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Sound…Smell… & The IP World – Transcending Aural and Olfactory Boundaries

Sound…Smell… & The IP World – Transcending Aural and Olfactory Boundaries

The Evolution of technology and the animated rise towards securing the competitive edge in the rapidly expanding global arena, has led to brands grappling for distinctiveness among its contenders. But the true challenge faced by brands post procurement of dedicated clientele is to further facilitate consumers to successfully identify the goods or services preferred by them over the rejection of all other brands; for this purpose it becomes essential to establish brand presence through Trade Marks – but in today’s commercial environment, mere registration of brand names, a design or a particular logo would not suffice when in reality the brand could be associated with the consumer in many other relevant modes, thus the recognition and registration of distinctive unconventional marks such as sound, taste, touch, colour and olfactory marks came into motion.

Though at first instance, the roar of a lion, the rev of a motorcycle engine, the start-up-tune in a mobile device, the smell of freshly cut grass, a unique kind of smell from a bottle of bear or someone yodelling YAHOO!, sounds like they have absolutely nothing in common, but all of these have distinctively come up to be associated representations of a particular brand by the consumer, thus effectively transcending the notion that only conventional marks can be registered.

A sound or smell trademark is necessarily an unconventional trademark obtained based on the relative usage of sound or smell in performing the function of successfully identifying the unique commercial origin of the products and services it is associated with.

Smell is said to play a vital correspondence in impacting human memory and businessmen try to exploit it by associating it with their products. Sound and smell marks are said to be some of the prominent forms of non-conventional trademarks which have gained popularity in the recent past. In India, Statutory protection was offered for such unconventional marks under Section 2(1) (zb) of the Trademarks Act, 1999. The Primary requirement being that the Mark to be registered must hold the capacity to be graphically represented (not visually perceptible) and is capable of being distinguished from the goods or services offered by others, and Sound Marks such as the Yodel of Yahoo, the 3 note chime of Intel Pentium Processor, the Nokia default tone or Metro Goldwyn Mayer’s roar of a lion, all carry and fulfill the criteria of being unique and represented distinctively from the goods and services of others.

Though the Indian Trademarks Act,1999 does not either recognize or restricts the registration of Sound Marks, the terms and requirements set out in registering a Sound Mark in the international perspective follows two different approaches the UK approach and the US approach.

In terms of the UK approach, it is an essential requirement that the Sound to be Registered must be capable of graphical representation in the form of musical notation in addition to its description. The US approach however in addition to the description requirement, needs brands to provide, the description of the sound mark through an audio or video representation, this is mainly to determine the clarity and precision of the mark, the ideology adhered here being that, every person or layman associated with the mark cannot read musical notations in-order to comprehend the relevant mark, The US system therefore accepts sound representations made through CD’s or Mp3’s as well. In the case of Shield Mark B -Vs- Kist 1decided upon by the European Court of Justice it was held that specific musical notations would be satisfied certain necessary requirements if they were “represented by a stave divided into measures and showing, in particular, a clef, musical notes and rests whose form indicates the relative values and, where necessary, accidentals”. In India, the Shield Mark Doctrine is directly adopted to an extent such that the Trademark Practices and Procedures Draft Manual has stated the same requirements in terms of trademark registration. Representations through CD or Sonogram’s are also accepted, provided that the tangible representations made are provided in a precisely clear and intelligible manner.

When it comes to smell or olfactory marks, there are two main difficulties in registering a smell mark. The first one is graphical representation of smell mark. If it is contained in a bottle it would decay over time. On the other hand, chemical formula would represent the substance itself rather than its smell. Therefore, it is essential to represent it in a precise manner so as to distinguish it from the product in which it is contained. The second difficulty in getting a smell mark registered is in proving its distinctiveness. It is important to establish that the smell associated with the product is not because of the inherent nature of the product by itself. In other words, success in registering a smell mark lies in getting through its ‘non-functionality’ test. The smell mark to be registered, should be able to distinguish from the product from that of others without doing any other significant function.

The first smell mark to be registered in US was for a fresh, floral fragrance associated with a sewing thread and embroidery yarn in re Celia Clarke in 1990. The mark was registered as it was proved that the fragrance associated with the product is not the very essence of the product itself. In UK, the issue was addressed in Sieckman’s 2 case where it was held that in order to register a smell mark, “clear, precise, self-contained, easily accessible, intelligible, durable and objective” way of graphical representation is essential apart from the element of distinctiveness.

The necessity for investing in making Sound Marks, and registering such marks is that the prolonged use of such marks have had a subliminal effect on the minds of the listener and the catchier or peppier the jingle, the more substantial is the effect of implementation and association in the minds of the consumers, which in turn has contributed to the retention of the brands image in the consumer’s memory and subsequently catering to better selling proportions. Furthermore, a Sound Mark which subliminally triggers the sensory receptors has projected to have a strong positive perception to the way individuals associate with the brand and is seen to have a longer lingering effect on the individuals in reception to it.

From NBC’s registration of the worlds very first “three chimes” sound mark in 1950, to India granting the Yahoo’s “yodel” sound mark protection in 2009 which paved its way to the subsequent registration of other sound marks in India such as the Nokia – Default Ringtone, ICICI – Chime tune and Allianz Aktiengesellschaft being some of the notable brands that have been granted sound mark protection in the Indian Subcontinent no cases of Sound Mark Infringement have been notes thus far; the concept of Sound Mark registration has had a wide scoped impact on the working perception of brand protection and customer based interactions. However, since the Trademarks Act, 1999 mandates graphical representation and distinctive nature as criteria for a trademark to be registered, it acts as an impediment in registering smell marks in India; these hurdles may disappear in the near future owing to the precedents of the US and UK law, as the inclusion of smell marks world-over would prove to be a substantial intellectual property breakthrough. In the current scenario, The Indian Trade Mark Registry has transversed a huge milestone in awarding and recognising non-conventional trademarks such as Aural Marks as an essential intellectual property, having the prospective potential of influencing individuals and subsequently protecting the brands interest of protecting their goods and services.

 

FAMOUS SOUND TRADEMARKS:

 

S.NO
BRAND
SOUND MARKS
LOGO
1. YAHOO! YODEL  yahoo (1)
 2. NOKIA NOKIA-DEFAULT RINGTONE  nokia (1)
3. ICICI ICICI JINGLE  icici (1)
4. ALLIANZ AKTIENGESELLSCHAFT CHIME TONE  allianz (1)
5. METRO-GOLDWYN MAYER CORP LION ROARING  mgm (1)
6. NATIONAL BROADCASTING CORPORATION NBC CHIME  nbc (1)
7. TWENTIETH CENTURY FOX FILM PRODUCTION 20TH CENTURY FOX THEME 20th cent fox (1)
8. TIME WARNER ENTERTAINMENT COMPANY MERRIE MELODIES THEME SONG  merrie melodies (1)
9.

 

EDGAR RICE BURROUGHS. INC SOUND OF FAMOUS TARZAN YELL  edgar rice (1)
10. INTEL INSIDE INTEL INSIDE BONG  intel (1)

 

Notes:

  1. [2004] RPC 17 –ECJ
  2. (Case 273/00, 12 December 2002)

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