sound is the most common way for the advertisement and is considered intellectual property which is protected by the trademarks. Trademarks are unique marks that are represented graphically. Sound marks are the emerging trend of the trademark and it is recognized as non-traditional trademarks. The registration of trademarks will help to build brand value and grant exclusive rights to the owner. 

Previously only the words, symbols, and logos are recognized as trademarks but nowadays any specific smell, colour combination, or unique sound can also be registered as a trademark. It was difficult to get the trademark registration of sound marks but the Trademarks Act 1999 has added the provisions for the registration of the non-traditional trademarks in 2017. But before registration, the sound must prove its distinctiveness. Sound can be either fanciful or arbitrary. 

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This article talks about the recognition of sound marks as non-traditional trademarks, different kinds of trademarks, registration for traditional trademarks compared to non-traditional trademarks, and other aspects of non-traditional trademarks, especially vis-a-vis sound marks.

Trademarks at glance

Trademarks are those intellectual properties that denote some kind of signs, logos, names, and colours. Trademarks are legally registered under the name of an individual, company, or organization and protected by intellectual property rights. 

In India, the trademarks are governed by the Trademarks Act 1999. According to the act, trademarks are the marks that are capable of graphical representation and which differentiate the goods and services of every individual. It also includes the shapes, packaging, and colour combination of the goods.

The act provides provisions for the registration process of the trademarks and the protection or prevention of the infringement of trademarks. The registration grants an exclusive right to the owner of the goods and services. The acts also provide the legal rights of the owner and the penalties for the infringement of the trademarks and the damages which occur due to the infringements.

Infringement is unauthorized or inappropriate use of the registered trademarks without the prior permission of the owner. It is a violation of intellectual property rights. When any third party copied the registered trademarks for publication, or use for trade purposes it is an infringement of trademarks and the rightful owner of the trademark has a legal right to file a civil suit against the person who infringes(called as defendant) his or her rights. The act of infringement by the defendant is not accidental and it creates confusion among the customers.

If someone is willing to use the registered trademark legally they can enter into a licensing agreement with the owner. A licensing agreement is a contract between two parties under which the owner grants his permission to use the trademarks.

Different kinds of trademarks

There are different types of trademarks such as traditional or non-traditional trademarks. The traditional trademarks are some words, logos, symbols, etc. These can be service trademarks, product, collective, or certification trademarks, and non-traditional trademarks are any sound, smell, or colour.

Service trademarks

Any specific word or logo which identifies the services of goods. It specifies the source of the services like Google and Facebook.

Product trademarks

It represents the source of any products and goods. It differentiates the products from others. Some famous product trademarks are Apple, Coca-Cola, and Nike.

Trade name

It does not denote any products or services whereas it represents any company or organization. A trade name recognizes any specific entity like Walmart, Microsoft, or Starbucks.

Collective trademarks

It indicates the particular union, organization, or association. Collective marks are owned by any organization to represent the membership. Some examples of collective trademarks are CA (Chartered Accountant), and CPA(Certified Public Accountants).

Certification trademarks

The certificate marks guarantee the customers about the quality, accuracy, and characteristics of the goods and services like- Woolmark, ISI mark

Non-traditional trademarks

Nowadays, a new category of trademarks came into existence under which existing types do not fall. It is a non-traditional trademark also known as non-conventional. It can be a sound, smell, taste, or motion. The non-conventional trademarks do not belong to existing trademarks therefore it is difficult to register them because the graphical representation is required for the registration.

  1. Colour marks: It is non-conventional trademarks where colour is used to identify a unique product or service like Tiffany’s blue, and Cadbury’s purple.
  2. Shape marks: A shape or packaging of particular goods and products is registered as trademarks such as Coca-cola bottle shape, Ornamental lamps
  3. Smell marks: It is a recent trend of a trademark, a smell is also registered as a trademark. E.g – Fragrance or perfume
  4. Sound marks: Nowadays the use of sound for promoting any goods or services. It is an essential way of advertising products. A unique sound can be registered under trademarks. Sound can easily influence the consumers and any person easily identifies the brand name by only listening to sound. With the evolution of digital media, various brands are using sound to promote their products and services. Such as the default tone of Nokia mobiles, the theme song of the National Stock Exchange, four-note bell sound of Britannia industries.

Recognition of sound marks as a non-traditional trademark

Sound marks are non-traditional trademarks and earlier it was very difficult to register sound marks under the provisions of the trademark due to some technical advancements but after the commencement of Trademark rules 2017 the registration process became simple and easy and it was recognized as non-traditional trademarks.

In 2008 Yahoo Yodel was the first sound mark that was granted registration in India and the corporate jingle of the ICICI bank was the first Indian entity registered for a sound mark.

Need for protection

Trademarks are used to identify a unique sign, symbol, word, or name of any goods and services and provide legal protection to the particular brands and their lawful owner. Sound is the trending non-traditional trademark. It makes the consumer recognize the brand name. It easily differentiates an individual’s products from the competitors. And listening is more effective than writing or seeing anything. An individual can protect the sound mark by registering under the Trademarks act 1999. The protection can protect from infringements and the misrepresentation of the goods and services of the lawful owner. The infringement of the trademarks damages the brand value and customer’s trust.

Protection of sound marks helps the owner to create the brand value of goods and services in the market which enhances the goodwill, business value, and net worth of the entities. It also helps in creating assets for the business and establishing a relationship between the customers and the business which expands it in different regions.

Criteria for the protection

The graphical representation is an important aspect before registering the trademarks but for non-conventional trademarks, the graphical representation is very difficult. As per the recent provisions of Trademarks Rules 2017, rule 26(5). For the registration of the sound marks, the application must consist of a sound clip and the duration does not exceed 30 seconds and it must be submitted in an MP3 format. The sound must have a distinctive character. Earlier in 2017 for the registration of the sound mark, the graphical representation was the only document that was very difficult to read and it also created lots of barriers in the registration process. 

Registration procedure

  • Before registration, the applicant must prove the distinctiveness of the sound.
  • The applicant applies for the registration to the office of the registrar of trademarks.
  • In the application, it must mention that the application is for the registration of sound marks.
  • A 30-second clip in an MP3 format must be added with the application.
  • If the registrar found any objection in the application he may ask the applicant for clarification and ask for required documents such as the written description of the sound, the graphical representation, and the MP3 clip on any electronic device.
  • Once the registrar examines the application and does not find any objection to sound marks then it will be registered and protected.

Test of distinctiveness

The term “Distinctiveness” states the quality or characteristics which differentiate any person or anything from one to another. And trademarks are uniquely identified symbols, shapes, logos, or any word. Distinctiveness is an essential aspect of the registration of any trademark either traditional or non-traditional; both only get the registration when it clarifies the test of distinctiveness. The non-traditional trademarks are very difficult to determine the distinctiveness. If the sound, smell, or colour are distinctive it will get registration and protection under the trademark. Various jurisdictions emphasize the distinctiveness of all kinds of trademarks. The Canadian Trade Marks Act states that trademarks that are distinguished in nature are distinctive marks. Similarly, Russia, France, Germany, and the UK consider distinctiveness as a fundamental principle for the registration of trademarks. The Trademark Act 1999 also restricts the registration of those trademarks which lack distinctiveness. 

The distinctiveness of trademarks can be the basis of the following:

Fanciful

This is the highest and strong spectrum of distinctiveness. It does not belong to any existing meaning. The owner himself invented it or created it to attract the consumers such as Google or Kodak. Organizations regularly establish distinctive trademarks solely to represent their products or services. These symbols have no other relevance.

Arbitrary

The trademark has the existing meaning but it does not have any connection with the goods or products. These marks are fundamentally distinctive, and courts grant them stronger trademark protection. It is distinguished from the actual meaning of it like- Apple company or Amazon kindle. These types of trademarks also have a strong perspective to be registered.

Suggestive

It identifies the goods or services which are rendered by the owner. The consumers have the hint to recognize the goods or services like- redbus, galaxy tablets. Compared to the fanciful and arbitrary these trademarks have less quality of distinctiveness but somehow, they will get the registration. A suggestive mark suggests or indicates a good or service, but the ultimate meaning of the trademark requires some creativity. These marks are unique and entitled to protection, even if it is less distinctive than arbitrary or fanciful marks.

Descriptive

It defines itself as the nature or purpose of the goods and services, therefore, it is not considered eligible for the registration but in certain exceptional cases, it might get the registration. A very good type of descriptive mark is “Coca-Cola,” which refers to a cola beverage created with coca plant ingredients.

Generic

The term which is commonly used can not acquire the distinctiveness status. These are the original name of the goods or services like- phone or milk. It is not considered eligible for protection or registration. Generic marks are ineligible for trademark protection since they cannot identify the source of a particular product or service.

If the trademark becomes generic by the common use or it is not performing an essential performance of the trademarks then the registration may have become invalid. The name should be unique.

Conclusion

Trademarks protect the individual’s work from copying. The trademark act grants protection from infringements and damages. Several enactments had been done in the provisions of the trademarks. It is necessary to modify the existing laws as time changes the law also needs to be changed. With the advancement in technology and modes of communication, sound marks have become the trend to register as a non-traditional trademark. Similar to all other traditional trademarks it is also protected by the law and the owner has exclusive rights to it. It is also giving rise to other non-traditional trademarks such as smell, and colour.

References

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