Trademark

Breaking News: India’s First "Sound" Mark Registered


SpicyIP just learnt that India’s Trademark Office has granted the first “sound” mark in favour of Yahoo Inc yesterday!

Simply put, a sound mark is a non-conventional trademark where sound is used to perform the trademark function of uniquely identifying the commercial origin of products or services. Classic examples include the thunderous sound of a Harley Davidson (though it appears that that this registration failed in the US after severe opposition), MGM’s roar of a lion etc.

For a collection of sound marks, see this database of the USPTO, which also includes the Yahoo yodel.

SpicyIP just spoke with Pravin Anand, Managing Partner, Anand and Anand, who represented Yahoo in this matter, who offered to do a guest post on this pathbreaking development. So watch this space for more.

We expect that Mr Anand’s post will highlight aspects such as “procedural requirements” i.e how does one represent a sound mark–will musical notations do? Sonograms? Can “sound” files be submitted? In the meantime, for those who wish to delve deeper into some of these aspects, take a look at this EU case involving the famous ululating Tarzan yell, succinctly analysed by the famous IPkat.

Shamnad Basheer

Shamnad Basheer

Prof. (Dr.) Shamnad Basheer founded SpicyIP in 2005. He's also the Founder of IDIA, a project to train underprivileged students for admissions to the leading law schools. He served for two years as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). In 2015, he received the Infosys Prize in Humanities in 2015 for his work on legal education and on democratising the discourse around intellectual property law and policy. The jury was headed by Nobel laureate, Prof. Amartya Sen. Professional History: After graduating from the NLS, Bangalore Prof. Basheer joined Anand and Anand, one of India’s leading IP firms. He went on to head their telecommunication and technology practice and was rated by the IFLR as a leading technology lawyer. He left for the University of Oxford to pursue post-graduate studies, completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His first academic appointment was at the George Washington University Law School, where he served as the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in 2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian law school. Later, he was the Honorary Research Chair of IP Law at Nirma University and also a visiting professor of law at the National Law School (NLS), Bangalore. Prof. Basheer has published widely and his articles have won awards, including those instituted by ATRIP, the Stanford Technology Law Review and CREATe. He was consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also served on several government committees.

3 comments.

  1. Avatarrahul

    Good News indeed ! But Trademark Law of India (Act, 1999) must be amended in this regard in respect to the definition of the term “graphical representation” which has until now being understood as the representation only in the paper form which is actually not completely correct. The Ralf Seikmann Case (2001) decided by the German Patent Office very clearly stated the circumference of the term “graphical representation” and also stated that marks which are capable to distinguish the goods and services of one person from those of the others are capable of being registered as trademarks.
    Thus this case gave negative decision in respect to smell marks which does not satisfy the requirements of graphical representation but had positively defined the term “graphical representation”
    Thus the new breed of non-conventional signs will be ready to get registered as trademark like – sound, smell, taste, motion, tactile, shape, colour, holograms, etc;

    Reply
  2. Avataraukrulz

    This is indeed a great news…as far as the previous post by Mr. Rahul is concerened, sound can be graphically represented my way of notes on paper. So I dont see a reason as to why the 1999 Act should be ammended.

    Reply

Leave a Reply

Your email address will not be published.