An Insight into Sound Trademarks (Part-I)

By Ritvik M. Kulkarni, III BSL LLB, ILS Law College, Pune 

A sound trademark is a unique sound which performs the function of distinguishing the goods / services of their manufacturer or service provider from those manufactured by all others. The scope of sound trademark may vary from a musical note (such as Intel’s jingle) to a non-human sound note (such as a MGM’s Lion Roar).

An unregistered trademark can be protected in several jurisdictions through an action for passing off, but a registered trademark is in a far better position as it receives statutory protection. In order to get a trademark registered, one is ideally required by the concerned Trademark Authority to supply a graphic representation of the proposed mark. While compliance with this requirement is fairly simple for word and device marks, it may prove as a barrier for registration of non visual marks such as those for sound, color, scent etc

Evolution of Sound Trademarks

With the advent of brilliant inventions in the radio and television, manufacturers took the opportunity to use these media to reach their brands to their consumers on a massively widened scale. Their use of distinct sounds through TV and radio advertising began as market strategy in order to attract more consumers towards buying their products. From the manufacturer’s point of view, use of sound marks increases the affinity of the consumers towards its products by appealing to a sensory function in addition to that of sight; thereby increasing sales and goodwill in the market.

Therefore it is highly likely that sound marks acquire distinctiveness among such consumers over a period of time, as opposed to word or device marks which may be inherently distinctive. A question then arose as to whether there lies any ownership in these distinct sounds intended to be solely associated with the brand’s products.

One of the earliest instances for a trademark claim in sound can be traced to April 1950; when the National Broadcasting Company’s applied for a trademark in what are known as the “NBC Chimes”. Unsurprisingly, the USPTO showed a liberal attitude towards this application and eventually allowed the three-note G-E-C chime to be registered under the registration number was 0523616, serial number 71541873[2].

These chimes are capable of being represented graphically in the form of musical notes; thereby enabling them to be easily examined for trademark registration. Currently, the latest version of the NBC Chime is also registered; with its .mp3 file available on the USPTO database under Serial Number 72349496[3]. The mark comprises a sequence of chime-like musical notes which are in the key of c and sound the notes G, E, C, the “G” being the one just below middle C, the “E” the one just above middle C, and the “C” being middle C, thereby to identify applicant’s broadcasting service[4].

Soon after NBC obtained trademark protection for its famous chime, many other broadcasting houses and news channels rushed to enjoy the benefits of similar protection for their sound marks. Companies such as 20th Century Fox, Harlem’s Globetrotter and Lucasfilms Inc. made successful applications to the USPTO to obtain a trademark on their proprietary sound notes.

However, not all trademark applications for all sounds have been successful in the US. In 1994, motorbike giant Harley-Davidson made several applications for obtaining trademark protection in the distinct sound that its bikes make on revving the engine. It was claimed by the Company that since the equipment can solely by used by its manufacturers, the revving sound / noise can be emanated or produced only if such an engine is revved; thereby making it unique to the brand. After fierce opposition applications from competitors, the company eventually decided to withdraw all these applications.

One of the few judicial precedents was laid down by the Canadian Federal Court in 2012 in Metro-Goldwyn-Mayer Lion Corp. v. Canada (Attorney General[5]); when Metro Goldwyn Myers fiercely and successfully fought a legal battle to overturn the Canadian Intellectual Property Office’s (CIPO) refusal for grant of trademark in the famous MGM “Lion Roar”. This sound mark was already registered with the USPTO when it first filed a trademark application for the same before it was applied for to the Canadian IPO in 1992. In 2010 the Registrar of Trademarks finally refused this application on the grounds that the Applicant (MGM) had not supplied the appropriate representation of the proposed mark for registration.

MGM appealed this order before the Federal Court.  In 2012 the Federal Court set aside the impugned order of refusal and ordered that the application be advertised in the Canadian Trade-marks Journal[6]. Hence albeit after a period of two long decades, MGM was successful in obtaining trademark protection for its “Lion Roar”. This precedent also opened an avenue for several others to claim protection in their sound marks in Canada.

[2]http://en.wikipedia.org/wiki/NBC_chimes

[3]http://tsdr.uspto.gov/#caseNumber=72349496&caseType=SERIAL_NO&searchType=statusSearch

[4]Ibid

[5] Case T-1650-10 (Order Mar. 1, 2012)

[6] Metro-Goldwyn-Mayer Lion Corp. v. Canada (Attorney General), Case T-1650-10 (Order Mar. 1, 2012).

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