From Silence to Sound Marks: A Comparative Study

I. Introduction

In the past five years, trade-marking sounds has grown exponentially and is now rampant worldwide, yet the USPTO led the list of distinctive sounds. In Australia, amendment to the Trade Marks Act in 1995 expanded the definition of a trade-mark so that it definitely included shape, colour, sound, or scent; it then took nearly another decade for the European Court of Justice to rule in Europe that sounds could actually serve as trade-marks. India has recently recorded its first sound mark for the Yahoo "yodel". According to the Trademark manual, neither the Act of trademarks excludes registration of a sound mark from it nor does it lay down that a trademark has to be visually perceptible in order to get registered.

The act provides only that the trademark must be "capable of being represented graphically" beside capable of distinguishing. A sound mark may therefore be one that consists of a series of musical notes, or with or without words, that represent the sound of a trademark. The manual declares no sound marks will prima facie qualify for acceptance except under evidence of distinctiveness. In particular, music consisting of one or two lines that is simple and is therefore widely used as chimes or nursery rhymes as names for goods or services to appeal to children is unlikely to be considered eligible to be registered as a sound mark. Sound mark registration would thus remain thin.

(A) Research Problem:

The registration of sound marks in India faces significant limitations due to stringent criteria that prioritize distinctiveness. According to the Manual of Trade Marks Practice and Procedure by the Ministry of Commerce and Industries, sound marks must demonstrate that they are perceived by the average consumer as uniquely associated with a specific brand. Consequently, simple sounds such as nursery rhymes, common chimes, and basic musical pieces (consisting of only one or two notes) are explicitly excluded from registration, as they are deemed too generic to distinguish goods or services effectively. For instance, Suzuki's application for a sound mark representing the "Distinct Car Running Sound" was rejected under Section 9(1)(b) of the Trademarks Act due to its descriptiveness and lack of distinctiveness.
In contrast, the United States adopts a more flexible approach to sound mark registration. The USPTO allows for the registration of sounds based on acquired distinctiveness without the same strict graphical representation requirements. Iconic sounds like the NBC chimes and MGM's roaring lion have been successfully trademarked, despite their commonality in certain contexts. This disparity results in a significant research problem: the exclusion of simple sounds in India limits the potential for creative sound marks, particularly in industries targeting children or localized markets. The rigid standards for distinctiveness hinder brand innovation and protection, contrasting sharply with practices in more permissive jurisdictions like the USA. Addressing these gaps could enhance India's trademark framework and foster a more dynamic environment for sonic branding.

(B) Research Objectives:

1. To Compare International Practices by studying US and UK registration process.

2. To Assess the Impact of Current Regulations in India, particularly in industries targeting children and localized markets.

3. To Identify Barriers to sound mark Registration.

4. To Propose Adaptations to Indian Law.

(C) Research Questions:

1. How simple sounds, nursery rhymes, and chimes excluded from the scope of registrable sound marks under Indian trademark practices impacts the businesses targeting specific markets, such as children's products or localized branding?

2. What lessons can India learn from the broader and more flexible approach to sound trademark registration in the USA?

3. How does the lack of mandatory graphical representation in the USA impact the accessibility and diversity of sound trademark applications, and can India adopt similar practices?

4. Are the requirements for proving factual distinctiveness under Indian law too stringent compared to the USA?

5. How does the mandatory graphical representation of sound marks (via musical staves) in India impact the willingness of businesses to apply for sound mark registration?

II. Cases influencing development

Sound in some cases can become an indication, unique to a specific trader. For example, the opening signal of the Nokia cellular phone, of Microsoft Windows XP or Samsung phone could be identified by consumers at first glance and therefore are undoubtedly unique indications. Therefore, the only challenge, if at all that prevails in this regard is the graphic represent ability of these marks.

The ECJ in the case of Shield Mark BV v. Joost Kist, when establishing the fact that the graphic representation standards he Court applied for the analysis of different types of trademarks, further when dealing with the description of a sound by means of a written description, the ECJ held that such a description did not have sufficient precision and clarity and was therefore not any form of graphical representation. On Onomatopoeia, the ECJ observed that there was a difference between the word to be trademarked and the onomatopoeia itself once pronounced. Therefore it was imprecise and vague; hence it did not constitute graphical representation.

Something similar was set out by the Court in Sieckmann to apply to sound marks as well, observed, where the court stated as follows:

“Those requirements are not satisfied when the sign is represented graphically by means of a description using the written language, such as, an indication that the sign consists of the notes going to make up a musical work, the indication that it is the cry of an animal, or by means of a simple onomatopoeia, without more, or by means of a sequence of musical notes, without more. On the other hand, those requirements are satisfied wher ethe 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 Court considered, under Article 2 that for a mark to be regarded as a trademark, it must possess two characteristics: the ability of graphical representation and the presence of recognizability, so that a sign should distinguish between two or more enterprises' goods or services. The ECJ ruled that clearly, a sound could be graphically represented. It then could not see any sensible reason why if it possessed the element of distinctiveness, a sound did not afford the possibility of trademark protection.It must be noted that 'As a practical matter, however,not everyone can read written music. Moreover,written musical notes while indicating pitch, normally will not indicate tone, and different tones can be used, namely, musical notes give a 'description' of the music but not the music itself. An apparent solution would be to deposit a digital recording of the sound with the registrar instead of graphical representation. On the need for the requirement of graphical representation; the same was required especially as these signs were not capable of visual representation. Most people can easily identify familiar sounds such as the famous A.R. Rahman composition that is now known as the "Airtel ring tone". Now, however, an increasing number of companies are seeking to register special sounds. A sound mark was recently registered at the Trade Marks Registry in India by Allianz AG.

Also, only musical works could be represented by musical notes. Thus, the Shield Mark decision lacking vision for non-musical sounds perhaps incidentally restricted the field of potential sound trademarks. It is arguable whether the decision did not consider any other sounds apart from musically because the case at its hands was one over a musical work; nevertheless, the authoritative tenor of the judgment appears to be such that the directions made are exhaustive ones of the application to all sorts of sounds. It is heartening, however, that in 2005 the OHIM, in regard to non-musical notes, has taken the American way and has accepted representation by means of a sonogram accompanied by the sound file.To make the representation more clear, it is suggested that a written description of the sound too should be given. Yet, however good this description should not be a qualifying factor such that even though not totally true, if mark is so, then mark should be registered.

Unfortunately, India has not changed its law and still adheres to the Shield Mark standard. Sound marks are perceived to be unique and the major obstacle that prevents them from being registered is their incapability of being represented graphically—a requirement for registration.

III. Laws in india

Trademark protection in India has improved tremendously in the past 10 years. To meet its obligation under the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights, the Indian government enacted the Trademarks Act 1999 (in force since 15th September 2003). The government then upgraded the facilities and infrastructure of the Intellectual Property Office (IPO) – for instance, by introducing electronic filing for trademark applications³.

A reading of Sections 2(1)(zb)⁴ and 2(1)(m)⁵ of the Act shows that the definition of “trade mark” has been widened to include shapes, packaging and combination of colors. As specified in the Trade Marks Manual⁶, this is an inclusive definition including any mark as long as the mark is capable of being represented graphically and capable of distinguishing the goods or services of one person from that of the others. Nonetheless, it has been stated that colours, shapes, sounds and smells will require “special consideration” during registration.

Although a fact that the non-conventional trademarks need not necessarily be represented in a graphical manner but they may be used to describe and define the mark adequately provided in such a manner that the descriptions and definitions are clear, precise and easily accessible. On the other hand, Indian legislation has explicitly laid down that the need for marks to be "graphically represented". It is conditional that a mark be graphically represented when:

1. A graphical representation can decide what the sign is with accuracy;

2. the pictorial representation can replace the mark used by the applicant because it is the representation of that sign and nothing else; and

3. Reasonably practicable that a person inspecting the register or reading the Trademark Journal can perceive what the mark is.

India, therefore, with regard to graphical representation of sound marks has merely imported the Shield Mark doctrine. The Trade Mark Registry has not attempted to dig into whether representation through musical notes is intelligible to all, and whether it encompasses all. The government now pays attention to establishing a structure of uniform, transparent and efficient working of the Trademarks Registry among others. The IPO had issued a redrafted version of its first Manual for Trademark Practice and Procedure, following meetings and solicitations of comments from its stakeholders. In the revised version of the manual, provisions relating to the examination procedure of unusual trademark applications remain at par. At the time of writing, it is not clear if the Trademarks Registry will accept the new manual as prepared. However, the exercise itself is worthwhile to go through in detail⁷.

IV. Instances of registration

So far, three non-conventional trademarks have been registered in India. The first non-conventional mark that was registered is Yahoo! 's yodel. The yodel was represented through musical notes. The shape of the Zippo lighter was also granted registration, which was later confirmed in a trademark infringement suit in the Delhi High Court, on the ground that it was distinctive.The last non – conventional to be registered is a sound mark held by a German company by the name of Allianz Aktiengesellschaft.⁸.

There are two points of interest which comes to procedural requirements for non-conventional marks. The first of these concerns the flagging up of non-conventional marks on the application form, so that special rules can be applied. The Trade Marks Rules ⁹and Manual are very clear that in certain cases, the application forms must indicate the manner in which a mark is non-conventional. The importance of this categorization on the application form is noted in the OHIM Examiner’s Manual:

“The categorization of marks (word, figurative etc.) serves a number of functions. Firstly… it establishes the legal requirement for the mark to be represented, secondly it can help understand what the applicant is seeking to register and finally it facilitates research in our database”.

However, given the open ended definition of a trade mark, not all categories of non-conventional marks are mentioned in the Rules, so this leads to the second point. Trade Mark examiners are entitled to ask for further and better particulars, including a written description of the trade mark being applied for. While the written description requirement is not compulsory, for suspected non-conventional marks this should be liberally used to request additional information so the sign being applied for can be defined appropriately.

There are many sound marks registered in different countries around the world. Jingles, such as the Nokia ring tone, “roar of a lion” used by MGM (where a sound sonogram or spectrogram adequately represented the roar as it depicted pitch, progression overtime, and volume) , and the chime used by NBC, all have a distinctive character, and assist in the identification of products, thus defining their commercial origin.

Similarly, MGM lion's roar is as recorded below:

Primarily, there is no difference between a "non-conventional" and a "conventional" trademarks and there is no justification in arguing whether the former represents an undesirable restriction of free intellectual property resources or not. Non-conventional marks are remarkably unsteady of origin and are rarely used without additional words or figurative marks to back them up. Since the trademark law is of a global character, it goes without saying that the same is dynamic in nature and the local laws have to keep on updating themselves quite often in order to keep in pace with changes and to be able to tackle the technical impediments it may have to come across quite frequently.

In a palpable sense, it can be said that the Indian Trademark law has finally caught up with modern marketing and the draft manual has picked up several issues providing a robust structure which can be allowed to gradually evolve the principles in the said zone. India being a very active member in the world intellectual property arena should be able to make these changes and be able to protect the businesses of numerous makers and also the goodwill of the consumers. In India, recognition and registration of the sound marks as non-traditional trademarks have become the pace especially after getting the Trademark Rules during 2017. With this, certain key cases and examples, which provide an idea about how sound marks are treated by trademark law in India, shall be explained as follows:

Yahoo's Yodel (2008):

Yahoo became the first company in India to register a sound mark with its three-note yodel. It marked the first massive step toward the recognition of the sound as a legitimate trademark category in India24.

ICICI Bank Corporate Jingle:

ICICI Bank successfully registered its corporate jingle as a sound mark, furthering the trend of using auditory elements for brand identification in India34.

MGM's Roaring Lion

Although it is an international example, the MGM lion roar often pops up in discussions on acquired sound marks and recognition as a trademark by various jurisdictions including India. The example above proves that even non-musical sounds can be qualified for trademark registration if they are sufficiently distinctive.

Aflac's Quacking Duck

Another very excellent example of a sound mark under U.S. law is AFLAC's quacking duck. Under Indian law, a quacking duck of AFLAC is held to be distinctive. The case is not Indian but reflects the general growing acceptance worldwide, which influences the Indian perspective.

V. Sound mark registration in the united kingdom

Although UK implementing legislation did not specifically allow sound to be registered under TM, it certainly left room open for registration of sounds¹⁰. Interestingly, sound marks have caused much less fuss than colour marks and smell marks. It is now commonplace, both in the UK Trade Marks Registry as well as OHIM, for the registration of such marks subject to the GR being graphical using mu sical notation, and the other requirements to register a TM are fulfilled¹¹.The UK Patent Office Trade Marks Works Manual supplements further and observes that 'Musical notation will be accepted as a graphical representation of a sound mark.". If the instrumental(s) performed to make the sound is itself a part of the mark then this should be indicated. Names of pieces of music will not be acceptable as a graphical representation of the sound [since] pieces of music can be played in several ways [and besides] the title of the piece is too vague and can never replace the actual sound, even if very well known'¹² One of the most well-known examples of a registered sound mark in UK is the Direct Line Insurance telephone jingle, that is represented graphically with musical notation comprising 10 notes without any limitation related to the instrument by which the sound is played.

(A) Porsche's Engine Sound Application.

The European Union Intellectual Property Office has refused to provide trademark protection to Porsche on the sound that the German car manufacturer's electric vehicles emit - such as its Taycan model. In EUIPO's evaluation, it is too indistinct and consumers don't link it with Porsche; this is "forgettable" and too generic to distinguish its goods.

The noise is the pedestrian warning notice used at low speed to alert pedestrians of an approaching vehicle. Lamborghini has ensured to protect the sound of the Revuelto model under trademark while Porsche, unfortunately, their did not qualify to the distinctive criterion under EUIPO. It observed that the relevant public also does not pay that much attention to or remember the sound, therefore it cannot be regarded as landmark recognizable brand identifier.

In its appeal, Porsche argues that some sounds may be instantly recognizable, and the example oft given is a lightsaber. It also argues that DPMA has registered its sound in Germany, and even that BMW has trademarked Hans Zimmer-manufactured sounds that are virtually identical to the Porsche sound.

This situation further highlights the increasing requirement for artificial sounds in EVs in terms of safety regulations. The sounds are essential to inform pedestrians, and unlike inner sounds played via a vehicle's speakers, perhaps customized, the sounds meant for informing pedestrians have to adhere to specific regulatory requirements; thus uniformity in all manufacturers.

(B) OHIM V. Erpo MÖbelwerk (ECLI:EU:C:2004:64)

In this case, the successful registration of a new sonic logo by one of the world's foremost engineering companies, Sandvik, is significant mainly because sound marks often fare poorly in proving distinctiveness under UK and EU law.

UKIPO highlighted that the sound mark has to be distinct enough so that consumers identify it with a particular brand. The sonic logo of Sandvik cleared the hurdle easily by showing that well-constructed and recognizable sounds can meet the requirement of distinctiveness. This decision, therefore, could be considered as an indicator of an increased willingness on the part of the UKIPO to recognize sound marks more liberally, mirroring growing audio branding influence. It therefore shows that the UKIPO may be willing to register such marks where a business can demonstrate sound originality and its potential to be indicative of the origin of a brand. The case of Sandvik illustrates a well-designed sonic logo can satisfy the trademark requirements for the UK and, accordingly, may set a trend towards a more liberal view of sound marks in the future.

VI. Sound mark registration in the united states

The US has been one of the most liberal countries in respect to recognising the registration of sounds.The flexibility accorded by the broad definition of a TM in LA allows sound marks to be registered as TMs provided that such marks are capable to perform as indicators of source and to comply with other statutory requirements. The U.S Trademark Manual of Examining Procedure (TMEP) para 1202.15 defines sound marks as marks that 'identify and distinguish a product or service through audio rather than visual means'¹³ thus there is no need to submit a drawing with the application¹⁴. What is required is a specimen, a description of the sign, and evidence of use which taken together represent a descriptive representation system. Since sound cannot be represented visually, the US system accepts as a satisfactory description of the sound the use of onomatopoeia, listed musical notes, and simple declaratory phrases. Under U.S TM law, the answer to the question whether a sound can be a TM is that it 'depends on [the] aural perception of the listener which may be as fleeting as the sound itself unless, of course, the sound is so inherently different or distinctive that it attaches to the subliminal mind of the listener to be awakened when heard and to be associated with the source or event with which it struck'. This reasonably strict test was first applied in General Electric Broadcasting Coinwhere the applicant tried to register the sound of a ship's bell clock.

That is to say that sound marks require strong proof of distinctiveness or proof of secondary meaning in order to be registered as valid TMs. The spectrum of distinctiveness regarding sounds has been defined by the U.S Trademark Trial and Appeal Board (TTAB) on one hand as 'unique, different, or distinctive' sounds which means that such sounds are inherently distinctive and on the other hand 'commonplace' sounds which require secondary meaning

Registered Sound Marks in the US In 1970 a series of three notes was registered as a sound mark for National Broad casting Company the so-called NBC chimes which was the first sound mark to be accepted and registered by the U.S Patent and Trademark Office. Furthermore, one of the most famous sound signs registered in US was the roar of a lion that the Metro-Goldwyn-Mayer used to announce the beginning of a movie and which was registered as a TM in 1985, although begun using it decades ago before applying for TM registration. Moreover, Intel acknowledged the value of a sound mark for use in connection with tech nology products in 1994, when the Intel bong sound mark was produced. The sound mark contributed to establish Intel's main brand qualities, including its reputation for cut ting-edge technology. Intel's sound mark is one of the most famous marks today, reg istered in many countries and heard every three seconds somewhere in the world.

Cases where sound marks could not be registered as TMs Later, in a couple of cases it was decided that a musical composition could not serve as a TM for itself. In Oliveira v Frito-Lay where the claimant attempted to register as a sound mark its Grammy Award winning song, the district court stated that 'there is no federal trademarks protection for musical works'. The appeals court rejected that, and found that there was no justification for why a musical composition could not be an indicator of source. The Circuit Court in Oliveira cited the example of the NBC's chimes, and stated it to be a short musical composition consisting of three sounds, set to a particular tempo and played by a particular instrument. These features led the cir cuit court to determine that jingles were common advertising tools which undeniably functioned as indicators of source and, thus deserved protection.328However, the ap peals court reversed the decision of the district court because the claimant in this case failed to present evidence that the song indicated the source of a particular product and it rather functions as a TM for itself.

In Kawasaki Motors v Harley Davidson Harley-Davidson (HD) attempted to register as a TM the very distinctive reviving sound of a HD motorcycle engine. According with the application for registration the mark 'consists of the exhaust sound of applicant's motorcycles, produced by V-twin, common crankpin motorcycle engines when the goods are in use'. The Board stated that it should be assessed whether the sound mark is 'a functional by product of or descriptive of, motorcycle engines that the in stant[opponents],. claim a right to use'. Nine of HD competitors filed objections against the registration asserting that a number of brands of cruiser-style motorcycles use the same engine and create the same noise. After years of litigation, with no favorable outcome, HD withdrew its application.

In addition in a recent case known as Ride the Ducks v Duck Boat Tours , the plaintiff and the defendant offered tours in duck-shaped boats and they both supplied its customers with duck call devices that produced quacking sounds. The plaintiff filed a motion for a preliminary injunction as he started using the quacking noise first The court ruled that the claimant could not demonstrate that it held a valid TM in the quacking noise and it also ruled that the quack was 'a familiar noise that would not.qualify as.inherently distinctive' Concerning secondary meaning the court ruled that the mark did not acquire distinctiveness because the claimant's commercials oriented the consumers to the quacking device itself rather than to the claimant's tour services and therefore the commercials failed to point to the specific services associated with the quacking noise In addition, the sound had been used only for one full tourist season. The limited decisions on sound marks indicate that courts will refuse to expand the protection to sound marks unless they fulfill the conventional TM requirements i.e source identification, distinctiveness and non-functionality even though the LA liberal provisions treat sounds as capable of being registered as TM If those requirements are met sound marks are as registrable as conventional marks.

VII. Comparative analysis of sound marks registration

VIII. Strategies for enhancing soundmark registration in india

Based on this comparative study,UK and India is partially similar and on same page but For the better development of business pursuing sound mark registrations,India could Adopt US practices mentioned below;

In the U.S., the requirement for graphical representation is not as stringent as in India, as outlined in 15 U.S.C. § 1127. India could consider allowing sound marks to be registered based solely on audio files without necessitating musical notation. This would simplify the

registration process and encourage more applications.

The U.S. system allows for the registration of common sounds based on acquired distinctiveness, as indicated in 15 U.S.C. § 1052(f). India could adopt a similar approach, permitting applicants to demonstrate that a sound has become distinctive through extensive use and consumer recognition, even if it is initially considered common.

While both India and the EU require audio files for sound mark applications, the U.S. treats this as optional under its practices. Allowing applicants in India to submit audio files optionally could reduce procedural burdens and make the application process more accessible.

The Indian trademark system should adopt a framework that recognizes acquired distinctiveness for common sounds. This would allow brands to demonstrate that their sound marks have gained distinctiveness through extensive use and consumer recognition, even if they are initially considered commonplac.The criteria for assessing distinctiveness in the U.S. are more flexible, focusing on whether consumers associate a sound with a specific brand. India could benefit from adopting a similar standard that evaluates consumer perception rather than strictly adhering to traditional notions of distinctiveness.

Establishing clearer guidelines regarding what constitutes a common sound could help streamline the registration process. For example, defining thresholds for simplicity or commonality would provide applicants with better clarity on what sounds may be eligible for registration.

Suggestions for Incorporating Sound Marks in India

Flexible Graphic Representation Standards: Accept Digital Representations- They should include in the standards the acceptance of digital recordings, such as audio files. Then they will accept accompanying traditional graphical representations, like musical notation for sounds which cannot be represented using notes alone.

1. Expand the Definition of Graphic Representation: Accept Varied Formats- Expand what might be considered an acceptable graphical representation to include sonograms or spectrograms, in which sound waves are visually represented along with their characteristics.

2. Explain the requirements for distinctiveness Lower the bar of distinctiveness- Introduce a more nuanced approach to determining what constitutes distinctiveness in a sound mark, understanding that the context of sound branding and dynamic market recognition requires a different approach. Acquiring distinctiveness could then be made easier.

3. Rules regarding non-musical sounds: Detailed rules on sound marks -Create clear rules on the registration of non-musical sounds, considering the fact that they can also act as good trademarks. This would now define how sounds such as alarm or alerts are registered.

IX. Conclusion

By adopting these recommendations inspired by U.S. practices, India can create a more conducive environment for registering sound marks. This would not only expand opportunities for businesses seeking to protect their unique audio identities but also enhance competition and creativity within various industries targeting children and localized markets.

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