Branding by Sound: A
Comparative Study of Sound Trademark Protection in India, EU, and the USA-
Statutory Framework in India
The Trade Marks Act, 1999 does
not explicitly define a sound trademark. However, Section 2(1)(zb) of the Act
defines a ‘trademark’ as a mark capable of distinguishing goods or services and
capable of being represented graphically. In support of the same, Rule 2(1)(k)
of the Trade Marks Rules, 2017, permits representation of trademarks in either
paper or digital form. In furtherance, Rule 26(5) of the Trade Marks Rules 2017
(2017 Rules) specifically talks about sound trademarks, mandating that a sound
mark must be submitted in an MP3 format, not exceeding 30 seconds, on a medium
which allows for easy and clearly audible replaying and; a graphical
representation of the sound, through musical notation. These provisions
collectively reflect India’s gradual yet deliberate shift towards accommodating
non-conventional trademarks within its statutory regime. Tata Group’s Indian Hotels Company Limited (IHCL)
secured registration for its first sound trademark i.e. ‘Taj’ on January 07,
2026 under Application Number 6962095 under Classes 09, 35 and 43. It marks as
a major celebration as it is the first ever registration for a sound mark in
the hospitality industry in India, thereby recognising the importance of sound
marks yet again. In the Reply to the Examination Report against a Section
9(1)(a) objection, the Applicant proved the essential elements of a sound
trademark in the following manner:
“The subject sound mark is a short harmonic
chime, composed to evoke serenity, luxury, and warmth — qualities that resonate
deeply with the expectations of guests in the hospitality sector. Unlike common
ringtones or generic musical phrases, the subject sound mark is:
• Not functional, i.e., not used for
announcements or operational cues.
* Not customary in the industry
or descriptive of any service feature.
* Designed with distinctive
tonal characteristics to create a strong audio identity”.
Further, it is highlighted that
some of the notable sounds have already been registered in India, examples of
which are as follows:
1) Reliance Industries Limited’s ‘MOGO’
Jingle
2) Twentieth Century Fox Film Corporation’s
‘FANFARE’ Sound
3) TATA Consumer Products Limited’s
‘ShikShikShik’
4) Yahoo! Inc.’s yodel (first sound mark
registration in India)
5) Nokia’s Tune
Therefore, while sound
trademarks may not enjoy as much public recognition as the conventional
trademarks, they are in reality, accepted and protected far beyond common
perception. European Union
EUIPO Guidelines 9.3.7 states
that a sound mark can only be represented by either submitting an audio file
reproducing the sound or a musical notation. Article 3(3)(g) of EU Trademark
Implementing Regulation states that a sound mark is exclusive to a sound or
combination of sounds. That being said, any marks which consist of more
features, do not qualify as sound marks and are referred to as multimedia
marks. Additionally, the kind of marks which are unlikely to be accepted
without proof of factual distinctiveness include:
i) very simple pieces of music
consisting of only one or two notes;
ii) sounds that are in the
common domain;
iii) sounds that are too long
to be considered as an indication of origin;
iv) sounds typically linked to
specific goods and services.
Shield Mark BV v. Joost Kist
h.o.d.n. Memex is an EU landmark judgment that recognised the existence of
non-traditional trademarks, particularly sound marks and concluded that sounds
can constitute trademarks if they are capable of distinguishing the goods or
services of one undertaking from those of other undertakings and are capable of
being represented graphically.
Thus, the EU strictly follows
the prerequisite of a mark being distinctive and graphically represented while
applying for the same. The same approach is being followed in India as well.
Even in the judgment of BVG v
EUIPO, a two seconds sound mark was applied for registration and the EUIPO
examiner refused the application on the absolute ground of lack of
distinctiveness. From the examiner’s viewpoint, the sound was too short to have
garnered any recognition amongst the relevant public. The said decision was
upheld by the Fifth Board of Appeal. However, the General Court overturned the
said refusal and held that “Neither the duration of the mark applied for nor
its alleged ‘simplicity’ or ‘banality’, which does not in itself prevent the
corresponding melody from being recognised, are obstacles which are sufficient,
in themselves, to justify the lack of any distinctive character”. This judgment
is relevant when practitioners need to respond to refusals based on absolute
grounds.
United States of America
The United States of America
has adopted a more liberal approach in registration of unconventional
trademarks, as compared to the EU, that follows a more cautious approach. The
major difference between these jurisdictions is that in the United States it is
not a mandatory requirement to represent a mark graphically. The Code of
Federal Regulations, Rule 37, 2.52 states: “(e) Sound, scent, and non-visual
marks. — An applicant is not required to submit a drawing if the mark consists
only of a sound, a scent, or other completely non-visual matter. For these
types of marks, the applicant must submit a detailed description of the mark”.
It is simpler to get a sound
mark registered in the United States as it follows the doctrine of
non-functionality and distinctiveness. Section 1052 of Lanham Act has the same
criteria for the registration of a mark. The Courts in the United States have accepted
applications that were represented through sonograms or sound recordings. The
Lion Roar trade mark by MGM[4] was registered through a sonogram and ESPN’s[5]
repeated notes on the Sports Center were registered as a sound mark as well.
Some other examples of registration of sound marks are NBC Entertainment
Chimes, Looney Tunes Theme Song, etc.
From a viewpoint of comparison,
it is safe to say that while the EU has stricter prerequisites for a sound
trademark (something that India has also adopted), the approach to register
such marks has become more liberal in the recent times, as further seen in the
case of BVG v EUIPO.
0 Comments
Leave a Comment