After the introduction of the new Trade Mark Rules, 2017 on March 6, 2017; the process of trademark registration has been streamlined, with more emphasis on digitization.
This notification has also made easier for the companies to file applications for registration of sound marks, by appending an mp3 file in the application. ‘Factual Distinctiveness’ of the sound is the prerequisite which needs to be proved to register a sound mark. Here ‘Factual Distinctiveness’ means the immediate recall value of sound with the product/service.
A sound mark is a non-conventional trademark. Here sound performs the trademark function of uniquely identifying the commercial origin of products or services. Sounds can serve to identify the source or trade origin of a product or service. Under most Conventions and statutory provisions, the definition of trademark either covers sound as a trademark or does not exclude such marks. Examples of Sound Marks – four-note bell sound of Britannia Industries, default ring-tone of a Nokia mobile phone, sound of the lion’s roar at the beginning of an MGM-produced film Corporation, Yahoo’s yodel, thunderous sound of Harley-Davidson etc.. This approach is much easier than the prior one where it was quite difficult to register sound marks.
But now the latest amendment has eased out the complete process. As a result, a rise in the number of applications to register Sound marks can be expected. The new provision requires the sound to be submitted in an MP3 format not exceeding 30 second length and graphical representation of the sound notations with TM-A form. Earlier, to register a sound mark, the applicants had to file applications with a graphical representation or by spelling out the tune. This process lacked practicality. To the extent that even the registration certificate of the sound mark consisted of the sound mark as the graphical representation.
This change in the Trade Mark rules is expected to generate the lost interest in people for registering sound marks.
Yahoo was awarded as the first sound mark in India in 2008, to Yahoo Inc. It had a human voice yoodelling Yahoo. ICICI Bank was the first Indian entity to obtain sound mark registration. More such sound marks can be found on USPTO website here.
Some of the registered sound marks in India are:
National Stock Exchange – (Theme song)
ICICI Bank – (Corporate jingle – Dhin Chik Dhin Chik)
Britannia Industries (Four note bell sound)
Cisco – (Tune heard on logging in to the conferencing service Web Ex)
Edgar Rice Burroughs – (Tarzan Yell by its toy action figure)
Nokia – (Guitar notes on switching on the device)
Yahoo -(Human voice yodelling Yahoo)