Akshay Ajayakumar and Srinjoy Das
An analysis of sound marks registered at the Indian Trade Marks Registry will show the lack of consensus among the Applicants and the Registry regarding the graphical representation of sound marks. This post will briefly analyse the jurisprudence concerning sound marks in the EU, explain the requirement for sound marks in India, and analyse a few sound mark registrations in India vis-à-vis graphical representation.
What is a sound mark?
Most of us knowingly or unknowingly are aware of sound marks. Everyone has heard the ‘Ting Ting Ti Ting’ of Britannia or the fanfare of MGM. When a sound performs the function of a trademark, it can be categorised as a sound mark. As per the USPTO Trademark Manual of Examining Procedure sounds can function as source indicators when they "assume a definitive shape or arrangement" and "create in the hearer’s mind an association of the sound" with goods or services.
Graphical representation requirement for unconventional sound mark in the EUIPO
The Court of Justice of the European Union (CJEUS) in the seminal Sieckmann case, concerning an olfactory mark, held that “a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective” (Sieckmann criteria).
Further, the CJEU in Shield Mark BV vs Joost Kist considered the requirement of graphical representation of a sound mark and referred to the Sieckmann criteria and decided that graphical requirements are satisfied when ‘the sign is represented by 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.’
The case of Tarzan’s yell and MGM Lion’s roar in Europe
The requirement for graphical representation in staff notes led to the rejection of Edgar Rice Burroughs Inc.'s application for Tarzan’s ululating yell (see here) and Metro-Goldwyn-Mayer Lion Corp’s application for lion’s roar (see here) as it was unable to meet the Sieckmann criteria. The applications were filed as spectrograms with written descriptions. A spectrogram is a three-dimensional depiction of the distribution of a signal’s frequency content (blackening) versus frequency (vertical axis) and time (horizontal axis). Spectrograms can record not only sounds and noises, i.e. sound occurrences, but also any signals whatsoever, such as light, for example. On the other hand, if sound occurrences are depicted in this way, the spectrogram is a sound spectrogram, usually called as a sonogram. A spectrogram did not permit third parties to reproduce the sound without technical means; nobody could “read” a spectrogram as such, and therefore it was neither clear, intelligible nor easily accessible.
Considering the furore caused by this, the relevant regulation was amended in 2005 and a sound file was allowed with electronic filings for Community Trademarks (CTM). Accordingly, for CTM applications, an electronic sound file together with a graphical representation of the sound was made an acceptable graphical representation for purposes of trademark registration.
The EUIPO took the initiative to change their practice on sound mark registration by allowing the submission of a spectrogram or a sonogram if accompanied with an audio file. After years of trying, Tarzan’s yell and MGM Lion’s roar were finally registered as CTMs through sonogram/spectrogram accompanied with a sound file.
Later on, the Regulation (EU) 2017/1001 on the European Union Trade Mark, implemented in 2017, added sound marks to the definition of trade marks ( see Article 4 of Regulation (EU) 2017/1001) and did away with the requirement for graphical representation of trade marks and the only requirement now is for it to be capable of ‘being represented on the Register of European Union trade marks (‘the Register’), in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.’
Sound Marks in India
Unlike the EU, neither the Indian Trade Marks Act, 1999 (‘TM Act’) nor the Rules defines Sound Marks. According to the definition of “trademark” under Section 2(1)(zb) of the TM Act, a “trade mark” should be capable of being represented graphically. Consequently, as sound marks can be represented graphically, through staff notations, spectrograms, sonograms, etc.; they are capable of being registered under the Act.
While Rule 26 (5) of the Trade Marks Rules, 2017 (hereinafter the ‘TM Rules’) provides that ‘Where an application for the registration of a trademark consists of a sound as a trademark, the reproduction of the same shall be submitted in the MP3 format not exceeding thirty seconds’ length recorded on a medium which allows for easy and clearly audible replaying accompanied with a graphical representation of its notations.’
Further, the draft Manual of Trade Marks also provides that ‘A trademark may consist of a sound and represented graphically by a series of musical notes with or without words’ and ‘graphic representation requirements are met by representation of the sign by a musical stave divided into measures and showing, in particular, a clef, musical notes and rests, indicating relative value, and sharps, flats and naturals (accidentals).’
Therefore, a sound mark should be represented by a series of musical notes(graphically), with or without words, and should be submitted along with an audio file in MP3 format.
Non-musical sounds can be represented in conventional staff notations in order to get a very close resemblance to the sound in question. However extra care must be taken in choosing the octave, cleft, notes and accidentals (if any) for the written notation to achieve a plausible resemblance.
In India, there are more than 25 sound marks registered as of date. Considering the difficulties in the graphical representation of non-musical sound marks, it is relevant to examine how India dealt with non-musical sound marks.
See, Decision No Ex-05-3 of the President of OHIM of 10 October 2005 concerning electronic filing of sound marks.
The above-mentioned non-musical sound marks (except for the sound of the bullet, which will be dealt separately below) are represented graphically albeit through onomatopoeia, sonogram, or spectrogram.
It is also relevant to note that erstwhile, Trade Marks Rules, 2002 did not have any provision pertaining to Sound Marks. The current draft Manual of Trade Marks also came into being in 2015. However, the erstwhile draft Trade Marks Work Manual enunciates that ‘graphic representation requirements are met by representation of the sign by a musical stave divided into measures and showing, in particular, a clef, musical notes and rests, indicating relative value, and sharps, flats and naturals (accidentals).’ The graphical representation requirement remains pari materia to the current requirements (it is similar to the Sieckmann criteria). Therefore, most of the above marks registered before 2015 were in violation of the Trade Marks Work Manual. Further, the marks registered after the implementation of the 2017 Rules were in violation of the TM Rules.
The Graphical Representation requirement-a look at the Indian Trade Marks Registry
Even though the draft Trade Mark Manuals called for the graphical representation of the sound in musical notations, the Registry in practice has allowed sonogram, spectrogram, and onomatopoeia. Consequently, it was expected that the amendment to the TM Rules 2002 will include amendments recognizing such methods of graphical representation. However, the TM Rules 2017 only gave legitimacy to the Sieckmann criteria.
In certain cases, non-musical marks cannot be represented by musical notations. However, this did not stop certain applications from representing non-musical works through staff notation to overcome this perceived burden (even though in practice the Registry allowed other methods of graphical representation).
For instance, Eicher Motors Limited applied for registration of the sounds of their Royal Enfield bullets as a sound mark by graphically representing the sound in the form of musical notations. However, they erred by reproducing notes on a higher octave and on the treble cleft. This is to say that if you were to tap your fingers on a desk in the same rhythm as has been suggested in the mark, you would make a sound close to that of a thumping bullet. However, when played by a violin, guitar, piano right-hand, or any other instrument that plays treble cleft in the exact octave that the mark is written in, it would not create the same sound as your finger-tapping or the thumping of a bullet, due to the difference in frequencies. While the rhythm/beat of the notes would match the rhythm/beat of a bullet's thumping, the two pitches would be worlds apart. It is also relevant to note that Harley Davidson had earlier failed in its attempt to register the sound of its motorcycles as a sound mark in the US (see here) on account of its functionality. However, in India, Eicher Motors Limited has succeeded in registering the sounds of its motorcycle as sound marks without even a Section 9(1)(a) of the TM Act [lack of distinctiveness] objection and that too with a questionable graphical representation.
In the case of Britannia, the Ti Ting Ting is wholly vague and ambiguous. This is due to the fact that similar to Eicher, Ti Ting Ting does not give us an indication of the frequency or pitch the sound would be played at, but just gives us a vague idea of its rhythm. It is possible to play Ti Ting Ting in eight different octaves while maintaining the same rhythm. It can be argued that a mere Ti Ting Ting doesn't even shed any light on the rhythm, as the same could be open to interpretation. However, Britannia subsequently has registered their jingle represented graphically through staff notations (Indian Registration No. 1913366).
In the case of the lone sound mark registered with the musical notes explained rather than given in musical notations, it was deemed registered as the Registry has failed to notify the International Bureau regarding its acceptance/refusal under Section 36-E(5) of the TM Act. Moreover, XappMedia indicated the relative frequencies of their musical notes, but failed to point out the rhythm it will be played at. There is a total of five broad ranges of tempo in (classical) music: (from slowest to fastest) Lento, Andante, Allegretto, Allegro, and Presto.
In the cases of Suzuki, Tarzan's yell, and Zippo, it is interesting to note that the spectrogram images take into account both frequencies as well as the beat, thus providing a better understanding of the sound that is intended to be trademarked. However, in any case, while a sound mark with staff notation is understood by at least a certain part of the population, a sound mark with a spectrogram\sonogram is unlikely to be understood or reproduced. When IP owners are obligated to be vigilant about similar/identical marks such a representation will prove to be an additional burden on them.
The Registration of the ululating yell of the Tarzan by Edgar Rice Burroughs Inc. in 2008 using spectrogram for graphical representation, much before the 2015 draft Manual or the Rules governing the sounds marks, should have acted as a precursor to the Registry to consider representation of non-musical marks through other methods other than through Musical notation. However, to this day the Registry on paper remains committed to the Sieckmann criteria. In stark contrast, in practice, the Registry allows a wider variety of graphical representation than mandated.
Even though the draft Trademarks manual calls for graphical representation in staff notes, the Indian Trademarks Registry in practice allows sonograms and spectrograms. The Indian Registry has followed the EUIPO’s footsteps and allowed sonograms and spectrograms as it is accompanied with audio files. The Indian Trade Marks Registry has allowed registration of sound marks in tune with the times, at times even disregarding the TM Rules and the draft Manual. The way forward would be an amendment to the TM Act itself to dilute the requirements for graphical representation or at the least, an amendment to the TM Rules allowing alternatives to musical notations like sonograms, and spectrograms. Also, enabling the public to listen to the sound marks at the Registry’s online portal will also aid in understanding the sound marks and help third parties in their due diligence.
Another point of issue is whether the TM Rules mandating graphical representation of sound marks by only musical notations is a subordinate legislation traveling beyond the scope of main legislation (see Wyeth Holdings Corpn. and Ors. vs. Controller General of Patents, Designs and Trade Marks and Ors. 2007(34)PTC1(Guj)), as Section 2(1)(zb) of the TM Act calls only for a graphical representation but not a specific graphical representation. In any case, a few of these aforementioned sound marks, which were granted registration after the commencement of the TM Rules in 2017, are lying in violation of the TM Rules due to the specific requirements for graphical representation.
In case trade mark jurisprudence in India remains committed to the Siekmann criteria and continues to follow the practice of requiring that musical notations be represented graphically, even for non-musical trademarks, a better way to go about it would be to accept graphical music notations written on a digital medium (see here). Such a software, which is free to use for composing simple scores of music, helps the composer listen to their composition before finalising it.
This could go a long way in helping composers listen to their compositions and evaluate whether their musical notations actually sound like the non-music trademark that they intend to apply for. At the Registry, it could also be used by the Examiners to understand whether the graphical representation of musical notations for a certain non-music trademark has been aptly composed or not. This is particularly relevant as the exclusive rights granted to a Registered proprietor as per Section 28 of the TM Act is for the sound trademark applied-for not for the sound they perceived it to be.
Akshay Ajayakumar is a graduate of National Law University, Jodhpur and is currently pursuing his LL.M in IP and Competition Law from Munich Intellectual Property Law Center (MIPLC) – A cooperation project of the Max Planck Society, the University of Augsburg, the Technical University of Munich, and The George Washington University.
Srinjoy Das is a final year student at the West Bengal National University of Juridical Sciences, Kolkata.