ROLE OF SOUND AND SMELL IN INTELLECTUAL PROPERTY RIGHTS

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This article was written by Shreetama Ghosh, a student of Rajiv Gandhi National University of Law, Punjab.

– Introduction –

When one takes a stroll out in the open and hears a jingle playing on the television of some neighbouring house, one often does not know what is being said in the advertisement but knows which product the advertisement is for because of a unique tune associated with it. Similarly, while passing a certain area, the smell of Lucknawi biriyani in the air makes one’s mouth water automatically. It is not that one is actually watching the advertisement or sitting the restaurant serving the biriyani, but there are certain sounds and smells that one usually associates with things that they are aware of.

Do people actually associate certain smells and sounds with a particular product they consume? In specific cases, they certainly do. For example, an aircraft of a particular company can have a specific sound associated with it due to which it can be identified from a long distance. Sounds were especially associated with fighter aircrafts at the time of the Second World War to identify which were enemy airplanes. Similarly, distinct smells can be associated with certain products, excepting for the natural smells of those products. For instance, a Dutch company registered a trademark for tennis balls it made as they carried the smell of freshly mown grass.

– What is a Trademark –

Any word, symbol, image or any other kind of signifier which helps distinguish a product of one company or brand from that of another is generally perceived as a trademark and this wide definition has been codified in the TRIPS Agreement as follows –

any sign, or combination of signs, capable of distinguishing goods and services or one undertaking from those of other undertakings, shall be capable of constituting a trademark[1]

 The Community Trademark, which covers the entire region of the European Union, also defines trademarks in a similar manner.

Trademarks were originally granted as a means to protect the public from being a victim of fraud by companies and it also enabled traders to protect the distinctive features of their products from their competitors. This practice first started as the tort of passing off and was subsequently codified as the law on trademarks due to the high economic value attached to these signifiers. Today, due to the protection provided to trademarks, traders invest in the branding of products and try to protect the goodwill they have earned through that brand name.

However, the conventional idea of a trademark only involves the use of names, designs, etc. to distinguish products. With an increase in the level of competition and the fact that there is a limit to being innovative in the said fields, there has emerged the concept of non-conventional trademarks, more specifically, sound marks and smell marks. These non-conventional trademarks are now becoming increasingly popular with the passage of time as every businessman wants to stand out with some distinct product.

– Sound Marks –

A sound mark is a non-conventional trademark where the sound is used to perform the trademark function of uniquely identifying the commercial origin of the products or services. Sounds marks have existed for a quite some time now, especially since Nokia introduced its own jingle as a ringtone and every cell phone company followed suit.

The first ever sound mark was registered in the USA for the chime of NBC entertainment and India’s first sound mark was the registration of the famous yodel of Yahoo. However, the impediment in the registration of sounds as trademarks is that they have to be able to be graphically represented and it has to be ensured that the sound is clear, precise and durable enough to be recognized by a consumer as that of a specific product or company, as held by the European Court of Justice.[2]

Even in countries which now accept sound marks as trademarks, there is no uniformity or objective determination as to when a certain sound can be trademarked. Whereas in most European nations and the US, sound marks are generally recognised if they can be used to distinguish between two products, in certain countries, only visual representations are considered to be capable of registration as trademarks and therefore, in such jurisdictions, sound marks are denied registration.

One particular difficulty even in countries where sound marks can be registered is with the way the sound has to be described for a registration. In some countries, they have to be described through words, which then form a very generalised representation of what the sound actually is. And unless it is a famous sound, such a trademark can be widely misused. On the other hand, where the sounds have to be described through music notations without a listing of the note pattern, the mark would be meaningless.

With the growth of technology, the use of new and non-conventional forms of intellectual property are also increasing, especially the use of sound marks to identify products. Some of the famous sound marks that have been registered over time are Nokia’s tune, Intel’s five-tone sound, Time Warner Bros’ Looney Tunes theme tune, Pillsbury’s dough boy’s giggle, MGM’s lion’s roar, Twentieth Century Fox’s starting drumroll, etc.

– Olfactory Marks –

The use of sights and sounds as a means of recognising things and people have been known since time immemorial but it has been recently studied and discovered that odours can also evoke memories and emotions and in fact, have a closer connection to being associated with things, persons or places. This revelation is what has led to the development in the arena of smell marks.

While sound marks are still comparatively common, smell marks are one of the rarest forms of trademarks. In fact, Chanel was the first enterprise that attempted to register the smell mark of its perfumes but it was rejected on the ground that the smell was functional to the product, i.e. the perfume was based on the existence of the smell. The first smell mark was successfully registered in the United Kingdom when the company Sumitomo Rubber wanted to register “a floral fragrance or a smell reminiscent of roses applied to their vehicle tires”.

In a landmark case[3] before the European Court of Justice, it was held that a sign which is not visually perceptible will qualify as a trademark only if it has a distinctive character and can be represented graphically, providing two conditions for such representation –

1. It must be complete, clear and precise, so that the exclusivity claimed is clear.
2. It must be intelligible to the consumers and other manufacturers.

This requirement of graphical representation poses the following problems –

1. That a smell mark can be represented through a drawing is unrealistic.
2. Representation by a chemical formula would be insufficient as it is not the recipe alone which contributes to the smell of the product. Further, such representation will not be easily decipherable to the consumers and other manufacturers.

• The substance cannot be stored with the registry for ensuring a record of its scent as, the scent being unstable, may blur or even vanish over a period of time.

In the USA, the first smell mark registered was in 1990 when the US Patent and Trademark Office registered “a high impact, fresh, floral fragrance reminiscent of Plumeria blossoms” to identify sewing thread and embroidery yard.[4] The consideration in the case was that the scent is not functional to the product itself and provided that for such registration, it has to be proved that the trademark significance of the scent is substantial.

– Indian Law –

In Indian law, a trademark is defined under Section 2(1)(zb) of the Trademarks Act, 1999 as “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others”. This definition is generic and therefore, does not completely eliminate the possibility of inclusion of non-conventional trademarks. However, the Trademark Rules, 2002 provide that graphical depiction of a trademark on paper in a durable form is mandatory for its registration.

The above rule acts as an impediment to the registration of olfactory marks even more than in case of sound marks, as, in case of sound marks, a musical notation is acceptable as graphical description. The first sound mark registered in India was the yodel of Yahoo in 2008 and the trend in favour of granting sound marks has been strengthened by the registration of one by Allianz Aktiengesellschaft, a German Company. However, the Registry needs to introduce systems like accepting the audio file of a sound recording for registering the sound instead of sticking to old and useless methods.

While there have been some registrations of sound marks in India, the recognition of a smell mark as a legitimate trademark is yet to be realised, especially as it requires the Indian law to take into consideration alternate forms of representation for the recognition of smell marks as opposed to sticking to the old Sieckmann test.

– Conclusion –

The recognition and development of sound marks and olfactory marks as a part of intellectual property is a breakthrough in the field of intellectual property rights and it is hoped that the Indian jurisprudence does not only catch up with the international trend but also contributes in strengthening the same by adopting a liberal attitude towards these non-traditional trademarks.

[1] Article 15(1), TRIPS Agreement.

[2] Smell, Sound and Taste – Getting a Sense of Non-Traditional Trademarks, WIPO Magazine, http://www.wipo.int/wipo_magazine/en/2009/01/article_0003.html.

[3] Ralf Sieckmann v. Deutsches Patent und Markenamt, Case C-273/00, 12 December 2002, European Court of Justice.

[4] Re Celia Clarke.