Kingfisher’s iconic jingle “Oo la la la le o” secured a sound mark registration earlier this month. Photo: FileA brand doesn’t always speak through a logo. Sometimes, it rings. Kingfisher’s iconic jingle “Oo la la la le o” secured a sound mark registration earlier this month. A sound mark is a non-conventional trademark in which a sound functions as a source identifier. Instead of words, symbols or designs, it is an audio signal that tells the consumer who is behind a particular product or a service. If anyone associates it with one commercial source, it may qualify for registration.India’s first registered sound mark was in 2008 when Yahoo’s “yodel” was accepted by the trademarks registry. ICICI Bank later secured protection for its corporate jingle. From the Netflix “ta-dum” to the Nokia start-up tune, certain sounds trigger instant recall. Trademark law recognises that recall value, and in India, such audio identifiers can be registered.So, how does one register a sound trademark? Is there a litmus test involved? We explain.Legal frameworkThe Trade Marks Rules, 2017, state under rule 26(5) that the application for a sound trademark must be filed “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”.This requirement represents a non-visual mark on a register designed for visual entries. Before 2017, applicants relied largely on written descriptions or sheet music.Also read | From bang to bust: The Kingfisher storyAn applicant must also clearly state in the application that the mark is a “sound mark”. If this is not specified, it’s likely the registry may treat the filing as a word or device mark.Story continues below this adThe applicant files Form TM-A, which identifies the mark as a sound mark and specifies the relevant class of goods or services. The MP3 file and musical notation are submitted along with the application. Details such as the applicant’s name, address, legal status and date of first use must also be provided.As the application undergoes examination, the registrar questions the distinctiveness or similarity with earlier marks. Once satisfied, the mark is published in the trademark journal. This opens the door to opposition from third parties. In case of opposition, the matter proceeds to a hearing. If no opposition is filed or the applicant succeeds, the registry issues a certificate of registration.A trademark typically lasts for 10 years and can be renewed multiple times.Test of distinctivenessLike all trademarks, sound marks must also satisfy the test of distinctiveness. The sound must not be common, generic or purely functional. It must connect the consumer or upon hearing the sound, connect it to a particular trader.Story continues below this adAlso read | The cases against Vijay MallyaCertain categories are harder to qualify for. Simple tunes consisting of one or two notes, commonly used chimes, nursery rhymes for children’s goods, and music associated with a region may fail the distinctiveness test. Sounds that result directly from the nature of a product, like the ordinary sound/noise of the engine or the opening of a can, may face objections during registration.The primary emphasis is upon the consumer perception. Where inherent distinctiveness could be doubted, applicants rely on evidence of use — advertising expenditure, direction of use, market surveys and media coverage — to show that the sound has acquired distinctiveness over time.Global contextIndia’s approach draws from international developments. In Europe, the Court of Justice of the European Union clarified in cases such as Shield Mark BV v. Joost Kist that sounds may be registered if they can be represented clearly and precisely.The court held that musical notation could satisfy the requirement of graphical representation, while vague descriptions or onomatopoeic words would not. It said: “Requirements are satisfied where the sign is represented by a stave divided into measures and showing, in particular, a clef, musical notes and rests whose form indicates the relative value and, where necessary, accidentals.” © The Indian Express Pvt LtdTags:Express Explained