3 min read.Updated: 22 Aug 2008, 01:01 AM IST P. Manoj
Yahoo awarded India’s first sound mark; Nokia in queue
Bangalore: Finally, Yahoo’s trademark yodel is officially its own in India.
The country’s trademarks office granted on 18 August, its and India’s first “sound mark" to Sunnyvale, California-based Internet firm Yahoo Inc.’s three-note Yahoo yodel.
This will prevent other companies or individuals in India using the yodel (essentially a long-drawn Yahoo).
An application filed by Yahoo in the Delhi branch of the Trade Marks Registry was granted a so-called “sound mark" on Monday, said an official in the Trade Marks Registry who did not want to be named because he is not authorized to speak to the media.
Traditionally, words, signatures, names, devices, labels, numerals, acronyms and logos are given trademark status. In the case of sound marks, a certain sound is associated with a company or its product or services—much like the four-note bell sound that has graced ads for biscuit maker Britannia Industries Ltd for many years. The most famous example among sound marks is the roar of the MGM Studios lion (the cat itself changed over time, but the sound remained the same).
Finnish mobile phone maker Nokia has also applied for a sound mark for its signature musical notation in the Mumbai branch of the Trade Marks Registry and the case is being processed, the official said.
Executives at the local offices of Yahoo and Nokia declined comment.
Anand and Anand, a law firm specializing in intellectual property issues, represented Yahoo in the sound mark application. “It’s a very healthy development for the country. India can become the outsourcing capital of the world for creating these sound marks for clients in India and abroad. It’s a great new market. Sound marks have far greater penetration than visuals. It reaches your ears much before the visual aspect or even the product reaches you," said Pravin Anand, its managing partner.
India has granted no sound marks since a new trademarks law that recognized these came into effect in 2003. Experts say the trademarks office was hesitant to do so because it wasn’t sure the “uniqueness" of a sound could be expressed.
Mint couldn’t immediately ascertain the number, if any, of applications related to sound marks made since 2003 and the status of these.
“Fierce competition in the market compels brand owners to explore unconventional ways to reach out to consumers more effectively. Sounds along with visuals are used widely now to assert brand presence. In this context, it is welcoming to note that India’s trademark office recognizes the intellectual property involved in the sound bites which are used as source identifiers of goods and services," said Biju K. Nambiar, senior member, intellectual property practice group at Mumbai-based law firm Majmudar and Co. “By doing so, the Trade Mark Registry has acknowledged global realities and opened up new avenues for Indian entrepreneurs to register their brands under the sound marks category."
The international register of trademarks under the administration of World Intellectual Property Organization, a UN agency, has issued 35 sound marks, 526 three-dimensional marks and more than 3,000 colour marks. Yahoo’s yodel is registered as a sound mark in the US patent office.
Interestingly, Yahoo was involved in a lawsuit over the yodel with its creator. Wylie Gustafson, founder of a country band, created and sang the three-note signature yodel for Yahoo’s first television ad in 1996. Yahoo paid Gustafson a one-time fee of $590 (Rs20,700 then) for recording the three-note Yahoo yodel. Gustafson was paid an additional $590.38 in January 1999, when he complained about the uncompensated and unconsented use of the yodel after seeing a Yahoo ad during the Super Bowl.
Gustafson later filed a case against Yahoo in the US district court in Los Angeles, seeking $5 million in damages from the firm for continued use of his yodel in its advertising without paying him. He claimed that Yahoo hired him in 1996 to create and record the yodel with the understanding that it would be used only for that specific commercial. Yahoo, he claimed, never told him that his vocalization would be used in thousands of subsequent commercials. The company quickly settled the suit with Gustafson. Terms of the settlement have not been disclosed so far.