By Krrishan Singhania & Aatir Saiyed | October 6, 2021
Published in BW LEGAL WORLD
DISCRIMINATION OF NON-CONVENTIONAL TRADEMARK: SOUND AND SMELL TRADEMARKS WHETHER REGISTRABLE OR NOT UNDER THE PRESENT TRADEMARK LAWS
AIM:
This article aims to examine Indian trademark law regime and the possibility for trade marking of sound and smell.
INTRODUCTION:
In the eyes of the ordinary customer, the conventional meaning of the word “mark” is that it is a visible mark that differentiates between two items. The conventional understanding of trademark/brand needs to develop with them, though, as technology and marketing techniques have become more sophisticated. Using sounds in ads and products clearly shows that items compete not only with regard to visual indicators, but also with respect to noises and other senses. It is only reasonable that the producer, after investing in the production of a different sound and using that sound to discriminate between two goods, wants to own and preserve the sound trademark.
REGISTERING SOUND MARK IN INDIA
Before, understanding the possibility of Sound Trademark it is pertinent to note:
- What are sound marks and why is trade marking them useful?
Sound markings are sounds which act as a trademark — the commercial origin of products is distinctive in their identification. Scholars (IP Professional) define sound trademarks as “non-conventional trademarks,” and apart from sound marks there are other trademark, which includes smell, taste, colour, etc.
- Why is it necessary to trademark sounds?
It is widely known that in the category “musical works” the Copyright Act of 1957 protects sounds. The protection of trademarks is still advisable, however, as each legislation protects entirely distinct sound rights. While the copyright protects a work for the author’s talent, labour, or originality, a trademark protects a work for its reputation.
Consider the Lamborghini logo – a bull to demonstrate. The bull is an artistic piece by itself. But it depicts automobiles manufactured by the Lamborghini company when mounted on a car. If the logo was merely copied and sold (as a sketch), the copyright in the work would be infringed. On the other hand, if the logo was used on vehicles and then those cars were sold, then the trademark rights would be infringed on the logo. This distinction must be understood to ensure that the work and owner is adequately protected and compensated for the infringement.
Sound Mark registration in India (Is it Possible?)
LET US CHECK STEP BY STEP | IF IT IS POSSIBLE TO REGISTER SOUND MARK AND IF YES, UNDER WHAT PROVISION WILL THE REGISTRY FILE MY SOUND MARK? |
STEP 1 | To understand this we need to first read the definition of Trademark given u/s 2 (zb) of the Trade Mark Act, 1999 which says “trade mark means 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 colours; and— (i) [******]; and (ii) [******];” From the above definition of trademark it is clear that the two important ingredients to be satisfied are (i) “it must be capable of being represented graphically” and (ii) “it must be capable of distinguishing the goods or services of one person from those of others”. Therefore, aplain readingof the term trademark does not, in and of itself, preclude sound and smell markings. In fact, it even does not mention sound, smell, or any other non-conventional trademark. So, based on this definition, it remains uncertain whether sounds may be registered as a trademark.
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STEP 2 | Upon reading the Trade Mark Rules 2017, it makes aforesaid definitional ambiguity abundantly clear. In particular a reference needs to be made to Rule 26(5), which says as follows “Where an application for the registration of a trade mark consists of a sound as a trade mark, the reproduction of the same shall be submitted in the MP3 format not exceeding thirty seconds’ length recorded on a medium which allows for easy and clearly audible replaying accompanied with a graphical representation of its notations.“ |
CONCLUSION | Rule 26(5) of the Trade Mark Rules, 2017 states categorically that sounds can be trademarked under the Rules. The only prerequisite is that an MP3 format recording be supplied, coupled with a graphical depiction of its notations. So yet, no case law has been determined by Indian courts on this subject. We must go to foreign instances and other countries for jurisprudence. Shield Mark BV v. JoostKishodnMemex[1]is a seminal case to be considered. The court ruled that the sound markings were registrable, but that the requirements of pictorial representation as well as sound uniqueness have to be satisfied. |
[1]Shield Mark BV- Joost Kist, Case C-283/01, the European Court of Justice.
Some Famous Sound Mark
- Twentieth Century Fox — Drums + Trumpets +Strings.
- Netflix –“ta-dum”
- Audi’s heart –beat sound logo
- Mcdonalds sound mark –“i’mlovin’it”
REGISTERING SMELL MARK IN INDIA
Moving beyond the position of sound marks under Indian Intellectual Property Law, it is necessary to examine the positions of smell markings as registrable trademarks. While the definition does not specifically exclude smell markings, as it does not preclude sound marks, smell marks have a tough time being visually depicted. The written description of a smell is not sufficiently clear. Again, the widely acknowledged European Court of Justice Precedent of Ralf Sieckmann v. Deutsches Patent and Markenamt[1] might be cited.
The smell in question was “methyl cinnamate,” which the applicant characterised as “balsamically fruity with a faint touch of cinnamon.” The ECJ ruled that (a) a chemical formula stated only the substance and not the odour of the substance and was not sufficiently intelligible, clear, or precise; (b) a written description was not sufficiently clear, precise, or objective; and (c) a physical deposit of a scent sample did not constitute a graphic representation and was not sufficiently stable or durable. The ECJ determined that scents cannot be trademarked on these reasons. On the other hand, case law from the United Kingdom and the United States of America demonstrates that smell can be trademarked.
This discussion of scent markings, however, is essentially hypothetical because no application for a smell mark has been filed with the Registry of Trademarks yet. Furthermore, the draft Trade Marks Manual follows the Sieckmannjudgement and states that smell marks cannot be graphically represented[2] and that buyers of such fragranced items are unlikely to trace the origin of the products to a single merchant based on the smell/fragrance. Again, it should be emphasized that this is a draft manual with no binding or precedential value. The real position of the law may be determined only when an application is made, denied, and the case is contested before the Supreme Court.
CONCLUSION:
Sound marks as legitimate trademarks are recognized as valid and can be protected under the Trademark Act, 1999. The same legislation is unwilling to accept smell markings to be considered for giving protection under trademark as it fails to satisfy the two important ingredients of trademark (i) “it must be capable of being represented graphically” and (ii) “it must be capable of distinguishing the goods or services of one person from those of others”.
This discrimination of two non-conventional trademarks based on precedents from USA and UK has to be rectified to reflect, for all types of non-conventional trademarks. The true position of the law may be determined only when an application is made, denied, and the case is contested before the Indian Judiciary.
[1]Sieckmann v German Patent and Trademark Office (case C-273/00) issued on December 12, 2002, the European Court of Justice.
[2]IP India, A draft of Manual of Trade Marks: Practice & Procedure pg. 86-87 (March 2015), available at https://ipindia.gov.in/writereaddata/Portal/IPOGuidelinesManuals/1_32_1_tmr-draft-manual.pdf.
Link of the article: http://bwlegalworld.
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