Sound Trademark

Trademarking Sounds: Embracing a New Generation

Introduction

The entire regime of intellectual property law (IPR), across the world, has been designed to promote a culture of research and innovation. Trademark law finds its place in this regime as the ambassador of customer loyalty and brand building. In practice, it encourages renowned multinational companies like Volkswagen to spend billions of dollars on research and development[1] by guaranteeing that no other producer can take credit for their efforts.

In this post, I wish to introduce the concept of ‘sound marks’. I also intend to briefly highlight the alarming dearth of sound mark registrations, even as we wade deeper into the digital age.

 

What are sound marks and why is trademarking them useful?

‘Sounds marks’ are sounds that perform the function of a trademark – they uniquely identify the commercial origin of goods. Scholars place them in the category of ‘non-conventional trademarks’, where sound marks feature alongside shape, olfactory (smell) and gustatory (taste) trademarks, among others.

But why is trademarking sounds important? It is well known that the Copyright Act, 1957 provides protection for sounds under the ‘musical works’ category.[2] However, obtaining trademark protection is still advisable, as the two laws protect completely different rights in the sound.

While copyright protects a work for the skill, labour or creativity of the author who created it, trademark protects a work for the reputation that it represents. To illustrate, consider the logo of Lamborghini – a bull. The bull, on its own, constitutes an artistic work. However, when placed on a car, it represents cars made by the company Lamborghini. If one were to simply copy the logo and sell it (as a drawing), it would infringe the copyright in the work. On the other hand, if one were to use the logo on cars and subsequently sell those cars, then they would be infringing the trademark rights over the logo. Understanding this difference is critical in ensuring that the owner of the work is sufficiently protected and compensated in case of infringement.

 

Are sound marks recognised by law?

Several major jurisdictions across the world, including the United States of America and the European Union, legally recognise sound marks. The rationale is fairly simple – if the underlying philosophy of trademark law is to prevent producers from misleading consumers, then sound marks should also be recognised. Indeed, there are several instances of companies registering sound marks in these jurisdictions – Metro-Goldwyn Mayor, for instance, who are recognised by their roaring lion (most popularly known from the prelude to the TV cartoon ‘Tom and Jerry’), or the orchestra that plays for Twentieth Century Fox before movies produced by them.

In 2008, India joined the several countries across the world that recognise sound marks by registering Yahoo’s ‘yodel’ as its first sound mark. The trend of granting sound marks in India has been further consolidated by the recent grant to Allianz Aktiengesellschaft, a German financial services company.

Purely in legal terms, several scholars have raised objections to the registration of sound marks in India. They state that sounds do not fulfil the legal criterion of the Trademark Act, 1999, which requires that all trademarks be “capable of graphical representation”.[3] However, this objection is specious, as ‘musical notes’ and oscillography do entail that sound is capable of graphical representation, and therefore fulfil the legal requirement.

Any qualms against the legality of registering sound marks, however, have been put to bed by the Trademark Rules 2017. The rules explicitly recognise the legitimacy of sound marks, by prescribing the manner in which applications for sound marks should be made.[4]

 

Moving towards a culture of trademarking sounds

While the law recognised sound marks almost a decade ago, registration of sound marks continue to be a rarity. This seems anomalous, especially since there has been a surge in the use of sound marks since then. The surge in the usage of sound marks has been fuelled by several factors. The most significant perhaps, is the increasing opportunities to advertise on digital platforms such as digital streaming platforms (YouTube, Netflix), and in-app advertising on smartphones. Companies have realised that using sound is not only desirable for the more popular advertising platforms, but it also allows companies to extend a message of inclusivity by counting visually challenged people in their branding plans.

In this new digital environment, it has become increasingly important for companies to protect their intellectual property rights. There has probably never been a time in history where intellectual property has been more susceptible to piracy and other forms of infringement. Trademarking sounds carries with it the benefit of making it easier to prove wrongful appropriation, and also increases the amount that can be recovered in damages, as it permits appropriating compensation from the revenue of the infringing party. It therefore comes a surprise that popular sounds such as Britannia’s jingle or Apple iPhone’s default ringtone and numerous others have not been protected under trademark law in India.

A recent Delhi High Court decision involving Sony Pictures further highlights the dearth in trademark registration for sounds. In this case, Sony successfully obtained an interim stay on the airing of an advertisement for the phone One Plus3T. The advertisement depicts Amitabh Bachhan and comedian Rohan Joshi playing a gameshow, answering the question – “Which phone is the best smartphone in India?”. The setting of the gameshow, however, was an imitation of the popular Sony TV gameshow ‘Kaun Banega Crorepati’ (Who wants to be a millionaire?). The court granted a stay on grounds of similarity, but there was no mention of the advertisement potentially infringing the sound mark in the distinctive sound that plays during the gameshow.

This trend of non-registration is alarming. However, the latest version of the Trademark Rules should act as a stimulus for companies to begin protecting and enforcing their rights in sounds. Perhaps, as instances of infringement increase, companies and trademark lawyers alike will realise that trademarking sounds is not an eccentric idea for the future but the need of today.

[1] http://fortune.com/2014/11/17/top-10-research-development/

[2] Section 14(a), Copyright Act, 1957.

[3] Section 2(zb), Trademark Act, 1999 (definition of ‘trade mark’).

[4] Rule 26(5), Trademark Rules, 2017.

 

Author: Rishabh Mohnot

Rishabh Mohnot is a third year BA LLB student at the West Bengal National University of Juridical Sciences. He recently participated in the Frankfurt Investment Arbitration Moot Court as an oralist and finished as a quarter finalist. Rishabh frequently writes on developments in the legal field, and is interested in intellectual property law, constitutional law and international investment law. He has also been a member of the NUJS Law Review.