Intellectual Property Law: Jingle and Bottle Shape Trademarks

This report provides a comprehensive analysis of intellectual property law, specifically focusing on trademark registration in the United Kingdom. The report examines two case scenarios: the trademarking of a jingle produced by 'Tablex' and the shape of a packaging bottle for 'Booties'. It delves into the basic registrability requirements, absolute and relative grounds for refusal, and the Nice classification of goods and services relevant to each trademark. The report highlights the importance of distinctiveness, adherence to legal guidelines, and the potential challenges in securing trademark protection for both sound and shape trademarks. It emphasizes the need for thorough searches and compliance with the Intellectual Property Office (UKIPO) regulations. The report concludes by summarizing the key findings and implications for businesses seeking to protect their intellectual property.

Intellectual Property Law

TABLE OF CONTENTS
INTRODUCTION...........................................................................................................................1
Trademarks for Jingle produced by 'Tablex'....................................................................................1
Basic registrability......................................................................................................................1
Absolute grounds of refusal........................................................................................................2
Nice classification of goods for each trade mark........................................................................3
Trade marking shape of packaging bottle........................................................................................3
Basic registrability......................................................................................................................3
Absolute grounds of refusal........................................................................................................3
Relative ground of refusal...........................................................................................................3
Nice classification of goods for each trade mark........................................................................3
CONCLUSION................................................................................................................................3
REFERENCES................................................................................................................................4

INTRODUCTION
Trademark is a symbol, word or logo that is legally registered in order to represent a
company1. Two different case scenario will be discussed in the report considering sound track
trademark for tables and shape it for Booties. The report makes comprehensive discussion on
basic registrability of any mark. Further, to make the assessment concrete, a brief discussion will
be made on absolute and relative ground of refusal. At the end, report will focus on Nice
classification of goods for each trade mark.
TRADEMARKS FOR JINGLE PRODUCED BY 'TABLEX'
Trademark is a sign or symbol which is used to have a separate identity from that of other
distributors. Hence, in order to achieve this objective, a different sign, symbol, tune, rhyme or
jingle is created by the entity2. It helps in protecting brand or jingle to be copied by other
enterprise and hence the right to use it is only owned by company in which trademarks have been
registered. Tablex is a laptop producing company that has developed its own jingle so that firm
can market its product appropriately. However, in order to protect the jingle from being copied
by any other company, it needs to follow a certain process through which it can be protected.
Basic registrability
One can achieve registration of its trademark through Intellectual Property Office
(UKIPO). The main objective of UK Intellectual Property Office (UKIPO) is to acess that
whether the slogan or symbol can be issued for rights or not as per the specified law. Further,
exclusive rights are given to the owner of trademark which helps in protecting the unauthorised
use of mark on the products or using similar logo, symbol or jingle for the same3.
The laws of trademark followed in United Kingdom are not limited to anyone. Further,
Any entity whether it is a sole proprietorship, corporate, partnership or any incorporated
individual can get its logo, slogan, signature words or jingle registered. The trademark Act 1994
is followed as amended in current law which helps in covering registration of trademark and
1 . Kim, Y. K. and et.al., 2012. Appropriate intellectual property protection and economic
growth in countries at different levels of development. Research policy. 41(2). pp.358-375.
2 . Bently, L. and Sherman, B., 2014. Intellectual property law. Oxford University Press,
USA.
3 . Horspool, M. and Humphreys, M., 2012. European Union Law. Oxford University Press.
1

protecting them from its misuse. The validity of registration is for 10 years from registration
date and in order to continue same, the company has to re-register in the trademark for the same
logo and jingle. A basic process of registration is followed which can also be adopted by Tablex
in order to get its jingle for laptop marketing registered under Trademark Act of UK. A certain
process has to be followed by the individual or the company in order to get itself registered under
trademark. It takes around three and a half to four months to get the whole process done for
trademark. The duration can then get increased as and when the objection regarding trademark
gets elevated.
A sound track can also be trademarked in the UK where sound is used to uniquely
identify origin of commercial. It is common practice that is adopted by organizations in the
current market place4. The issue was primarily addressed by World Trade Organization
Agreement on Trade Related Aspects of Intellectual Property Rights which helped in broadening
the definition of trademark from symbols to soundtracks as well in article 15(1) of Trade Mark
Act of UK5.
The trademark must be distinct enough so that it can be registered under the trade mark
act. The below mentioned process can be used by Tablex before making application for its own
jingle:
 Step 1: It is important to check whether brand has already been registered or not before
application is sent to office.
 Step 2: Tablex can search the data base of trademark before applying for trademark
registration.
 Step 3: Company can also take permission from the establishment on whose name
trademark has already been registered. If a written permission is provided by company
then in that case, jingle can be registered in the name of Tablex as well.
 Step 4: The owner then issue letter of consent to Tablex so that it can be sent to IP office
with application of trademark registration.
4 Trade Mark Act. 1994. [Online]. Available through <
https://www.legislation.gov.uk/ukpga/1994/26/contents>.
5 . Waelde, C. and et.al., 2013. Contemporary intellectual property: Law and policy. Oxford
University Press.
2

 Step 5: Trademark Attorney can also be used by Tablex to assist in the process of
searches and registration6.
After the approval received from IP office, the government gazette then publish the same.
It is important that no opposition is received from side of general public otherwise, trademark
will not be considered as registered and the stated application will get cancelled.
The Intellectual Property Act, prohibits registration of marks which are identical or quite
similar to marks or trade names that have already been registered. Hence, the jingle produced by
Tablex must be new and not coincide with any other jingle that is already existing. Further,
translation, transliteration or transcription to the existing marks are also treated as similar to the
third party. Thus, it is immaterial that whether the rights have been registered in UK or not.
Absolute grounds of refusal
There are various absolute grounds of refusal based on which application for registration
of trademark by the applicant can get cancelled. These grounds need to be considered by Tablex
before opting for any jingle for company7. Some of the common grounds issued in Intellectual
Property Act of UK which was issued in 1994 are as follows:
 Incapability of Tablex to distinguish its jingle from any other company's slogan or tune.
 If the words or tune of jingle are commonly used in day to day language or established
practices followed in trade.
 The jingle serves in trade to designate quality, purpose, geographical origin and values.
 The mark does not meet requirements and hence does not lie under definition of
trademark8.
 The trade mark does not carry distinctive characteristics.
 The trade mark must not be offensive for example it must not contain word of mouth and
pornographic content9.
6 . Drahos, P., 2016. A philosophy of intellectual property. Routledge.
7 Trade Mark Act. 1994. [Online]. Available through <
https://www.legislation.gov.uk/ukpga/1994/26/contents>.
8 . Short, M. and et.al., 2013.Strategic environmental assessment and land use planning: an
international evaluation. Routledge.
9 . Trademark Rules 2017- Jingles and chimes can be a sound mark. 2017. [Online].
Available through <http://myvoice.opindia.com/2017/08/trademark-rules-2017-jingles-
and-chimes-can-be-a-sound-mark/>.
3

 Misleading jingle being prepared can get rejected. For instance: company is actually
producing laptops and jingle is talking about mobile phones.
 The jingle must not be similar to the tune and word of national anthem of any country
which can hurt sentiments of a particular community or state.
 The logo of soundtrack must not be similar to flags or hallmarks and must follow all
stated guidelines in World Intellectual Property Organization Guidelines10.
Since, jingle includes a soundtrack, existing trademarks will be checked and tone and
tune must not match with the existing ones. The trademark of Tablex can be registered after all
authentications. All the above stated rules, regulations and guidelines must be followed by
Tablex while designing jingle for company.
Nice classification of goods for each trade mark
Getting the sound trademark registered falls under non-conventional type of trademark
law. Other trademarks in this category include colour it, hologram , motion , scent, shape and
sound trademark.
Nice classification came into function after the establishment of Nice Agreement in 1957.
It helps in giving clear classification of goods and services for the purpose of registration of
trademarks. The list in this classification is updated in every 5 years. The latest 11th version of
classification consists of 34 classes consisting of all standard, nonstandard, non-conventional and
related type of goods and 11 varied classes on services11. The current 11th version of Nice
classification have started its functioning from January 2017. The owner who is seeking
trademark registration can choose class based on which it can proceed with registration process.
Since, the same function of distribution is followed by majority of countries; World Intellectual
Property Organization (WIPO) has specified classification process.
The Nice agreement is open for member countries who are part of “Paris Convention for
Protection of Industrial Property12.” The uniqueness of Nice classification is that it helps in
making filing process easy as same process is adopted by all e countries. As on January 2014,
10 . Apply to register a trade mark. 2017. [Online]. Available through
<https://www.gov.uk/how-to-register-a-trade-mark>.
11 . Kur, A., Planck, M. and Dreier, T., 2013. European intellectual property law: text, cases
and materials. Edward Elgar Publishing.
12 . Hudson, J. and Minea, A., 2013. Innovation, intellectual property rights, and economic
development: a unified empirical investigation. World Development. 46. pp.66-78.
4

there are 84 nations who are the signatory of Nice Agreement who have adopted Nice
classification and hence, follow all rules and regulations, issued by it. Further, there are other 65
non-member countries who are involved in following Nice classification.
The goods and services in Nice classification are accompanied with explanatory notes
providing detailed description of type of goods and services inclusive of their respective classes.
Sound track or jingle trademark is including in class 9 of Nice classification. This class
includes instruments and other non-conventional trademark such as image reproduction,
recoding discs, calculating machines, data processing through equipment and processing,
switching, transforming and controlling activities etc.13. Critically evaluating e fact, Tablex may
not even fall in class 9 since it only talks about reproduction of sound track and not output
received through sound. Further, jingles used bycompanies may be different from the soundtrack
as it can include lyrics as well.
TRADE MARKING SHAPE OF PACKAGING BOTTLE
A company named Booties is planning to keep the shape of bottle in form of male Torso.
Since, it is a men's fragrance 'Macho Balm', it will be able to attract a large number of customers
to it. The shape is already existing for the fragrance b) ‘Le Beau Male’ by Jean Paul Gaultier.
Basic registrability
It is important that the mark which the company wants to get it trademarked is distinctive
enough and must not be possessed by any of entity in market. However, in that scenario, if the
owner of trademark permits that entity, it can proceed with registration process attaching letter of
consent.
In the given case scenario, since, the shape of bottle has already being trademarked by
some other company, Booties cannot opt for registration unless and until letter of consent is
received from Jean Paul Gaultier otherwise, it will get rejected.
Absolute grounds of refusal
Absolute ground of refusal is that it does not fall under the category of trademark
registration. Further, the shape has already been adopted by other company which makes it
13 . Bently, L. and Sherman, B., 2014. Intellectual property law. Oxford University Press,
USA.
5

identical. It can further confuse the consumers. Hence, there are higher chances that entity
cannot get the shape registered under Trade mark Act.
Relative ground of refusal
Relative ground of refusal for trademark registration can be due to conflicts with the prior
itor any other well-known marks. Further, identical or similar marks are relative ground for
refusal of trademark registration14. Hence, in the stated scenario Booties falls under the category
of relative ground of refusal as well. It is due to presence of a company which is already using
this shape for fragrance bottle.
Nice classification of goods for each trade mark
Shape trademark is a non-conventional trademark and hence, does not fall in any of the
class of Nice classification of goods. It is not considered in goods and services. Hence, it is not
included in different classes15. Therefore, no options have been suggested by Nice classification
in case of trademark.
CONCLUSION
Based on the above report, it can be concluded that company that wants to get its jingle
registered must fulfill all the requirements that are being issued in trademark Act 1994. The mark
cannot be registered if it shares any similarity with the existing mark that has already been
registered. Further, it outlined that the mark must carry distinctive features in order to get itself
registered. Hence, before opting for registration process, person must check all important aspect
that can help in acceptance of trademark. It also make a pout regarding Nice classification
established under Nice Agreement in 1957. However, it has also been assessed that shape
trademark or any other non conventional trademark are not included in the classes on Nice
classification.
14 . Waelde, C. and et.al., 2013. Contemporary intellectual property: Law and policy. Oxford
University Press.
15 . Registration of sounds as trademark. 2017. [Online]. Available through
<http://www.lawinfowire.com/articleinfo/registration-sounds-as-trademark>.
6

REFERENCES
Books and Journals
Bently, L. and Sherman, B., 2014. Intellectual property law. Oxford University Press, USA.
Drahos, P., 2016. A philosophy of intellectual property. Routledge.
Horspool, M. and Humphreys, M., 2012. European Union Law. Oxford University Press.
Hudson, J. and Minea, A., 2013. Innovation, intellectual property rights, and economic
development: a unified empirical investigation. World Development. 46. pp.66-78.
Kim, Y. K. and et.al., 2012. Appropriate intellectual property protection and economic growth in
countries at different levels of development.Research policy. 41(2). pp.358-375.
Kur, A., Planck, M. and Dreier, T., 2013. European intellectual property law: text, cases and
materials. Edward Elgar Publishing.
Short, M. and et.al., 2013.Strategic environmental assessment and land use planning: an
international evaluation. Routledge.
Waelde, C. and et.al., 2013. Contemporary intellectual property: Law and policy. Oxford
University Press.
Online
Apply to register a trade mark. 2017. [Online]. Available through <https://www.gov.uk/how-to-
register-a-trade-mark>.
Registration of sounds as trademark. 2017. [Online]. Available through
<http://www.lawinfowire.com/articleinfo/registration-sounds-as-trademark>.
Trademark Rules. 2017- Jingles and chimes can be a sound mark. 2017. [Online]. Available
through <http://myvoice.opindia.com/2017/08/trademark-rules-2017-jingles-and-chimes-
can-be-a-sound-mark/>.
Trade Mark Act. 1994. [Online]. Available through <
https://www.legislation.gov.uk/ukpga/1994/26/contents>.
7