In this technologically advanced age, though at first glance the smell of freshly cut grass, the lilac color, Tarzan’s scream, and the sound of a Harley Davidson motorcycle engine, the roar of a lion, the shape of the Pfizer Viagra pill and the packaging of a chocolate candy may seem to have nothing in common, new marketing techniques have made it possible for businesses to create and use these unique symbols to distinguish their products from others. Thus all of them could work as trademarks. The advent of the Internet and electronic commerce has also increased the range of signs that businesses would like to use as registered trademarks.
This paper attempts to analyse the legal position as to registration of sound mark with stress on the 2007 case of Nokia Ring tone registration, which brings into light the various problematic areas and the lack of uniformity with respect to sound mark registration. An endeavour has been made to provide solutions to the existing issues associated with the same.
Lack of uniformity- Case study of the Nokia ring tone case, 2007
The Nokia ring tone registration in U.S.A, Australia and its rejection in Hong Kong exemplifies the lack of uniformity that prevails in registration of sound marks across the world. It brings into light, the difficulties in application of various criteria, above mentioned, and hence, the disparity in the view adopted by different countries.
During the Nokia ring tone registration the Court of United State of America supported sound marks on the ground that:
“A sound mark depends upon aural perception of the listener which may be as fleeting as the sound itself unless, of course, the sound is so inherently different or distinctive that it attaches to the subliminal mind of the listener to be awakened when heard and to be associated with the source or event with which it is struck.” If the sound can be associated with the source of a product or service, it can serve as a trademark.”
An April 2007 Hong Kong decision provides a perspective on the requirements for registering a sound mark, using a rather well-known tune. Although this Nokia ringtone is highly popular, it was initially rejected for registration in Australia, as well as Hong Kong. Among other reasons, in a decision the Hong Kong examiner stated:
“On hearing the subject mark, however, the relevant consumers would only perceive it as a sound that signals that the goods are in operation but no more … the subject mark fails to perform the essential function of a trade mark, which is to guarantee the identity of the origin of the marked products to the consumer by enabling him to distinguish the products from others which have another origin.”
In Australia, Nokia’s sound trade mark was accepted and advertised on 24 May 2007, but only after three rejections from the Trade Marks Office. Nokia was able to introduce sufficient evidence to persuade the Australian Trade Marks Office Examiner that Nokia was entitled to registration of the sound.
From the Hong Kong case it is clear that having a sound that is well known, even, and instantly recognizable, like the Nokia ring tone will not in itself guarantee registration.
As noted above, the sound must be shown to identify the specific origin of the products to which the sound trade mark relates.
Hence, the criteria applied for determination of distinctiveness, functionality, acquired distinctiveness etc are interpreted in varied manner across the world and hence, results in contrasting consequences. Not only is there a lack of uniformity across the world, but also within a country the incidences sound mark registration are few. For instance, despite the successful registration of trademarks in sounds, the U.S. Patent Trademark Office reports that only 23 of the more than 729,000 trademarks in force in the United States are sounds. And, since 1946, there have only been 71 applications to register sounds as trademarks or service marks.
Need for protecting sound marks
Recent developments are enabling traders to rely on less traditional forms of trademarks that appeal to the senses in a different way, namely through color, scent and sound, the adoption of which warrants special consideration. There are 5 kinds of marks which are recognized as unconventional trademarks that are Color, Sound, Smell, Olfactory Marks and moving images.
The need to protect unconventional trade marks, such as sound mark, is same as need for protecting traditional trade marks like words, numerals and other devises. The function of trade mark is to give an indication to the purchaser or possible purchaser as to the manufacture or quality of the goods, to give an indication to his eye of the trade source. Trade mark infringement not only inhibits competition but also deprives consumer of their ability of distinguishing among the goods of competing manufacturers. The trademark law insures that the brand information received by consumers is accurate by insuring correct information in the market place; the trade mark law reduces losses caused by misunderstanding and deceit and thus protects both consumer and manufacturer.
Issues in registration of sound marks
The registration of non-traditional marks that are either inherently distinctive or unique i.e., fanciful, arbitrary or suggestive or those that have acquired secondary meaning in the minds of purchasers is permitted. Two of the primary issues confronting the registration of sound as a trademark and according such marks the statutory benefits of registration are:
- How to represent the mark to enable it to be clearly articulated, and to ensure that it can be readily interpreted and searched.
- The requirements of affixation, in particular with reference to wares, in terms of how the mark is to be connected with the wares.
Aural marks are problematic. One argument is simply that it is inappropriate to trademark a sound. Other challenge is on the perceived difficulty of adequately describing a sound mark. Some registers seek a notation of musical notes, tones and words. Other registries allow an image of the mark, i.e. inclusion of a sound recording.
The issue which arises and needs to be addressed is whether the criteria for registering sound marks is sufficient so as to enable sound marks that genuinely function as trademarks to be protected and accorded the same benefits of registration as other more traditional trademarks? An understanding of this question is plausible only with a study of the various standards of granting registration to sound marks and problematic areas involved in the registration of the same.
Criteria for evaluation of registratbility
1) Distinctiveness as a criterion
To establish a strong case for sound mark registration, one of the essential would be to prove the distinctiveness of the sound beyond any reasonable doubt. Therefore, it is necessary to mention the interpretation accorded to this criterion by the Courts.
Further to the above principle, in assessing the distinctive character of a sign, Sir Andrew Morritt in Nestle SA’s Trade Mark Application (“Have a Break”) stated that:
“The distinctiveness to be considered is that which identifies a product as originating from a particular undertaking. Such distinctiveness is to be considered by reference to goods of the class for which registration is sought and consumers of those goods. In relation to the consumers of those goods the court is required to consider the presumed expectations of reasonably well informed, and circumspect consumers.”
In view of the above legal principles, distinctive character means that the mark, must be capable of identifying the product as originating from a particular undertaking, and thus distinguishing it from those of other undertakings. The distinctiveness of the mark must be assessed by reference to the goods for which registration is sought and the perception of the relevant consumers, who are presumed to be reasonably well informed, circumspect and observant. However, as the perception of the relevant consumers is not necessarily the same in respect of different types of marks, it may prove more difficult to establish inherent distinctiveness for some categories of marks than for others.
2. Manner of Use - Requirement of Affixation
A common use of sound marks on goods would be use within a broadcast advertisement which does not occur at point of sale. Although there are national laws such as those in the U.S., Germany and Australia which do not consider use of a mark in advertising to be proper use of a mark on wares, other national laws such as those in the U.K., Italy, and Sweden recognize such use as proper use.
Specifically, U.S. law requires that a mark be placed in some manner on the goods, their containers, associated displays, tags, labels, or on documents associated with the goods. However, if the nature of the goods makes such placement impracticable then use will also be said to occur when a mark is placed on documents associated with the goods or their sale, and the goods are sold or transported in commerce.
In Australia, "use" is defined as meaning use in physical or other relation to the goods or services In contrast, Canadian law stipulates that use in respect to wares includes marking on the wares or their packaging or "in any manner" which associates the mark with the wares at the time of transfer of the property in, or possession of, the wares. Further, U.K. law only requires use "in relation to" goods (or services) and this is considered to include for example, use in advertisements.
Requiring sound marks to be physically affixed onto goods, may be impractical, unfair and an onerous requirement in many cases where otherwise a good and functional trademark exists. Physical affixation could take the form of something used at point of sale, a sound built into the product (i.e. the chime of a computer when turned on), or possibly the actual sound emitted by the product during use. The latter case may be limited, since the sound may be the sole result of strictly operational parameters and thus be inherently functional, or if it is a tailored sound, there may be difficulty in ensuring consistent reproduction of that sound as the product ages.
The ‘functionality’ doctrine prevents trademark law, which seeks to promote competition by protecting a company's reputation, from inhibiting legitimate competition by allowing a producer to control a useful product feature. With respect to the functionality doctrine it has been observed that:
“It is the province of patent law, not trademark law, to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time, after which competitors are free to use the innovation. If a product's functional features could be used as trademarks, a monopoly over such features could be obtained without regard to whether they are patentable and, moreover, could be extended forever because trademarks may be renewed in perpetuity.”
In general terms, a product feature is functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article, indicating that exclusive use of the feature would put competitors at a significant disadvantage unrelated to their reputations. The functionality doctrine bars protection for something that is essential to the use or purpose of the article or which affects its cost or quality, to avoid an adverse effect on competition. However, this doctrine does not appear to pose a unique obstacle to the registrability of sound marks, since the potential problems which arise as a result of this doctrine are as likely to arise for any non-traditional mark.
4. Secondary Meaning
The essence of this concept is the fact that a mark or a brand might obtain a secondary meaning enabling a consumer to identify and distinguish a particular brand, thus indicating its source. By preventing others from copying a source-identifying mark, trademark law is said to "reduce the customer's costs of shopping and making purchasing decisions" by assuring a potential customer that an item with an identifying trademark is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past. At the same time, the law helps assure a producer that it and not an imitating competitor will reap the financial, reputation-related rewards associated with a desirable product. The law thereby encourages the production of quality products and simultaneously discourages those who hope to sell inferior products by capitalizing on a consumer's inability quickly to evaluate the quality of an item offered for sale.
Problematic areas of concern
1. Infringing Third Party Copyright
The pivotal problem arising in a case of sound mark infringement would be, is whether the resort lies in filing a trademark infringement action or a copyright infringement action. There is no ambiguity in the fact that a sound mark would amount to a creation, which being original would mandate protection under the copyright laws of the country. But since a trademark infringement action would be with respect to the reputation of the good and services and the irreparable harm suffered in case of consumer confusion, a copyright action basically is to protect the rights of the inventor and give him due credit and protection for his musical works.
If the sound is a few bars of music rather than a tone or a very few notes, there may be a risk of copyright infringement upon registration and use. In the U.S., the use of a short segment from a copyrighted musical work is often enough to provoke a court to hold the copyright infringed, whereas a literary copyright will not ordinarily be deemed infringed by a few identical words used for example in a title or slogan, even though they may be excerpted from the work. This problem is, however, independent of the issue of trademark protection.
2. Clearance difficulties
This difficulty arises from the fact that not everyone can read written music. Although it has been accepted in many countries that sound marks may be registered using a written representation of the mark, such as a staff of notes, the determination as to how different another sound mark must be from the written representation can be problematic. If consumer confusion precludes competitors from using certain variations of the registered sound, how far removed from the described sound must a sound be to be considered available? In future, a potential solution to the problems of graphically representing the sound in full, including pitch and sound, and the need to read sound, is to use a computer generated full frequency plot which would also facilitate computer searching. In the meantime, it should be adequate if a combination of means is used, including audio tapes, staff music and written descriptions or definitions.
3. Proof of Infringement
While proving infringement may, in some cases, be more difficult than it is for a visual work, and infringement actions could devolve into debate over sound tonality and composition confusion, comparing aural similarity is not a new exercise. A potential problem for the registrant is the increased difficulty involved in proving and supplying effective notice to others of the registration of sound marks over visual marks, but this can be adequately addressed by descriptive notices.
4. Issues with respect to affixation
Since national trademark laws differ in their affixation requirements for use on goods, this requirement will have to be re-evaluated and clarified in the case of sound marks. It is possible that a sound-making device could be attached to a product or its packaging in order to fulfill an affixation requirement, but this will often be impractical or undesirable. The argument can always be raised that a sound is intangible and thus, cannot be properly affixed. Nonetheless, accommodation of the intangible nature of a sound mark is an open possibility, as many countries have already done, as long as the sound is used so as to become connected with the goods and remains consistent.
The problems and issues that are attached to sound trademarks, such as articulation of the mark through graphic representation, affixation, distinctiveness including functionality and consistency in use, and assessment of confusion are not insurmountable, and except for articulation, are not unique and can be addressed by applying traditional trademark principles. The problem with respect to this issue, as can be deduced from the above discussion is not the impossibility of finding a solution with respect to the difficult areas. The key to the entire issue is the discrepancy in the application of the well established criteria across the world. With appropriate safeguards to ensure that the sound mark is properly articulated in an application, or a resulting registration, sound marks which genuinely function as trademarks should be protectable as registered marks and competitors would have the normal means to oppose or invalidate such a registration if the sound was, or had become, functional or indistinctive
Though the first case of registering a sound mark arose 56 years back, the case was domestic in nature, where a company applied for registration of its sound mark within its country, the problem has now assumed a global character. With Nokia approaching different countries for the registration of the same ring tone, it is necessary to consolidate the application of the law in order to ensure uniformity and consistency. As a suggestion, we conclude that this sort of a consolidation can be achieved by a binding forum for multilateral negotiation in order to ensure common protection of trade mark and intellectual property rights.
T.PRIYADARSHINI AND NEETIKA YADAV are final year students pursuing B.A.LL.B (Hons) from National Law Institute University, Bhopal.