The traditional understanding of the word “brand” in the mind of the average consumer is that it is a visual brand that differentiates two products. However, as technology and marketing strategies become more complex, the traditional trademark must evolve with them. The use of sounds / jingles in advertisements and products clearly shows that the products compete not only in terms of visual cues, but also in terms of sounds and other senses. Having invested in creating a different sound and having used that sound to differentiate two products, it makes sense that the producer wants to own and protect the sound brand. This article aims to examine the regime of trademark laws in India and determine whether sounds and smells can be registered trademarks.

Registration of sounds as trademarks in India

The starting point for such an analysis is the definition clause under the Indian Trademark Act 1999 (hereinafter “the act”). By law, a trademark means “a mark capable of being represented graphically and which is capable of distinguishing one person’s goods or services from those of others and may include the shape of the goods, their packaging and the combination of colors.1 To constitute a trademark, there are two conditions.
first, it must be able to be represented graphically. Secondly, he must be able to distinguish the products or services of one person from those of others. This definition does not in itself exclude sound and odor marks. In fact, the definition makes no reference to sound or smell or any other unconventional mark. So, just from this definition, it is still unclear whether the sounds can be registered as a mark.

However, a reference to the Trademark Rules, 2017 (hereafter
“the rules”) makes this definitional ambiguity very clear. In particular, reference should be made to rule 26, sub-rule 5 of the Rules, which is as follows “where an application for registration of a mark consists of a sound as a mark, the reproduction thereof must be submitted in MP3 format of a duration not exceeding thirty seconds recorded on a medium permitting easy reading and clearly audible accompanied by a graphic representation of its notations.2

These rules clearly indicate, without a doubt, that sounds can be deposited under the rules. The only requirements are that a recording in MP3 format be submitted with the graphic representation of its ratings. Some of the most notable sound marks recorded so far are the National Stock Exchange theme song, ICICI Bank corporate jingle, guitar notes when powering on the device from Nokia, etc. .3

So far, no case law has been decided on this issue by Indian courts. For jurisprudence, we must look to international affairs and other jurisdictions. The historical case of Shield Mark BV vs. Joost Kishodn Memex must be taken into account.4The court ruled that the sound marks were registrable, but that the requirement of graphic representation as well as the distinctive character of the sound had to be respected.5

Registering the smell as a registered trademark in India

In addition, beyond sound marks in Indian intellectual property law, it becomes relevant to analyze the positions of scent marks as registrable marks. While it is true that the definition does not exclude scent marks per se, just as it does not exclude sound marks, scent marks face a difficulty when it comes to being represented graphically. The written description of an odor is not clear enough. Once again, one can refer to the widely accepted precedent of the European Court of Justice.
Ralf Sieckmann v Deutsches Patent und Markenam.6

The case concerned a scent of “methyl cinnamate”, which the applicant described as “fruity balsamic with a slight hint of cinnamon”. The ECJ ruled that (a) a chemical formula only mentions the substance and not the smell of the substance and was not sufficiently intelligible, nor sufficiently clear and precise; (b) a written description was not sufficiently clear, precise and objective; and (c) a physical deposition of a sample of the odor did not constitute a graphic representation and was not sufficiently stable or durable. For these reasons, the ECJ concluded that odors cannot be filed. On the other hand, the case law of the United Kingdom7 and United States of America8 shows that odors can be deposited.

However, this discussion on olfactory marks is largely theoretical because to date no application of an olfactory mark has been made to the register of marks.9 In addition, the draft trademark manual follows the Sieckmann and asserts that scent marks cannot be represented graphically and that consumers of such scented products are unlikely to attribute the origin of the products to a single trader on the basis of scent.ten Again, it must be emphasized that this is a draft manual with no binding / previous value. The true state of the law can only be known once an application is made, rejected and the case taken to the Supreme Court.

Conclusion

Indian Intellectual Property Law readily accepted the sound mark as a valid mark capable of being registered and protected. The same law has been reluctant to accept scent marks as valid marks. This discrimination between two unconventional marks based on international precedents must be reconciled and the Trademark Rules, 2017 must be amended to reflect the registration of all kinds of unconventional marks.

Footnotes

1 S. 2 (zb) of the Trademarks Act 1999.

2 Sub-rule 5, rule 5 of the Trademarks Rules, 2017.

3 Lubna Kably, JINGLES AND CHIMES CAN MAKE TRADEMARK NOISE, Times of India (March 27, 2017), available at http://timesofindia.indiatimes.com/articleshow/57845491.cms?utm_source=contentofinterest&utm_medium=text&utm_campaign=cppst.

4 Shield Mark BV v Joost Kishodn Memex, case n ° C-283/01.

5 Mishra Neha; Non-traditional trademark registration; Journal of Intellectual Property Rights, Vol 13, January 2008, pp 43-50; available at http://nopr.niscair.res.in/bitstream/123456789/407/1/JIPR%2013%281%29%20%282008%29%2043-50.pdf

6 Case C-273/00, 2003 ETMR 37.

7 Application of Venootschap onder Firma Senta Aromatic Marketing, [1999] ETMR 429.

8 USPQ 2d 1238 (1990) (TTAB), also cited in Susan Binsy, Recent Developments in Non Traditional Trademarks – Part 2, http://www.manupatra.com (November 21, 2006).

9 Harshada Wadkar, Non-Conventional Marks, Lexology (March 29, 2019), available at https://www.lexology.com/library/detail.aspx?g=4339efff-eba0-4339-a5f9-47f2d72ae7d1.

10 IP India, A Draft Trademarks Handbook: Practice and Procedure p. 86-87 (March 2015), available at https://ipindia.gov.in/manual-tm.htm.

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought on your particular situation.



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