ASSIGNMENT on SOUND TRADEMARK

“ASSIGNMENT ON SOUND TRADEMARK STEPPING AGAINST CONVENTIONALITY”- INTRODUCTION:- A sound trademark is a non-conventional trademark where the trademark function of uniquely identifying the commercial origin of products or services is achieved by means of an audio clip. They are identified by hearing without support through speech. As such they can be utilized in acoustic brand marketing, which creates the need to register them as trademarks to protect a company’sintellectual propertyand ensure their use as exclusive identifier for the company, just like a company logo does.Sound trademarksare protected trademarks centred on the reproduction of sounds and tones. Combinations of sound and word or graphic elements are additional design options.

Typical sound marks includetunesjingles,melodies as well as general sounds or noise. Sound marks can function as trade mark or service mark, as source identifiers for goods and/or services in commerce. Even though trademarks consisting of sounds have existed for many years, there is no uniformity regarding protection for such marks in the global market place or on the international level.

[1] The trademark laws passed in the European Union do not explicitly include sound in the definition of trademarks; the European Court of Justice felt that sound signs could be registered as trademarks so long as their use made it possible to distinguish the goods or services of one undertaking from those of other undertakings. To be registered in the European Union, sounds must not only follow traditional trademark laws but also be represented graphically in a way that is clear, precise, self-contained, equally accessible, intelligible, durable and objective. In general, applications in the form of musical notations describing the sound meet these requirements, whereas onomatopoeic descriptions do not. This means that musical notes that can be represented in the form of musical notations are acceptable whereas noises like a dog barking or a lion roaring which cannot be represented by a musical notation but has to be described onomatopoeically or through a sonogram cannot be eligible for a trademark in the European Union. Metro Goldwyn Mayer (MGM) Corporation had applied for the registration of a sound, that of a Lion roaring, by submitting a sonogram for the “Lion’s roar”.

[2] The application has been refused in the European Union.

Interestingly, the same trademark has been granted in the US. In the United States, whether a sound can serve as a trade mark “depends on the aural perception of the listener which may be as fleeting as the sound itself unless, of course, the sound is so inherently different or distinctive that it attaches to the subliminal mind of the listener to be awakened when heard and to be associated with the source or event with which it struck.” Quite simply this means that if a sound lingers in the mind of the listener and the listener subsequently associates a source or event with that sound then the sound may be eligible for a trademark. LANDMARK CASES REALTING TO NON CONVENTIONAL TRADE MARK : In Ralf Sieckmann v. German Patent

[3] Office the ECJ by the German Federal Patent Court, the ECJ decided that graphical representation per se is not enough for registration, and it must met the following criteria:

• It must complete, clear and precise so that object of the right of exclusivity is immediately clear.
• It must be intelligible to those persons having an interest in inspecting the register,i.e. other manufactures and consumers.

The normal ways of graphical represent ability. The normal way of graphical representation of sound mark is use of musical notations and written description. As a practical matter, however not everyone can read written music. Moreover written musical notes while indicating pitch, normally will not indicate tone, and different tones can be used, namely, musical notes give a “description” of the music but not the music itself. An apparent solution would be deposit a digital recording of the sound with the registrar instead of graphical representation, which has been rejected by the INTA as being impracticable, for firstly sound cannot be published by the Trademark Registry and people have to go to the registry to hear it, and secondly, it would be difficult for the registry to store so many sound samples.

[4] The INTA Resolution 1997

[5] on the inclusion of sound marks as registrable marks has analysed various impediments to the registration of sounds as trademarks, such as, enforceability, functionality of such sounds, problems of graphical representation and physical affixation which they say can be solved with help of traditional trademark principles.

More or less INTA seems to have maintained the position that sound is connected with a product or service may serve as a trademark and therefore, in appropriate circumstances, should be entitled to trademark recognition, protection and registration in the same way and subject to the same standards as any other trademark. Sounds can be an important element in branding and corporate identification. Sounds can help consumers distinguishing a particular service or product from another. Whether a specific sound has the ability to function as a trademark, is a question of fact in each case

[6] In the case of Shield Mark BV v Joost Kist h.o.d.n Memx

[7] the ECJ observed that the requirement of graphical representation was not satisfied when the sound is represented graphically by means of a description using the written language, such as:

• An indication that the sign consist of the notes going to make up a musical work
• An indication that it is the cry of an musical
• By means of a simple onomatopoeia
• By means of a sequence of musical notes[8]

The case dealt with registration of sound marks. The Court held that sound marks were registrable but the requirement of graphical representation along with distinctiveness of sound had to be met with. It further stated that written description of a sound, onomatopoeia and musical notes were not enough (as in the case, the Dutch onomatopoeia for cockcrow). In the given case, however the court did not lay down appropriate mode of representation for the sound of a cockcrow or any other sound, leaving it to a particular country to decide on its particular requirements. However, the Court indicated that whatever be mode of representation, it should be clear, precise, self contained, easily accessible, intelligible, durable and objective.

The problem with written sound marks like notions is that while it might indicate pitch, it will not indicate the tone.

[9] On the other hand, graphical representability requirements are satisfied where the sound is represented as a “ a stave divided into measures and showing, in particular, a clef, musical notes and rests whose form indicates the relative value and where necessary, accidentals.’ Example 1 The trade mark is a sound mark consisting of 5 consecutive notes, namely ABCED.”[10] Example 2: Schedule of Sound mark to represent different bass, marimba, sfx and etc PRTOTECTION AND REGISTRATION OF SOUND TRADEMARK IN USA The Lanham Act of the United States defines trademark, essentially, as any word, name, symbol, or device[11], or any combination thereof used to identify and distinguish goods or services of one undertaking from those of other undertakings.[12] Thus, there is no requirement of capability of graphical representation for a trademark. The purpose behind graphical representation, while registration, of the trademark is to enable competitors and others to know what has been trademarked. Registration puts other producers on notice that a trademark is already in use. This means that the fellow competitors and the public must know a given trademark in a clear, precise before[13] registration of the trademark. Despite this, there is no need for a mark to be graphically represented for the registration purposes in the United States.

The Trademark Rules of Procedure explicitly provides for the registration of sound marks. Sound marks which are “not used in printed or written form” can be registered when submitted on a disc However, the criteria for registering a sound mark differs from those traditionally applied to word marks. In Re General Electric Broadcasting Co[14], General Electric Broadcasting Company sought to register, as a sound mark, a ship’s bell clock as a service mark for radio broadcasting services.

The Trademark Trial and Appeal Board (T.T.A.B.) held that this sound mark could not be registered because it was not proven to identify the applicant’s services. The Board held that the mark was not inherently distinctive and secondary meaning[15] had not been proven. The opinion, written by administrative Judge Lefkowitz, stated that “the criteria for the registration of sound marks” differed from traditional trademark analysis. The aural perception of a sound mark may be fleeting, unless “the sound is so inherently different or distinctive that it attaches” and awakens the subliminal mind of the listener when heard and is associated with a particular source or event.

The opinion set forth conditions under which sounds function as source indicators.”[16] A distinction must be made between unique, different, or distinctive sounds and those that resemble or imitate ‘commonplace’ sounds or those to which listeners have been exposed under different circumstances. This does not mean that sounds that fall within the latter group, when applied outside of the common environment cannot function as marks for the services in connection with which they are used. But, whereas the arbitrary, unique or distinctive marks are register able as such on the Principal Register without supportive evidence, those that fall within the second category must be supported by evidence to show that purchasers, prospective purchasers and listeners do recognize and associate the sound with services offered and/or rendered exclusively with a single, albeit anonymous, source.” In other words, because of their nature, sound marks require proof of distinctiveness, or in the alternative, proof of secondary meaning, before being entitled to registration. But a different spectrum of distinctiveness than that applied to traditional marks is followed.[17] The TTAB has defined the spectrum as the distinction between “unique, different, or distinctive” sounds on the one hand and “commonplace” sounds on the other hand. It is pertinent to highlight three issues. Firstly, there is no need to prove secondary meaning in the case of inherently distinctive sounds.

However, there is neither any explanation of inherently distinctive sounds or commonplace sounds nor any criteria for distinguishing inherently distinguishable sounds from common place sounds. Secondly, we can draw a close analogy between sound marks and word marks. Sound marks that are presumed to be inherently distinctive are similar to the arbitrary or fanciful marks. Both of them don’t require any proof of secondary meaning. In contrast, place sounds are similar to the descriptive words in a sense that both require proof of secondary meaning during registration of the mark.

Lastly, Sound marks are different from the Word marks because the former doesn’t require any graphical registration while graphical representation is necessary for the latter marks. This doesn’t mean that sound marks are in any way inferior to the word marks. They perform the same function as performed by the word marks.[18] Thus, the description of the sound is the only means for presenting, in any printed record, the essence of the mark.”[19] This is done because actual sound cannot be represented visually and, hence, the U.S. system recognizes the description of the sound in the application as the accepted scope of the mark being sought. Accordingly, sound marks have been registered with descriptions using onomatopoeia, listed musical notes, and simple declaratory phrases, but generally there is no preferred method for the description of a sound. INDIA LAWS RELATING TO “SOUND TRADE MARK” PROTECTION Non Conventional trademarks are those trademarks which do not fall under the conventional category of trade. There has been no act which defines what non conventional is but with different case the understanding that has come up is that it is essential for trade mark to be visible to be represented but there are some trademarks which cannot be visible but can be heard, smelled, or could be tasted this kind of trademarks are called as non conventional trademark as sound being one of them.

Musical Note, jingle, noise sound of an animal falls under the preview sound. To use sound as a part of trade it is necessary to be protected under trademark. The Sec 2 (1) (zb) of the Indian Trade Mark Act defines trademark[20] and as per Section 18[21] of the Indian Trademarks Act, any application for registration of a trademark should be in compliance with Rules.

According to Rule 25(12)[22] b of the Trade mark Rules, 2002 the application for registration of a trademark for goods and services has to be such that it can be depicted graphically. Further, Rule 28 makes it clear that the trademark should be such that it can be represented on paper. Rule 30 further makes a specification to the effect that the graphical representation made should be durable and satisfactory. In addition to this, what needs to be remembered is that Rule 29(3) makes it explicit that three-dimensional marks can also be registered and so can a combination of colours. Sec 9 (3) makes exceptions to registrability of shapes as a trade mark if it result or where the shape gives substantial value to the goods. It might also be noted that Sec 2 (1) m of the Trademarks Act defines mark to be an inclusive definition consisting of shapes and packaging of goods or a combination of colours.[23] INDEPENDENT ANALYSIS:- The Indian Courts follows the concept of graphical representation to register sound trademark.

The first sound mark that has been in India is the Yahoo doodle. The important issue is that it is necessary to show secondary meaning for the unconventional trademarks such as sound marks before allowing registration of the sound mark in cases where the sound is related to some object and has primary meaning. (Ex: dog barking “BOW BOW” cannot be registered until it defines a secondary meaning to it which helps to distinguish the producer of a good.) The limited applications on registration of sound mark have resulted in the prevalence of ambiguities in the realm of unconventional trademarks. The proposed TMR manual of 2008 states that sound may be registered in India if it can be represented graphically and be distinguished from others. It provides limitation on using of nursery rhymes, simple music (one note), chimes, and music of one’s own country. In USA sound to be trademarked need to be unique in nature and even if it is not unique it should be such that it should justify itself that the mass can determine its product by hearing the respective sound relating to the product, whereas India has limited its view on non traditional mark by imitating the stand of European Union. Sound marks are widely used in trade and it becomes difficult to graphically represent sound in all cases. The representation of sound through onomatopoeia or sonogram becomes difficult as onomatopoeia of a sound can be written differently and interpreted differently from what is actually heard as for the use of sonogram in sound it cannot reflect the correct notes it only measures the frequency of the sound.

For registration of sound one should look into the uniqueness of the sound rather than graphical representation of it if a sound can reflect and attach a product to it than it should be allowed to protect as a sound mark. The TRIPS in Art 15 have defined Trademark as any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings. It further states that Members may require, as a condition of registration, signs to be visually perceptible. The article read out as “may require” which gives us a wider description and that denotes that even without the graphical representation non conventional trademark can be registered. For the better growth of the economic industry and better utility of products the courts should step ahead from Shield requirements and should imitate an act which is similar to Lanham Act. For Non conventional trade mark it has to go for two test before it can be granted a trade mark .The test has evolved with time where earlier it was just restricted to the source identifier test and distinctiveness test but in USA in the case of Hardly Davidson, the functionality test was taken to determine the test of sound of v twin engine but the before the court could upheld anything the case had been withdrawn, The functionality test is taken to check if the mark that has to be registered if it have a functional approach will not be liable be under trademark protection.

Sound in general is technical in nature and sound can be produced from any source and any kind of sound can be registered, to distinguish what kind of source that can be laid under trademark the test of functionality is required to check if the graphical representation of the sound does not fall under the category of functional doctrine. The problem with the general public is with the understanding of non conventional trademark is to relate the graphical representation in common parlance. In the case of Sieckman where the plaintiff tried to register the formula of methy cinnamnate as “C6H5-CH=CHCOOOCH3 the court rejected the contention that this is cannot be trademarked as formula cannot be held as a graphical representation. The understanding that can be related regarding to be that on view of keeping sample one really needs to look into the methods that can be acquired for graphical representation in common parlance. In USA cases of registering sound as trademark the person need to submit a sample of the sound in wav, mp3 format which help other registrar’s to relate to it. Even in India the yahoo doodle gave a graphical representation of its sound an also had given a mp3 format which help to satisfy the understanding in common parlance. Trade mark jurisdictions like US, has its Trade Mark Electronic Search System (T.E.S.S.)and the European Union has its Community Trade Mark Online which are free searchable online trade mark registers, which helps ensure that graphical representation and the process of registration and also the process of registration in general fulfil their public information functions. One thing that still haunt, both the registered proprietor and the applicant/third party user since there is no clarity as to who shall determine if marks are deceptively similar, and the peril of trespass would be higher if indefinite means of representation are legalized for the purposes of registration.

The juxtaposition of an unsolicited ban to recognise untraditional trademarks under legislation removes the cushion against a tone deaf judge and precludes a person of a remedy in law; but this definitely gives more food for thought before grant of registration in favour of unconventional marks. 1

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[1] Kritarth Pandey, Non Conventional Mark Analysis, <https://ssrn.com/abratct.php (last accessed on Sept. 12,2014).

[2] Ibid.

[3] Ralf Sieckmann v. Deutsches Patent and Markenamt, Case C-273/00, 12 Dec 2002, European Court of Justice.

[4] Arka Majumdar, The Requirement Of Garaphical Representability for Non- Conventional Trademarks, Vol. 11 (5) JIPR .313-317, 316 (Sept.2006)

[5] Ibid., 315.

[6] Amicus letter of the INTA in Sheild Mark BV v J Kist, 91 Trademark Reporter 1269 (2001).

[7] Shield Mark BV v. Kist, Case C-283/01, The European Court of Justice.

[8] Supra n.3.

[9] Dev Gangiee, Non-Conventional Trademarks in India, Vol. 22(1) National Law School of Indian Review, 67-95,72(2010). [10] Sound Decription, < https://www.copat.de/markenformen/soundmarkenabroad2005.pdf >, <last accessed on Sept 11,2014 > [11] The United States Trademark Association Trademark Review Commission’s Report to Congress had recommended that the terms “symbol or device” should not be deleted or narrowed to preclude registration of such things as colour ,shape ,smell or sound which function as a trademark. Their suggestion was followed by the US Congress. See Jane C. Ginsburg , Trademarks and Brands-An Inter Disciplinary Critique, 93 (Cambridge University Press 2008). [12] 15 U.S.C. Sec 1127. [13] Ralf Sieckmann v. Deutsches Patent and Markenamt, Case C-273/00,12 Dec 2002,European Court of Justice. [14] In re General Electric Broadcasting Co., Inc., 199 U.S.P.Q. 560 (T.T.A.B. 1978). [15] The concept of secondary meaning is based on the idea that marks that are descriptive of a product are ordinarily not protectable as trademarks.

However, some marks may be protected if they have acquired an association or secondary meaning for the consuming public as an identifier of the source of goods. To establish secondary meaning for a mark, a party “ must show that the primary significance of the mark in the minds of the consuming public is not the product but the producer. .See Daniel R. Schechter,5 Fordham Intell. Prop. Media & Ent. L.J. 481. See also Zatarain’s, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 791 (5th Cir.1983). [16] Supra. n. 1. [17] Supra. n. 1. [18] Supra. n.1 [19] Kawasaki Motors Corp. v. H-D Michigan, Inc., 43 U.S.P.Q.2d 1521 (T.T.A.B. 1997). [20] ““trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or service of one persons from those of others and may include shape of goods, their packaging and combination of colours : and—….” . [21] Trade Mark Act 1999 (Act of .47.of 1999). [22] Trade Mark Rules 2002 ( GSR 114 (E) of February 26 2002). [23] NEHA MISHRA, Registration of Non-Traditional Trademarks, Vol. 13 ,JIPR 43-58, 57 (Jan, 2008)

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