The sound of harmony

Although brand owners are keen to protect the sounds and jingles associated with their products and services, the system for registering and protecting them on a worldwide scale is far from consistent. As India approves its first sound mark, Rachna Bakhru outlines the steps to harmonisation

Most people think of trademarks as simply words and/or logos; however, as both technology and the way we use it become more sophisticated, the importance of non-conventional signs, such as sounds, to promote brands is unquestionable. Consumers find it easy to identify a particular product or service by reference to a particular jingle, melody or music. Sounds are therefore capable of satisfying the trademark criteria: they can serve to identify the source or trade origin of a product or service.

However, non-conventional signs have not been widely accepted as trademarks across the world. In Asia for example, only Hong Kong, Singapore, Korea and Taiwan have provisions in their trademark legislation for the registration of sound marks. And even where provision for registration has been made, there is a marked lack of consistency in the criteria and procedures for registration.

According to article 15 of the Agreement on Trade-Related Aspects of IP Rights (TRIPS): ‘Any sign or any combination of signs capable of distinguishing the goods or services of one undertaking from those of other undertakings shall be capable of constituting a trademark…’ This definition is sufficiently broad to include non-traditional marks.

However, an essential registration requirement in most jurisdictions is that the mark in question should be capable of being represented graphically. This creates a problem since sounds cannot be visually perceived.

Defining a sound mark
The procedural requirements of graphical representation for the registration of sound marks vary in different parts of the world: there are essentially two approaches. In the UK, the sound mark needs to be graphically represented in the form of musical notes. It is not sufficient to merely describe the sound. In the US however, a description of the mark is required, not a drawing (eg of musical notes). Furthermore, the description needs to be accompanied by an audio or video reproduction of the sound.

‘IN THE UK, THE SOUND MARK NEEDS TO BE GRAPHICALLY REPRESENTED IN THE FORM OF MUSICAL NOTES, BUT IN THE US A DESCRIPTION OF THE SOUND IS REQUIRED’

Both the US and the UK positions have their pros and cons. While the UK position ensures that the sound mark being registered is clear and precise, the description required in the US ensures that the mark can be clearly understood by the common man. Not everyone can read musical notes.

Different countries also seem to adopt different approaches when examining sound marks for distinctiveness. For example, the Nokia ringtone was considered sufficiently distinctive to meet the registration requirement in the US and Australia, whereas it was rejected in Hong Kong in 2007, where the examiner concluded that: ‘The subject mark fails to perform the essential function of a trademark, which is to guarantee the identity of the origin of the marked products to the consumer by enabling him to distinguish the products from others which have another origin. On hearing the subject mark, the relevant consumers would only perceive it as a sound that signals that the goods are in operation but no more.’

Protecting the Yahoo! yodel
The Indian Trade Mark Registry recently registered its first sound mark: the Yahoo! ‘yodel’ sound. The development, which has been welcomed by brand owners, has generated a lot of interest in the region.

However, it is interesting to note that the Indian Trade Marks Act does not lay down any special procedures or criteria to be followed for the registration of unconventional marks. In the absence of clear guidelines, the Trade Mark Registry is likely to follow the UK practice since the definition of a ‘trademark’ in the Indian Trade Marks Act has been adopted from the UK Act. Further, taking into account the registration of Yahoo’s ‘yodel’ sound, it appears that a representation in the form of musical notes is likely to facilitate registration, while a mere description of the sound is unlikely to suffice.

Although the criteria and procedures for the registration of sound marks are at present far from clear, this is expected to change as the Registry examines more of these applications. At the moment, applicants are being advised to file a representation of the mark in the form of musical notation, as well as a CD with a recording of the mark.

The acceptance of sound marks by the Indian Registry is a positive step and one that will hopefully encourage other Asian countries to grant statutory protection to sound marks.


Rachna Bakhru is an IP consultant with Rouse & Co International


This article first appeared in IP Review, issue 25