A review of registrations for sound marks that were based on use reveal that the Registry advanced applications to registration on the basis of relatively scant supporting evidence. For instance, a sound mark application filed by Saregama India Limited in the year 2019, claiming use since 2017, was accepted on the basis of a single YouTube extract and a few advertisement expenditure invoices. Netflix obtained registration for its sound mark “Ta-dum”, filed on December 2021, claiming use since February 2015, by providing media articles to support its use claim, most of which were about Netflix.
It was also observed that objections on grounds such as functionality and identity/ similarity with other existing sound marks have also been raised. For instance, Suzuki Motor Corporation has filed for registration of a sound mark and describes it as “Distinct Car Running Sound (of a jet aircraft) in relation to certain type of automobiles.” This application has faced an objection under Section 9 (1)(b) of the Act. Even after ample number of hearings, Suzuki Motor has failed to satisfy the learned Examiner as regards registrability of its sound mark.
An analysis of the practices in foreign jurisdictions reveals that sound marks are not registered without evidence of acquired distinctiveness. For instance, the United States Patent and Trademark Office requires that, in order to function as a source indicator, a sound mark must “assume a definitive shape or arrangement” and “create in the hearer’s mind an association of the sound.” These guidelines further add that in order to be registrable, the sound must be “unique, different or distinctive” in connection with the goods/ services with which they are associated. Further, “commonplace” sounds or those to which listeners have been exposed under different circumstances can be registered only after having proved acquired distinctiveness.
Similarly, in European Union Intellectual Property Office (“EUIPO”), the registrability of a sound mark depends on whether the sound is distinctive per se. Further, the EUIPO guidelines even specify types of sound marks that are unlikely to be accepted without evidence of factual distinctiveness. It follows that the law regarding sound marks registration revolves around the aspect of distinctiveness.
In the United States, for example, Harley Davidson attempted to register a V-twin engine sound mark. However, competitors, including Japanese manufacturers Suzuki, Kawasaki, Yamaha, and Honda, as well as American manufacturer Polaris, filed oppositions, fundamentally, on the ground that the sound failed to “indicate the source of the motorcycles.” Consequently, Harley Davidson withdrew its application.
While a review of the Registry’s records does not show any evidence that a sound mark registration has been the subject of a cancellation action, we believe that once a sound mark is registered on a proposed to be used basis, it may be open to challenge by third parties on the ground of being granted registration without proving distinctiveness. Also, while there has not been any court action against use of a registered sound mark, if a party were to take such action, there is a possibility that, as a counterattack, the opposite party can petition to cancel the sound mark registration.
Source: Barandbench
