An Insight into Sound Trademarks (Part-II)

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

Examination of a Sound Mark

Section 2(1)(i)(viii)(zb) of The Trade Marks Act, 1999 defines “trade mark” as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors. Therefore prima facie, graphical representability is a sine qua non for obtaining statutory protection in India. Concurrently it is also required under the trademark laws inter alia of Australia[1], Canada and Japan.

The simple justification for this omnipresent requirement lies in the fact that “it enables those engaged in the trade, and the public more generally, to discover quickly and cheaply which signs (marks or symbols) third parties have already claimed”[2]. The administrative justification lies in the fact that a graphically represented mark can be easily examined, assessed and stored by trademark authorities of a country. This view can be seen to have been followed by the Court in Swizzels Matlow Ltd.’s Application (No. 2)[3]

While the legislative and policy intent for keeping such a requirement seems fair, it proves to be an active impediment in the registration of sound trademarks. The main reason for this is that written musical notes generally cannot be read or understood by people who do not have the necessary knowledge of music. If lay members of the public and even traders are incapable of reading such a graphical representation of the sound marks, the entire purpose of introducing the said requirement will be defeated. However, non compliance with the same will lead to the application for the sound mark to be refused at the first instance. Procedural requirements must be adapted in order to reconcile this position of the law. In Shield Mark BV v/ Joost Kist h.o.d.n. Memex the ECJ laid down that requirement of graphical representation is not satisfied when the sound is represented graphically by means of a description using a written language, such as:

  1. An indication that the sign consists of notes going to make up a musical note
  2. An indication that it is the cry of an animal
  3. By means of a simple onomatopoeia
  4. By means of a sequence of musical notes[4]

However, sound marks will have satisfied the requirement for graphical representation if ‘it can be represented graphically, particularly by means of images, lines or characters, and that its representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.… [T]hose requirements are satisfied where the [mark] 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[5].

It is apparent that satisfaction of this requirement may become a highly technical affair; akin to one present in filing patent claims and specifications. In addition to sound trademark owners to invest a substantive amount of money in training and / or hiring music experts to prepare graphical representations. These costs will be in addition to those required to be incurred for applying to the trademark office.

In an age of rapid technological advancement, an easier and cheaper alternative would be submission of musical notes in the form of digital audio recordings. The sound marks can be recorded in the form of .mp3 and .wav files and may be burned onto a CD or any other data retention device; which can easily be submitted to the TMO through physical delivery or registered post. These digital recordings may be accompanied with a graphical representation of the sound mark ideally written in the manner laid down by the ECJ in Shield Mark BV v/ Joost Kist h.o.d.n. Memex.

The USPTO’s Trademark Manual and Examining Procedure provides for similar requirements: “For paper filings, specimens for sound marks must be submitted on CDs, DVDs, videotapes, or audiotapes.  37 C.F.R. §2.56(d)(3).  See TMEP §904.03(d).  For TEAS applications under §1(a), the specimen can be attached to the application and must be an electronic file in .wav, .wmv, .wma, .mp3, .mpg, or .avi format”[6]. The USPTO is unable to review files in any other format.

The USPTO prefers that the applicant submit small files of less than two minutes in duration. “Only one specimen should be included on each tape or disc; however, in a multiple-class application, the applicant may include more than one specimen on the same disc or tape.  If the nature of the specimen is unclear, the applicant should explain what it is and how it is used”[7].

As far as the Australia is concerned, it simply applies the same test of distinctiveness to sound marks as that applied to any other word or device mark. This distinctiveness may either be inherent or (most often) is acquired over a period of time due to regular use of the sound on its products or services or advertisements.  As of May 31, 2012, there had been 83 applications filed for sound trademarks, of which 39 marks had been registered (INTA PPT).

Following the ECJ’s order in Shield BV, the Office for Harmonization in the Internal Market (OHIM) amended its trademark examination manual. It provides that if a sound mark consists of music, the Office will accept only traditional musical notation as a graphic representation of the sound applied for (in accordance with the criteria of the judgment of 27/11/2003, C-283/01, ‘Shield Mark’). “However, where the mark consists of a non-musical sound, a graphic representation consisting if an oscillogram or sonogram will be acceptable provided that it is accompanied by a corresponding sound file submitted via e-filing (see decision of the President EX-05-3 of 10/10/2005)”[8].

Given below is a table comprising of some of the sound-marks currently registered with the USPTO:

Sr. No Trademark Owner Mark Description of Mark Serial Number
1. NBC UNIVERSAL MEDIA, LLC The NBC Chimes 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. 72349496
2. Del’s Lemonade & Refreshments, Inc. Carryout Food Mobile Truck – Horn The mark comprises a sequence of horn-like musical notes, F, A, sounded at least twice in sequence, the notes F+0 and A+0 being just above middle C. 73391897
3. CARTER, JACQUIE The Dreams We Share, We’ll Always Remember, Remember With The Music Of Your Life “ The mark consists of the words, “The Dreams We Share, We’ll Always Remember, Remember With The Music Of Your Life”, set to music. 73432170
4. METRO-GOLDWYN-MAYER LION CORP. The MGM Lion Roar THE MARK COMPRISES A LION ROARING. 73553567

[1] TRADE MARKS ACT 1995 – SECTION 40

An application for the registration of a trade mark must be rejected if the trade mark cannot be represented graphically.

[2] R. Burell ‘Trade Mark Bureaucracies’ in G. Dinwoodie and M. Janis (eds.) TRADE MARK LAW AND THEORY: A HANDBOOK OF CONTEMPORARY RESEARCH 95-98 (Edward Elgar, Cheltenham, 2007

[3] Swizzels Matlow Ltd.’s Application (No. 2) (2000) ETMR 58

[4] IJIPR Graphical Representation Paper

[5]

[6] 904.03(f)   Specimens for Sound Marks

http://tmep.uspto.gov/RDMS/detail/manual/TMEP/Oct2012/TMEP-1200d1e718.xml#/manual/TMEP/Oct2012/TMEP-900d1e763.xml

[7] 904.03(d)   Electronic and Digital Media Attachments to Paper Filings http://tmep.uspto.gov/RDMS/detail/manual/TMEP/Oct2012/TMEP-1200d1e718.xml#/manual/TMEP/Oct2012/TMEP-900d1e713.xml

[8] Paragraph 2.1.2.3 Sound marks, GUIDELINES FOR EXAMINATION IN THE OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) ON COMMUNITY TRADE MARKS PART B EXAMINATION SECTION 4 ABSOLUTE GROUNDS FOR REFUSAL

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