The first sound mark was obtained in India in August, 2008 by Yahoo for its famous yodel.

(Refer to a
previous post on the same).This trend in favour of granting non-conventional trademarks has been further
strengthened with the registration of a sound mark for Allianz Aktiengesellschaft, a German Company
(Allianz). Allianz was represented by Fox Mandal Little. Another sound mark for Allianz is through with
the prosecution and is expected to be granted the registration certificate very soon. These marks have been
registered as Community TRADE Marks since 2007.
The Trademarks Registry had so far maintained a confined approach towards Trademarks. Trademarks
under Section 2(zb) Trademarks Act, 1999 are confined to marks capable of being represented
graphically. Article 15 of TRIPS however, defines Trademarks from a wider perspective; any sign, or
any combination of signs..
Sound marks can be registered in India, if they are capable of being represented graphically i.e, in the form
of musical notes, satisfying the requirement of graphical representation under the Act. Sound marks are
recognised in numerous jurisdictions across the world, including the European Union, United States and
Australia. Incidentally Allianzs sound mark was the first to be registered in Chile after Chile modified its
Trademark Law .
Other forms of non-conventional trademarks include smell trademarks, taste trademarks and moving image
trademarks. The first olfactory mark was registered in the United States in 1990 when plumeria scent
which was added to sewing thread and embroidery yarn was registered as a trademark. The mark was
described in the application as a high impact, fresh, floral fragrance reminiscent of Plumeria blossoms.
The

mark

was

initially

refused

registration

on

the

grounds

that:

(1)The mark does not function as a trademark because it does not identify or distinguish applicants goods
from

those

of

others.

(2)Fragrance mark is analogous to other forms of product ornamentation in that it is not the type of matter
which

consumers

(3)Alleged

would
mark

tend

to
was

perceive

as
de

an

indication
jure

of

origin.
functional.

On appeal by the applicant Celia Clarke, doing business as Clarkes OSEWEZ, this was reversed and the
olfactory trademark was granted as the Clarke was the only person who MARKETED yarns and threads
with fragrance and fragrance was not an inherent attribute or natural characteristic of applicants goods but
a feature applied by Clarkes.
The first olfactory trademark in the European Union was the registration as an olfactory mark of the smell
of fresh cut grass for goods, namely tennis balls in 1999. The application was initially rejected by the
examiner. On appeal the Board said that, the smell of freshly cut grass was a distinct smell which everyone
immediately recognised from experience. The Board said that this was sufficient to comply with the
requirement of graphical representation under Article 4 of the Community Trademark Regulation. The
odour of beer for dart flights and the scent of roses for tyres were one of the first olfactory marks to be

registered in the U.K. However an application by Chanel to register the fragrance of Chanel No 5 as an
olfactory TRADE mark failed in 1994 as the smell of the perfume which was sought to be registered
resulted from the nature of the good itself.
In 2004 Eli Lilly applied for a Community Trademark on the taste of artificial strawberry flavour as a
taste mark or gustatory trademark for pharmaceutical preparations. The application was refused by the
Examiner and subsequently by the Board of Appeal. The Board said that an exclusive right to Eli Lilly on
the mark applied for would unduly interfere with the freedom of their competitors. Moreover, the Board
said that such a taste could not distinguish the pharmaceutical preparations of one company from the other.
The consumers would most likely assume that the flavour was added to mask the unpleasant taste of the
product. Am attempt by N.V Organon towards patenting orange flavour for pharmaceuticals was rejected
by the US Patent Office.
It however remains to be seen if the Indian Trademarks Registry will move towards the grant of more nontraditional trademarks like olfactory and gustatory marks in line with precedents in UK, US and the EU.
With technology progressing at the speed of lightning, it remains to be seen as to how jurisprudence in the
area of trademarks will progress.
Spicyip thanks Mr. Santosh Singh of Fox Mandal Little for bringing this news to our notice.
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Registration of sounds as trademark

Most people think of trademarks as simply words and/or logos. However,
as both technology and the way we use it become more sophisticated, the
importance of non-conventional signs, such as sounds, to promote brands
is unquestionable. Consumers find it easy to identify a particular product
or service by reference to a particular jingle, melody or music. With the
increasing diversity of business ventures, trademarks related to just two
dimensional visual representations have given way to a plethora of
nonconventional trademarks that are distinguishable by senses other than
sight. This article would be particularly dealing with sound trademarks.
A sound trademark is a non-conventional trademark where sound is used
to perform the trademark function of uniquely identifying the commercial
origin of products or services. Sounds are capable of satisfying the
trademark criteria: they 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 at the

very least, does not exclude such marks. Only a handful of countries have
a standard or a set of requirements to be met for sound trademarks.
Examples of Sound Marks would be of 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, Yahoos
yodel, thunderous sound of Harley-Davidson etc.. In several countries,
recent trademark amendments expressly include sound in the definition of
a trademark. These include the United Kingdom, Germany, Italy, New
Zealand and Australia.
The Trademark Registry in India has granted registration to ICICI Bank
Ltd for its sound mark by registering the very notes that form the jingle.
ICICI Bank is the first Indian entity to obtain sound mark registration. The
first sound mark to be granted registration by the Trademark Registry was
the Yahoo! Yodle. In a milestone TRADE mark registration for India as
well as Yahoo, the countrys trade marks registry, on August 18, 2008,
granted registration to Indias first sound mark to Sunnyvale, Californiabased internet firm Yahoo Inc.s three-note Yahoo yodel. By doing so, the
Trade Mark Registry has acknowledged global realities and opened up
new avenues for India entrepreneurs to register their brands under the
sound marks category.

Distinctiveness
The criteria for assessing distinctive character of a sound is similar to that
applied to other types of marks. The registrability of a sound mark must,
depend upon whether the sound is capable of identifying the goods or
services as originating from a particular undertaking, and thus
distinguishing it from other undertakings. However, the general public
does not necessarily perceive sound marks in the same way as other
categories of signs and this may make it more difficult to establish that
they are distinctive. Evidence of factual distinctiveness, supported by trade
evidence, will be required to register a sound mark to show that the public

recognize and associate the sound as a trademark which indicates the

goods/services offered by the applicant, and to demonstrate that the sound
mark sought to be registered indeed functions as a trademark.
Protection under the Trademarks Act, 1999
The Indian Trade Marks Act does not stipulate any special procedures or
criteria to be followed for the registration of non-conventional marks. 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. The applicant must provide the following types of
information and documentation in order to obtain registration of a sound
mark,:
An explanation as to whether the identified sound serves any
purpose as used on the goods and/or services;
An explanation as to whether the identified sound is a natural byproduct of the manufacturing process for the goods and/or services;
Any available advertising, promotional or explanatory literature
concerning the goods and/or services, particularly any material that
relates specifically to the proposed mark;
An explanation as to the use of sound in applicants industry;
A statement clarifying any other use of sound by applicant; and
An explanation as to whether competitors produce the goods and/or
services with the identified sound.
Conclusion
Intellectual Property reflects the idea that its subject matter is the product
of the mind or the intellect. As it is the product of a creative and artistic
mind it is bound to changes. It can be sold, bought, bequeathed and owned.
In its move to grant registration to non-conventional trademarks, the
Indian Trademark Registry seems to be truly recognizing 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
nonconventional marks on to the register can be foreseen.