Yahoo! yodel becomes first registered sound mark
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The Trademarks Act 1999 (which came into force in 2003) affords protection to a new category of trademarks which may be broadly classified as unconventional trademarks (including colour and hologram marks). In addition, the act expressly provides for the registration of the shape of goods and their packaging, as well as combinations of colours.
Section 2(1)(zb) of the act defines a 'trademark' in broad terms 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". Although the new act does not explicitly prohibit the registration of sound marks, it provides for the registration of only those marks that are capable of being represented graphically. A sound mark may be represented graphically in the form of musical notes. The graphic representation of a sound mark must be certain, visible and precise, so that the sound can be easily identified. A mere written description of the sound is insufficient.
In 2004 Yahoo! filed an application for the registration of its yodel at the New Delhi branch of the Trademarks Registry for services in Classes 35 (advertising and business services), 38 (telecommunication services) and 42 (computer and website services) of the Nice Classification. The trademark application consisted of musical notes (represented graphically) and a musical stave divided into measures. The application was accepted on the grounds that the Yahoo! yodel:
- had acquired distinctive character in India; and
- was well known worldwide.
The mark was thus advertised in the Trademarks Journal in the abovementioned form. After expiry of the opposition period, the Yahoo! yodel proceeded to registration.
The implications of the registration of the Yahoo! yodel are manifold. Yahoo! can now prevent third parties from using an identical or deceptively similar sound mark. In addition, India has entered the league of countries (eg, Australia, New Zealand and the United States) in which unconventional trademarks are afforded statutory protection.
Due to globalization and international competition, companies must adapt their advertising tools in order to market goods and services more effectively. Businesses have realized the importance of increasing their visibility while protecting their intellectual property. Unconventional trademarks are attractive marketing tools: they have a greater impact on consumers due to a higher degree of recollection.
The registration of the first sound mark in India should be music to the ears of brand owners. Mobile phone company Nokia has also applied to register its well-known tune as a trademark in India. The application is pending.
Revanta Mathur, Anand And Anand Advocates, New Delhi
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