Sounding the bugle of non-conventional trade marks in India

Lex Orbis
Manisha Singh Nair
[email protected]

Trade mark law in India is widening its horizons to include marks of various kinds in the Indian trade mark register. The registration of trade marks is essential owing to the brand association developed with customers. Today, trade marks have moved beyond being labels, word marks and pictorial depictions to include other non-conventional marks such as sounds and smell.

As a signatory to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), India makes way for non-conventional marks. Article 15 of TRIPS makes a place for such marks by stating: “any sign or any combination of signs capable of distinguishing the goods or services of one undertaking from those of other undertakings shall be capable of constituting a trade mark …”

Sound marks

While the registration of sound marks is a common practice in some jurisdictions such as the UK, the US and the EU, the procedural requirements for graphical representations vary. There are essentially two approaches for the sound mark to be graphically represented:

a) In the form of musical notes (as in the UK); and

b) A description of the mark, such as representation by musical notation, accompanied by an audio or video reproduction of the sound (as in the US).

While notations aid clarity to what is being sought for registration, the aid of audio/ video presentation ensures that what is being registered is understood by everybody, irrespective of their possessing an understanding of musical notations. Territories such as Korea, Singapore and Taiwan already have provisions in their trade mark legislation for the registration of sound marks.

Looking at Indian legislation, Section 2(1)(zb) of the Trade Marks Act, 1999 defines a trade mark to include “marks capable of being represented graphically and being capable of distinguishing the goods or services of one person from those of others”. This includes the shape of goods, their packaging and combination of colours. The condition to allow marks that may be represented graphically widens the ambit of trade marks, thus including the possibility of getting sound and other non-conventional marks registered. India is therefore including sound marks on its register.

The first sound mark was registered in August 2008 by Yahoo! Inc. for its famous “yodel”. The mark was filed under Class 35 (advertising, business management, business administration, office functions); Class 38 (telecommunications) and Class 42 (providing for food and drink; temporary accommodation; medical, hygienic and beauty care; veterinary and agricultural services, legal services, scientific and industrial research; computer programming; services that cannot be classified in other classes) for its range of email, business and internet services.

Yahoo! Inc's sound mark was soon followed by similar applications from other corporations such as Germany's Allianz and Finland's Nokia. Sources reveal that prosecution for the Allianz sound mark is complete, while others are still underway.

While the Indian Trade Marks Act does not stipulate any special procedures or criteria to be followed for the registration of non-conventional marks, it is expected to gain clarity as the Registry examines more of these applications. At the moment, applicants seem to be using musical notations as the representation of the mark, as well as a CD recording of the sound clip to qualify registration.

Non-traditional trade marks are not restricted to sounds, and may include three-dimensional, olfactory marks, tastes and smells. A resolution made by the International Association for the Protection of Intellectual Property in July 2004 held that:

Non-conventional trade marks need not necessarily be represented in a graphical manner in as much as the same is not a prerequisite for registration; but may be used only to describe and define the mark adequately provided that such descriptions and definitions are clear, precise, easily accessible and intelligible.

However, the Indian legislation explicitly lays down the need for marks to be “graphically represented”. It is inferred that a mark is graphically represented when:

1. a graphical representation can precisely determine what the sign is;

2. the graphical representation can substitute the mark used by the applicant because it represents that sign and no other; and

3. it is reasonably practicable for a person inspecting the register, or reading the Trademark Journal, to understand what the trade mark is.

In its move to grant registration to non-conventional trade marks, the Indian Trade Mark Registry seems to be truly recognising the value a mark has in terms of consumer recognition and brand association. In this age where the modes of marketing and advertising have diversified, granting recognition to varied marks is indeed a positive sign for industries and their brands. Given that the Indian Trade Mark Office has granted recognition to sound marks, the probability of entering other non-conventional marks on to the register cannot be ruled out.