Contents

1. Registration: Statutory Provisions – Sound Mark..........................................................................1

2. Pending/Decided Litigations in India: None found.........................................................................2
3. List of Sound Marks Registered in India: Attached in a .pdf file separately................................2
4. General Challenges: Sound Marks...................................................................................................3
5. Jurisdictional Stance on Sound Marks............................................................................................4
6. Jurisprudence on Voice Trademarks & Copyright.......................................................................18

1. Registration: Statutory Provisions – Sound Mark

The Indian Trade Marks Act, 1999 (“Act”) under Section 2(1)(m) mentions that a mark includes
a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods,
packaging or combination of colours or any combination thereof. Since the definition is non-
exhaustive in nature, it can be presumed that non-convention trademarks such as smell, shape,
etc. would fall within the purview of this definition.

 Rule 26(5)

With the amendment of the Trade Mark Rules (‘Rules’) in 2017, Rule 26(5) was introduced
which states that the sound mark may be reproduced and submitted in the MP3 format
“accompanied with a graphical representation of its notations”. Thus, graphical representation
of a sound mark is possible in India through musical notes and this has simplified the trademark
registration process in India. Primarily two conditions need to be fulfilled for registration of a
sound mark under the extant law viz.

(i) an application must specify that the mark to be registered is a sound mark

(ii) along with the application, an MP3 reproduction not exceeding 30 seconds and a graphical
representation of the sound mark in the form of musical notations must be submitted by the
applicant.

It goes without saying that the basic requirements of trademark registration need to be fulfilled
even for sound mark applications. For instance, the sound sought to be trademarks must be
distinctive in nature and sounds that are generic in nature would not qualify for registration.1

 Rule 2(k) of the Trade Mark Rules 2017

“Graphical representation” means the representation of a trademark for goods or services

represented or capable of being represented in paper form and includes representation in
digitised form- this has facilitated sound mark registration in India.

Certain sound marks, for example: roar of a lion, cannot be represented in a conventional staff
notation. To allow these unconventional sound mark applications, a sonogram or a spectrogram

1
https://www.ahlawatassociates.com/blog/sound-mark-registration-process-in-india/
wave may be admissible. In India, even though the rules require graphical representation through
staff notations, by practice the Trade Marks Registry has admitted even spectrogram and
sonogram waves under certain circumstances.

Where the mark consists of a non-distinctive sound but includes other distinctive elements,
such as a word, it may be considered as whole for the purposes of registration. The
Registrar may require the applicant to provide such further information about any music
tendered for registration as the examiner may need in order to determine whether the
mark is distinctive or not.2

 Draft Manual of Trade Marks — Sound Mark

Further, the draft Manual of Trade Marks also provides that “A trade mark may consist of a
sound and represented graphically by a series of musical notes with or without words.”

A trade mark may consist of a sound and represented by a series of musical notes with or
without words. To this end-

1) applications for sound marks must clearly state that they are sound marks. Otherwise,
the application will be considered as if it were a word and/or device mark (e.g. in the
case of musical notation) and

2) graphic representation requirements are met by representation of the sign by a musical

stave divided into measures and showing, in particular, a clef, musical notes and rests,
indicating relative value, and sharps, flats and naturals (accidentals).
Assessing distinctive character of sound marks:

The acceptability of a sound mark must, like words or other types of trademarks, depend upon
whether the sound is or has become a distinctive mark; that is, whether the average consumer
will perceive the sound as meaning that the goods or services are exclusively associated with
one undertaking.

Prima facie, no sound marks will qualify for acceptance without evidence of factual
distinctiveness. In particular, the following sounds may not be accepted for registration as
trademarks since these are incapable of distinguishing goods or services of one person from
those of others:

 very simple pieces of music consisting only of only I or 2 notes;

 songs commonly used as chimes:
 well known popular music in respect of entertainment services, park services;
 children nursery rhymes, for goods or services aimed at children;
 music strongly associated with particular regions or countries for the type of
goods/services originating from or provided in that area.

2
Unconventional Trademarks : Novel Trends in The Modern Trademark Law, CNLU LJ (1) [2010] 22 at page 28
 2. Pending/Decided Litigations in India: None found
3. List of Sound Marks Registered in India: Attached in a .pdf file
separately

4. General Challenges: Sound Marks

1. Difficulty in Decoding the Musical Notes:

In the Shield Mark case3, The ECJ has held that musical notes comprising a stave and
cleft are an intelligible, precise, and stable method of representing sound, and the same
has been followed in India. We see most of the sound \ marks registered only by way of
musical notations, though, in this regard, there occurs a significant difficulty for the
people who are not music-literates to read and decode the musical notes to establish
whether there is any similarity or conflict to raise objections against the same. Also,
determining or establishing a sound mark's distinctiveness may be difficult when only a
few pitches are changed during the examination stage or an opposition procedure.

2. The problem in Registering a Non-Musical Trademark:

A musical sound mark may be represented through the graphical representation of the
musical notes. However, if someone wishes to register a non-musical trademark in India,
then it would be difficult to represent it graphically. The main difficulty with representing
the non-musical trademarks graphically is that they do not give knowledge of the exact
frequency or pitch of the sound that is to be registered. Further, if such sound is played on
different instruments, it would give different variations of the sound, thereby not having
any specific way of identifying the sound. However, the Indian Trademarks Registry is
encouraging the registration of non-musical trademarks by way of representation through
staff notations.

3. Overlap with the Copyright Law and Chances of Copyright Infringement:

Section 11(3)(b) of the Trademarks Act, 1999 states that a trademark shall not be
registered and its use in India is liable to be prevented by virtue of the law of copyright.
This infers that a trademark is rejected registration if it conflicts with any copyrighted
work. In this regard, the Indian courts have stated that if the owner of the copyrighted
work and the author have given their consent for registering a small segment of the
copyrighted work, then in such case, a sound mark may be eligible for registration. 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
3
Shield Mark BV v. Joost Kist h.o.d.n. Memex Case C-283/01; European Court Reports 2003 I-14313.
 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.

4. For registration in India, the Draft Manual seems to follow the teachings of Shield Mark
insofar as detailed musical notation is required, but the Manual does not differentiate
between musical and non-musical sounds. In the Yahoo Case, if the mark is identical to
the one filed in the US, then it has both a verbal and a musical component. This
verbalised component (a human voice yodelling ‘Yahoo’) cannot be adequately
represented by musical notes alone. There are a number of ways of vocalising ‘Yahoo’. If
‘Yahoo’ can be yelled or yodelled with considerable variation, then words are an
imprecise technique by which to represent this sound mark. An emerging consensus – in a
world of easily digitised music and online information resources – suggests that alongside
a written description and musical notation, an electronic deposit of the sound mark is a
cumulative representation package which will satisfy all of the Sieckmann criteria, even
though sound clips are acoustic representations and not graphical ones.

5. Proof of Infringement:

While proving infringement may, in some cases, be more complicated than it is for visual
work, and infringement actions could devolve into a 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
adequate notice to others of the registration of sound marks over visual marks, but this
can be adequately addressed by descriptive notices.

6. 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 fulfil 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.

5. Jurisdictional Stance on Sound Marks

Regulation in EU
  The main instruments of European trade mark law are Council Regulation (EC) 207/2009
of 26 February 2009 on the Community trade mark (hereinafter referred to as the
“CTMR”) and Directive 2008/95/EC of 22 October 2008 to approximate the laws of the
Member States relating to trade marks (hereinafter referred to as the “Directive”)
 According to the Directive, Art 2, “any sign capable of being represented graphically…
provided that such signs are capable of distinguishing the goods or services of one
undertaking from those of other undertakings” (Article 4, CTMR and Article 2 of the
Directive). It is clear that, the scope of registration encompasses sound signs. The thing
that needs to do first is to demonstrate the sound marks’ distinctiveness.
 Test of Distinctiveness4 :
− First, assumptions and decisions should be verified by data. The test may be stricter to
non-traditional trademarks because those signs may need more evidences to demonstrate
their distinctiveness, however, it should be equally applied to all marks in this category,
including sound trademarks.
− Second, at least a significant proportion of consumers could successfully distinguish it
from other signs. Although a minimum degree of distinctiveness is commonly accepted,
the trade mark also has to be distinctive in the European Union as a whole, allowing for
being able to be distinctive as a community trade mark;
− Third, the sign should avoid the likelihood of confusion to the public. That is to say, the
sign should avoid similarities to other previously registered or famous trademarks. Any
similarities which may trigger difficulties for consumers to identify the sign from others
damages trademarks’ distinctiveness.

Registration Process:
 “Article 7 (1) (e) CTMR excludes registration of the signs which consist exclusively of:
i. the shape which results from the nature of the goods themselves; ii. the shape of goods
which is necessary to obtain a technical result; iii. the shape which gives substantial value
to the goods.” (Article 7(1) (e) CTMR).
 The wording of this provision seems refer more to the shape of the sign, however, article
7 (1) (e) CRMR does not confine to any single type of signs. It makes no difference
between traditional or non-traditional trademarks. It must be held that Article 7 (1) (e)
CTMR may apply to trademarks reproducing shapes, regardless of the dimension in
which they are represented (Judgement of 08/05/2012, T-331/10).
 The Criteria For The Registration Of Sound Marks: 5
1. The Need for a Distinctive Sign with the High Threshold of Resonance: Previous EU
legal instruments on trademarks did not explicitly list 'sound' as a type of sign.
However, the new Regulation (EU) 2017/1001 on the European Union trade mark
(hereinafter 'EUTMR') and Directive (EU) 2015/2436 to approximate the laws of
the Member States relating to trade marks (hereinafter 'TMD') have clearly welcomed
it into the family of signs subject to trade mark protection. For sound marks, the
4
https://www.scirp.org/journal/paperinformation?paperid=108713
5
Remi Saidane, Artistic Expression at Risk: The Overlap of Sound Mark Protection and Phonogram Protection in
EU IP Law, 8 CAMBRIDGE L. REV. 152 (2023).
 application of the criterion of the 'perception of the target consumers' was thus further
elaborated in Globo Comunicagdo6. The Court acknowledged the increasing role of
sounds as a means of identifying goods or services, especially in the media sector.23
Regarding the perception of the target consumers, the sound needed to have a 'certain
resonance' enabling them to perceive and regard the sound as a trade mark
2. The Flexibility Introduced for the Criterion of Appropriate Representation: The sign
must satisfy the so-called Sieckmann criteria. In Sieckmann v. Deutsches Patent-und
Markenam the applicant had described the scent as "balsamically fruity with a slight
hint of cinnamon". The court initially observed that a trademark may consist of a sign
which is not in itself capable of being perceived visually, provided that it can be
represented graphically. Secondly, a graphical representation must be clear, precise,
self-contained, easily accessible ; intelligible, durable and objective. The court ruled
that in respect of an olfactory sign, the requirements of graphical representability are
not satisfied by a chemical formula, by a description in w Accordingly, for a sign to
be deemed a trade mark, it must be represented in a manner that is clear, precise, self-
contained, easily accessible, intelligible, durable and objective. 7
 European Union Trademark Implementing Regulation (EU) 2018/626, lays down detailed
rules for implementing certain provisions of Regulation (EU) 2017/1001 of the
European Parliament and the Council on the European Union trademark and repealing
Implementing Regulation (EU) 2017/1431. According to Article 3(g) in the case of a
trademark consisting exclusively of a sound or combination of sounds (sound mark), the
mark shall be represented by submitting an audio file of 2 MB reproducing the sound or
by an accurate representation of the sound in musical notation. Thus, for a sound mark to
be registered under EUTM, it should be able to distinguish the product it is used for from
the products available in the market and it should be submitted through graphical
representation and audio file.

CASE ISSUE FACTS DECISION

Shield Mark 1. Whether Dutch company Shield 1. The Court found that according to
BV v. Joost Article 2 of the Mark BV registered 14 Article 2 of the Directive sounds may
Kist Directive must sound trademarks, constitute a trademark, on the condition
be interpreted including musical notes that they may also be represented
(C-283/01)
as precluding from "Für Elise" and a graphically.
[2004] R.P.C.
sound signs rooster crow. Joost Kist, a
315 (European 2. A trademark may consist of a sign that
from being competitor, used similar
Court of is not in itself capable of being perceived
regarded as sounds in his promotions
Justice) visually, provided that it can be
trademarks? and software. Shield Mark
represented graphically, particularly by
sued for trademark
means of images, lines or characters, and
6
Globo Comunicaido e Participaides S/A v European Union Intellectual Property Office EU:T:2016:468, paras 41-
46.
7
Remi Saidane, Artistic Expression at Risk: The Overlap of Sound Mark Protection and Phonogram Protection in
EU IP Law, 8 CAMBRIDGE L. REV. 152 (2023).
 2. Which infringement and unfair that its representation is clear, precise,
requirements competition. self-contained, easily accessible,
sound signs intelligible, durable and objective. Those
have to fulfil conditions are also binding for sound
to meet the signs.
criteria, and
what kinds of
sound sign are
capable of
being
represented
graphically?

Ardagh Metal Does the mark Ardagh applied for a sound The case involves the European Union
Beverage have mark which was filed as an Intellectual Property Office (EUIPO)
Holdings distinctive audio file rather than the applying previous case law to determine
GmbH & Co character ? traditional musical score or the distinctive character of a sound
KG v. spectrograms (notably the mark. Initially, the EUIPO used a
European first time a sound mark standard stating that a mark must "depart
Union application has been filed in significantly from the norm or customs
Intellectual this format). The mark of the sector" to be distinctive. 8
Property consists of the sound of a However, the General Court argued that
Office drinks can being opened this standard applies specifically to 3D
(EUIPO) followed by 1 second of marks tied to the shape of goods and
silence which is in turn should not be applied to other types of
(T-668/19)
followed by the fizzing of marks like words, devices, and sounds.9
bubbles.

The sound mark was filed

The court emphasized that for marks not
in relation to alcoholic and
inherently tied to the shape of goods, the
non-alcoholic drinks,
departure from the norm is not
including milk and dairy
necessary. However, the key
products; items of metal
consideration is that the mark should not
and metal containers for
be perceived as a functional element of
transportation.
the goods. In this case, the sound of
The EUIPO initially refused opening a drinks can and fizzing of a
the mark in full on the basis carbonated drink was deemed functional
that it is non-distinctive. and lacking distinctiveness, as
Ardagh filed an appeal at consumers associate these sounds
the EUIPO which was
8
https://trademarklawyermagazine.com/an-update-on-sound-marks-with-maria-koval/
9
https://www.uggc.com/en/registration-of-a-sound-mark-the-decision-that-will-make-some-noise/
 unsuccessful. inherently with the nature of the goods.

Ardagh then filed an appeal

to the General Court which
Ardagh, the party seeking the sound
has been dismissed and the
mark, argued that the unique features of
application again refused on
the sound, including a pause in the
the basis that the sound is
middle, made it distinctive. The court
non-distinctive.
rejected this argument, stating that such
variations were insufficient to
distinguish the sound mark from others
in the same sector.

The EUIPO also raised the point that it

is uncommon for sounds to indicate
origin in the drinks sector, as the goods
are typically silent until consumed.
However, the court dismissed this,
asserting that sound on consumption is
not unusual for most goods. In
conclusion, the court found the sound
mark lacked distinctive character and
offered insights for brand owners
considering filing for sound marks in the
future.

Globo Whether the The applicant sought to The EU General Court, confirming the
Comunicaido mark is register the mark for, board of appeal's decision, has rejected
e distinctive or among other things, an application to register as an EU trade
Participaides not ? applications for tablets and mark a sound mark, resembling a
S/A v smartphones in class 9, ringtone, finding it was devoid of
European television broadcasting distinctive character under Article 7(1)
Union services in class 38 and (b) of the EU Trade Mark Regulation
Intellectual services that might be (207/2009/EC). The applicant sought to
Property provided in the form of register the mark for, among other
Office television programmes in things, applications for tablets and
EU:T:2016:46 class 41. smartphones in class 9, television
8, broadcasting services in class 38 and
services that might be provided in the
form of television programmes in class
41.
 The court confirmed that the mark was
represented graphically as it was
represented in the form of musical notes
on a stave, accompanied by a clef, rests
and accidentals (see image).

It considered that the mark would be

perceived by the relevant public only as
a mere function of the goods and
services covered and not as an indication
of their commercial origin; it would
generally go unnoticed and would not be
remembered by the consumer. The mark
amounted to the ringing of an alarm or
telephone which did not have any
inherent characteristic separate from the
repetition of the note of which it
consisted (two G sharps) and would
serve to identify anything other than that
ringing of an alarm or telephone. The
court found that notwithstanding the
description of the mark by reference to
the score (for example the tempo and
length of the notes), the sound amounted
to the repetition of two identical notes
and no nuances could be heard.

With regard to the class 9 goods, the

mark would be understood as indicating
merely that the device was being started.
With regard to the class 38 and 41
services, the mark, due to its banality,
would be perceived as indicating the
beginning or end of a television
programme.

Regulation in USA
 In the United States, although it also gives no expressly recognition of sound trademarks
in its trademark law, (Lanham Act § 45, 15 U.S.C. 1127, 2000) some regulations do
have clear interpretations for sound trademarks. Sound marks may be registered if they
are used in commerce and have capacity to distinguish. (Lanham Act § 1, 15 U.S.C. §
1051 (a) (1), 2002) Lanham Act states that “any word, name symbol or device” that is
 used on or in connection with some good or service may be registered if it has secondary
meaning (Lanham Act § 1, 15 U.S.C. § 1051 (a) (1), 2002). According to The
Trademark Trial and Appeal Board (TTAB) (TTAB, 1978), sound trademarks could be
divided into two categories: inherent distinctive or non-inherently distinctive marks. Put
it an easier way, a sound which is originally unique may need no proof of second
meaning, however, if it is not inherent distinctive, sounds that are commonplace would
need evidence of secondary meaning to prove that they acquire distinctiveness .
1. Second Meaning: Second meaning is often obtained through frequent use, and that’s the
reason why it is usually referred to as “acquired meaning”. According to the Wal-Mart
Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211 (2000), “Secondary meaning refers
to a mark’s actual ability to trigger in consumers’ minds a link between a product or
service and the source of that product or service. That is, a mark has secondary meaning
‘when, in the minds of the public, the primary significance of a mark is to identify the
source of the product rather than the product itself.’”
In the famous sound mark case, General Electric applied the sound of ship’s bell clock to
radio broadcast services. The Board studied the usual sounds and those arbitrary, unique,
or distinctive sounds, and finally discovered that the sound of ship’s bell clock is the one
that mostly conforms the requirements. The Board noted that “unlike the case of a
trademark which is applied to the goods in such a manner as to create a visual and lasting
impression upon a purchaser or prospective purchaser encountering the mark in the
marketplace, 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.” Stating that a
sound may be “unique, different or distinctive,” i.e. inherently distinctive, or
commonplace, requiring secondary meaning for registration).
2. Confusion test: Confusion test is another effective tool to assess distinctiveness. The US
court also listed a set of factors used to identify confusingly similar trademarks, like the
actual confusion existing between the trademarks, similar appearance, sound and
meaning of the trademarks, and so on.10 Although the standards for assessing
distinctiveness seem sophisticated and strict, there are still numerous sound marks
passing the strict tests and successfully registered as trademarks in US. Some of them has
become famous in the worldwide. For example, “the lion’s roar of Metro-Goldwyn-
Mayer” (US Trademark Reg. No. 1395550), “the Nokia ringtone, consisting of a classical
guitar score (US Trademark Reg. No. 3288274) played worldwide 1.8 billion times a
day” .

Registration Process:
 US also has a test for examining the functionality. According to “ the US Patent &
Trademark Office’s (PTO) TMEP(Trademark Manual of Examining Procedure)

10
https://www.scirp.org/journal/paperinformation?paperid=108713
 Section 1202.02 (a) (v) instructs trademark examiners to consider the following four
criteria when analysing whether the subject matter is functional with respect to the goods:
1) Whether there exists a utility patent that discloses the utilitarian advantages of the
design sought to be registered;
2) Whether there is advertising by the applicant that “touts the utilitarian advantages of
the Design”;
3) Facts pertaining to the availability of alternative designs; and
4) Facts pertaining to whether the design results from a comparatively simple or
inexpensive method of manufacture.” (The US Patent & Trademark Office’s (PTO)
TMEP 1202.02 (a) (v)).
 According to TMEP Section 807.09, the applicant who has applied for registration of a
sound trademark is not required to produce drawings of the mark, but rather has to submit
the description of the same along with an audio reproduction of the sound trademark in
an electronic file (.wav, .wmv, .wma, .mp3, .mpg, or .avi format) and should not exceed 5
MB in size. For paper filing, the reproduction of sound trademark should be submitted on
CDs, DVDs, videotapes, or audiotapes. While filing the applicant has to mention that the
audiotape or electronic file is meant to supplement the description of the mark and should
not be discarded.

Case law

Sr. Title and Brief Facts Issues Raised Findings of the Court
No. Citation of the
Case
1. Oliveira v The plaintiff attempted to Do the The district court
Frito-Lay Inc assert plaintiff meet dismissed the claim on the
(251 F3d 56 trademark rights in its Grammy the source ground that “there is no
(2d Cir 2001)) Award winning song “The Girl identifier federal trademark
from Ipanema” against a test ?11 protection for musical
defendant who used the song in works”. The appeals court
a commercial for its baked disagreed with this broad
potato chips. Because the statement of law, stating:
defendant had obtained a “we see no reason why
copyright licence for the song, this should be so.” The
the plaintiff based her claim on court continued: “the fact
the theory that she owned that musical compositions
trademark rights in the song. are protected by the
copyright law is not
incompatible with their
also qualifying for
11
https://www.worldtrademarkreview.com/article/1D2ADF45887336AF077BC56F43361C7833CFFD35/download
 protection as trademarks.”
Nevertheless, the appeals
court affirmed the
dismissal because the
plaintiff failed to show
that the song identified
the source of a particular
product or service that she
offered; a song cannot
serve as a trademark for
itself.
2. Kawasaki Harley-Davi-dson applied The key issue Trademarking a functional
Motors Corp., registration for the sound of its is not about design would prohibit
USA v. H-D motorcycles. Harley-Davidson whether other manufacturers to
Michigan Inc illustrated this sound as Harley’s produce the same engine
“potato-potato-potato”, and sound design which sounds like
43 U.S.P.Q. 2d also slowly, over and over. has acquired Harley’s design, and this
1521 (TTAB However, Nine of Harley distinctiveness would damage the sound
1997.). Davidson’s competitors, like or second competition environment
Suzuki, Yamaha, opposed meaning, but in the motorcycle market.
against the registrability of is that its Harley failed to pass the
Harley’s trademark. The reason sound design functionality test, no
for subjection was that, the fell into the matter how hardworking
motorcycle sound engine used functional it tried to prove its sound
for this style of motor cycle scope. design had acquired
just sounds identical to distinctiveness. After six
Harley’s. years waiting, Harley
eventually abandoned its
application. And the final
outcome would be:
“Harley’s competitors will
continue building
motorcycles with
common crankpin V-Twin
engines, and any
infringement lawsuits will
likely be unsuccessful”
3. In Re General Applicant filed an application The fact that Applicant’s
Electric to register a mark consisting of sound mark is a play on
Broadcasting the sound made by a Ship’s the traditional ship’s bell
Company, Bell Clock as a service mark clock sounds does not
for Radio Broadcasting mean that in the
 Inc. Services. The mark was environment of radio
described as “a series of bells broadcasting services; it is
199 U.S.P.Q. tolled during four, hour incapable of functioning
560 (TTAB, sequences, beginning with one as a mark to identify such
1978) ring at approximately a first services.
half hour and increasing in This is manifestly a
number by one ring at question of fact, and in
approximately each half hour view of the experience of
thereafter”. the average person with
ship’s bells, whether as a
Along with the application, the member of the armed
Applicant filed a tape forces or otherwise,
recording. The Examiner evidence in such a
refused the registration on the situation is necessary to
ground that sequential sounds establish that the ship’s
sought to be registered do not bell sounds have become
and cannot constitute a mark distinctive of Applicant’s
serving to identify Applicant’s services and do, in fact,
services. The Examiner identify and distinguish
observed that the Applicant is Applicant’s broadcasting
doing no more than telling its services to those exposed
listeners the time by to such services, That is,
broadcasting the traditional the sounds ring a bell for
maritime sequence. the listener.

UK’s Regulation
 According to Article 2 of the European Directive6 and as under the UK Trademarks
Act, 1994, the three main requirements for being registered as a trademark are as
follows:7

(a) The trademark should be a sign or anything that can convey information.
(b) The sign should be capable of distinguishing products or services of one undertaking from
that of another. This is clearly a requirement of distinctiveness of trademarks.
(c) The trademark is capable of graphical representation.

 The Section 103(2) of the 1994 UK Trademarks Act does not specifically exclude
or include sound marks as a registrable trademark. Since, the UK Act allows for the
representation of a trademark by means other than graphical representation, the possibility
of having sound marks exists. Thus, it is upon the applicant to prove that a
particular sound mark can function as a trademark
 In the case of R v John Lewis,15 the UK Court refused an application for 'the
smell, aroma or essence of cinnamon' as a trademark for furniture as the verbal
 description of a smell was not enough to make a graphical representation. But the case
would have been different if this had been done with reference to certain standards.16
The smell of fresh cut grass for tennis balls was registered as a European trademark,
and the odor of beer for dart flights and of roses for tyres have been registered as
trademarks in UK." However, it is possible to criticize these trademark registrations
in light of the Sieckmann case. One of the most fundamental questions that arise is
whether freshly cut grass smells uniformly the same on all occasions and whether a
normal person can clearly identify the differences in the smell. The argument that all
sensory perceptions are subjective including sound, taste and colour is not completely
adequate to counter the requirements under EU trademark law. Thus, for all practical
purposes, it is almost impossible to register olfactory marks in Europe as of now till
further advances are made in technology.

Australia, Japan, China, Canada and Singapore

Jurisdiction: Source Facts

Australia Trade Marks Manual of A sound trade mark can be anything auditory. It can
Practice and Procedure, be a complex orchestral fanfare, or a simple
Australia mechanical clicking noise. It can be sung or spoken
(https://manuals.ipaustralia.gov. words, or a combination of voice and other sounds.
au/trademark/6.-sound- It can be the sound of a dog barking, a bell ringing or
auditory-trade-marks ) a baby crying. Whatever it is, it must serve the
purpose of identifying the trade source of the
goods/services in respect of which it is to be used.
As per Part 21.6.1.:
 An application for a sound as a trade mark
must include a graphical representation of the
mark.
 Musical notation is acceptable as a graphical
representation of a sound mark consisting of a
musical piece.
 The name of a specific piece of music is not
acceptable as a graphical representation
unless additional information is supplied to
identify the particular rendition claimed as a
trade mark. In general, the musical notation of
the specific piece would be more appropriate
than just its name.
 The graphical representation, the applicant
must supply a clear and concise description of
the trade mark which will be entered as an
endorsement to the application.
  The applicant must supply recordings of the
trade mark on a medium which allows for
easy replaying. Currently, the most common
media are CDs, DVDs and MP3 recordings.
 The representation must also be in
compliance with 3.3 Representation of the
trade mark- sound trademarks of Part 10.
(https://manuals.ipaustralia.gov.au/trademark/
3.-representation-of-the-trade-mark---
general )
As per 21.6.2: A sound mark is designed to
identify the trade source of goods and/or services
via auditory rather than visual means.
Technology developed over the last century has
increasingly exposed the buying public to
advertising via sound, and thus to the possibility
that goods or services could be identified by
sounds, rather than by visual presentations. The
1995 Act allows for the registration of a sound as
a trade mark. As with any other kind of trade
mark, a sound must first meet the basic
requirements for registrability set out in the Act.

Case Law (Jurisprudential Purpose:)

W & G Du Cros Appn (1913) 30 RPC 660 at 672:
The extent to which the trade mark is adapted to
distinguish the applicant's goods and/or services
will:
... largely depend upon whether other traders are
likely, in the ordinary course of their businesses
and without any improper motive, to desire to use
the same mark, or some mark closely resembling
it.
To determine whether a sound is one which other
traders are likely to need or want to use, the
examiner should consider whether it has
functional aspects, or is commonplace in the
trade and wider community.

China Trademark Law of the People's According to a draft Standard of Examination issued
Republic of China by the Chinese Trademark Office, a sound mark can
(https://www.jonesday.com/-/
media/files/publications/
2013/10/chinas-new-
trademark-law/files/china-new-
trademark-law/fileattachment/
china-new-trademark-law.pdf )
(file:///C:/Users/tiwar/
Downloads/China%20New
%20Trademark%20Law.pdf )
(https://www.thetmca.com/
sound-marks-in-china/
#:~:text=According%20to%20a including the first sound mark “SOFY” filed by a
%20draft%20Standard,sound
%2C%20human%20and
%20animal%20voice. )
consist of a musical or non-musical sound, or a
combination of both. Non-musical sound includes
natural sound, human and animal voice.
The first sound mark application in China was filed
by China Radio International on May 4, 2014. The
sound sought to be registered is the opening music
for one of its programs and consists of music and
human voice. That mark was preliminarily approved
on February 13, 2016 and registered on May 14,
2016. As at the end of October 2016, five sound
marks have been successfully registered in China, all
consisting of both musical and non-musical sounds,
foreign party Unicharm, a Japanese household and
hygiene products company, which registered on
August 21, 2016.
The Nokia ringtone (still looking for the valid
citation) was the first preliminarily approved
application for a sound mark in China that consists of
only musical sound. It will become a registered
trademark in early January 2017 if the application is
not opposed.
The first sound mark application that will be “heard”
by the IP Court in China is “Di Di Di Di Di.” That
tune is the notification sound for an incoming
message in QQ, one of the most popular social
networking apps of Chinese IT Giant Tencent. The
Chinese Trademark Office rejected the application on
the basis that the sound mark in question lacks
distinctiveness because it consists of six simple “Di”
sounds only. The PRC Trademark Review and
Adjudication Board maintained that rejection.
According to the draft Standard of Examination, a
sound mark shall meet the same examination
requirements as visual marks. A few examples of
non-registrable sounds are provided in the draft
Standard, e.g., the national anthem of a country,
religious music, dog barking or cat meowing for “pet
breeding” services, baby laughter for “infant milk
powder”, melody from classical music on “arrange
and organize musical concert”. Until more guidance
is available from the Chinese trademark authorities,

Japan Trademark Act (Act No. 127 of The Amended Trademark Act revises the definition
April 13, 1959, as amended up of "use" of a trademark with respect to a sound mark.
to April 1, 2022)
(https://www.jonesday.com/en/
insights/2014/09/amendment-
to-trademark-act-of-japan--
new-marks-including-color-
marks-and-sound-marks-can-
be-protected )
Canada NA
(https://harrisco.com/sound-
marks-can-be-registered-in-
canada/)
applicants and trademark professionals will have to
rely on their experience in prosecuting analogous
applications as well as common sense in their efforts
to secure a registration for a sound mark in China.
Under the Amended Trademark Act, use of a sound
mark occurs when a sound mark is recorded to a
recording medium that is affixed to goods, articles to
be used for providing services, or advertisement
relating to goods or services, including when such an
item is a recording medium itself (Article 2,
Paragraph 4, Item 2 and Article 2, Paragraph 3,
Item 1). Additionally, an act to emit a sound mark for
the purpose of assignment or delivery of goods or
providing services is use of a sound mark (Article 2,
Paragraph 3, Item 9). Furthermore, to accommodate
the future possible addition of other types of marks,
acts specified by a Cabinet Order may be added to
the use of a mark under Article 2, Paragraph 3,
Item 10 of the Amended Trademark Act.
The Canadian Intellectual Property Office (CIPO)
has issued new guidelines for applications to register
sound marks effective immediately. Companies that
use or wish to use sound to distinguish their goods or
services can now protect such sounds under trade-
mark law.
The decision to issue guidelines follows an eighteen-
year dispute with Metro-Goldwyn-Mayer Lion
Corporation (MGM), which sought to register the
distinctive roar of Leo the Lion in 1992. MGM’s
application was rejected by the CIPO on that basis
that the applicant did not meet the formal
requirements for including “a drawing of the trade-
mark and such number of accurate representations of
the trade-mark as may be prescribed.” MGM had
included a spectrogram of the lion’s roar, as well as
audio and video tapes of the roaring lion. MGM
appealed the decision to the Federal Court of Canada.
Prior to a hearing on the merits, the CIPO consented
 to an order allowing the appeal and directing the
CIPO to approve the trade-mark application for
advertising.

The new guidelines require that an application for

registration of sound marks must: (a) state that it is
for the registration of a sound mark; (b) contain a
drawing that graphically represents the sound; (c)
contain a description of the sound; and (d) contain an
electronic recording of the sound. The recording of
the sound must in MP3 or WAVE format and is
limited to 5 megabytes in size.

Singapore Trade Marks Amendment Act Under the Trade Marks Amendment Act 2004, the
2004 essential elements of a trade mark shall consist of the
(Conditions For Registration and following:
Scope of Protection of Non-
Conventional Trade Marks (2004) (a) Any sign - a “sign” is further defined as “any
16 SAcLJ 423, by Susanna H. S. letter, word, name, signature, numeral, device, brand,
Leong) heading, label, ticket, shape, colour, aspect of
packaging or any combination thereof”.

(b) Capability of being graphically represented.

(c) Capability of distinguishing goods or services.

(d) The goods or services concerned are offered in

the course of trade.

With the removal of the requirement of a trade mark

being “visually perceptible” under the Amendment
Act, a sound sign may be registrable as a trade mark
in Singapore provided all the other criteria are
satisfied. The criteria for registration of a sound as a
trade mark in Singapore include:

(a) graphical representation;

(b) capability of distinguishing goods and services of

the proprietor;

(c) use in the course of trade; and

(d) that the trade mark does not fall within any of the
absolute grounds of refusal in s 7 of the 1998 Act,
 which prohibit the registration of marks devoid of
distinctiveness, descriptive or customary marks.

6. Jurisprudence on Voice Trademarks & Copyright

Registration of Celebrity Voices (India)12

Sound marks have been afforded greater protection under the Trademark Rules, 2017, having
specific provisions pertaining to the same. As per Rule 26(5) of the Trademark Rules, 2017, an
application for a sound mark can be submitted in India along with its recording in an Mp3 format
in a medium that allows easy playing along with the graphical representation of its
notations. This opens up a plethora of possibilities for a trademark registration of sound marks in
several forms including voices of renowned celebrities. However, the limitation of registering
voices as a trademark would be the limited protection it shall guarantee, as a trademark
registration on a voice would not provide unlimited and exclusive rights on the voice itself but
rather would be limited to that particular phrase or note defined in the Mp3 file and notations.
For instance, the trademark registration for Pitbull’s “EEEEEEEYOOOOOO” does not provide
exclusive rights on Pitbull’s voice itself but are limited to the note as described in the Trademark
application- “The mark consists of a man yelling "EEEEEEEYOOOOOO" in falsetto with "E"
drawn out followed by a "U" sound” and the sound clipping submitted along with it such that no
one else can commercially exploit this particular phrase. Other challenges involve claiming
monopoly on one’s voice itself which might be an extreme form of protection and would lead to
reconsideration of several aspects of media laws including ownership in a celebrity’s work based
on his voice, completely changing the outlook on licensing, royalties as well as the jurisprudence
behind the fair use defence and the prevalence of parodies in the entertainment industry.
Indian jurisprudence on protection of personality rights in evolving continuously. While Courts
have been active in the protection of the personality rights of celebrities, there is a lack of
awareness on scope of protection of such personality traits including signature poses and voices
as trademarks. Even though the existing laws have their limitations, celebrities can take
advantage of these provisions and seek trademark protection provided they justify the criteria of
trademark protection. However, it is imperative to mention that, the mere existence of a well-
known pose or voice without the intent of commercial use does not attract trademark protection
as the ultimate aim of trademark protection is to prevent consumer confusion regarding a
celebrity trait with an endorsement, a brand, or a product and not on the celebrity’s personal
identity itself. However, due to lack of effective discussions, the scope of trademark protection
on signature moves and voices of celebrities still remains unexplored in India.

India

12
https://www.asialaw.com/NewsAndAnalysis/trademark-protection-of-signature-poses-and-voices-of-celebrities-
in-india-an-un/Index/1719#:~:text=However%2C%20it%20is%20imperative%20to,brand%2C%20or%20a
%20product%20and
Personality rights, commonly known as ‘right of publicity,’ guarantees an individual right in
one’s personal attributes such as appearance, signature, voice, silhouette, face, features, gestures,
expressions, mannerisms, etc, paving the way for an individual to use and commercialise one’s
identity. Such rights in the context of a well-known celebrity or a public figure's emergence to
celebrity rights confer exclusive rights to such celebrities to control the commercial use of their
own personality traits. Personality rights also create an association in the minds of the general
public with a particular individual, thereby inviting the application of the laws governing
trademarks.
The recent judgment of the Delhi High Court in Anil Kapoor vs. Simply Life India and Ors. is a
significant development in the area of personality rights, as it grants protection to actor Anil
Kapoor’s individual persona and personal attributes, such as voice, against misuse, specifically
through Artificial Intelligence (AI) tools used for creating deepfakes. The order is a first of its
kind in India and is another step forward in paving the way for a more robust regime targeting
the misuse of a celebrity’s attributes.

In Mr Kapoor’s case, the Delhi High Court granted an ex-parte, an omnibus injunction that
effectively restrained 16 entities and the world at large from utilizing Mr Kapoor’s name,
likeness, image, voice, and employing technological tools such as AI, face morphing, and GIFs
for financial gain or commercial purposes. The court’s decision underscores the importance of
safeguarding personality rights in the digital era and establishes a precedent for preventing
unauthorized exploitation of celebrities’ identities.

It was, in fact, unauthorized usage that prompted Mr Kapoor to approach the High Court and
seek protection in the first place. Anand & Naik represented Mr Kapoor in the matter and have
led the way in securing crucial orders for the protection of personality rights.

The Delhi High Court bench led by J. Navin Chawla in the case of Amitabh Bachchan v. Rajat
Nagi and Ors. was another remarkable development in the area of personality rights in India.
The court granted an ad interim in rem (i.e. against the world) ex-parte injunction against the
unauthorized use of his personality and personal attributes, such as his voice, name, images, and
likeness, for commercial use. This was the first blanket John Doe order granted in India for the
protection of personality rights.

Sound marks have been afforded protection under the Trademark Rules, 2017, as per Rule 26(5)
of the Trademark Rules, 2017, an application for a sound mark can be submitted in India along
with its recording in an MP3 format in a medium that allows easy playing along with the
graphical representation of its notations.10 This opens up a plethora of possibilities for trademark
registration of sound marks in several forms, including the voices of renowned celebrities.
However, the limitation of registering voices as a trademark would be the limited protection it
shall guarantee, as a trademark registration on a voice would not provide unlimited and exclusive
rights on the voice itself but instead would be limited to that particular phrase or note defined in
the Mp3 file and notations.
US

Midler v. Ford Motor Co:

This case centres on protecting the voice of a celebrated chanteuse from commercial exploitation
without her consent. Although the Court of Appeal stated that “…А voice is not copyrightable.
The sounds are not ‘fixed’ ”, they did affordable her rights under common law for the
appropriation of identity. They highlighted that “…voice is as distinctive and personal as а face.
The human voice is one of the most palpable ways identity is manifested”. Arguably this is
correct since just а person’s voice in the abstract is not necessarily protectable, but the underlying
work, including the recording of that work, could be.
The Court, under California law, found that an injury may exist from appropriating attributes of a
person’s identity. Although an individual’s voice is not copyrightable, the Court determined that
a person’s voice is as distinctive and personal as their face. Additionally, the Court reasoned that
the human voice is also one of the most blatant ways of observing identity. The Court, therefore,
found that Ford’s act of impersonating Midler’s voice was the equivalent of taking her identity.
Further, the Court held that when a widely-known singer’s voice is deliberately replicated for
commercial use, the imitators are liable under tort law.

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