Non-traditional trademarks may appear very differently from traditional trademarks, such as word marks, logos, slogans or figurative marks but the common feature between them is that they all have to meet the requirements in the trademark legislation of being a trademark to get registered and to receive protection.

Lately, according to a news report, Yahoo’s trademark yodel was officially registered as a sound trademark in India. The trademarks office granted India’s first “sound mark” to Sunnyvale, California-based Internet firm Yahoo Inc.’s three-note Yahoo yodel. An application for the same was filed by Yahoo in the Delhi branch of the Trade Marks Registry.

Sounds qualify as marks where a certain sound is associated with a company or its product or services. The four-note bell sound of Britannia Industries is an example. The news also highlighted that 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. IP experts are of the view that the registration of the sound mark Yahoo Yodel will open up new vistas in creation of sound marks to assert brand presence in addition to the acknowledgement, by the Trade Mark Registry, of global realities.

The news report gave an interesting account, reproduced below, of the creation of the sound (Yahoo yodel) and capitalization on it, which is worth reading.

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.

Standards or requirements for obtaining registration of sound trademarks have usually evolved based on the cases prosecuted. With the registration of ‘Yahoo yodel’, the guidelines on registration of sound marks in India, such as adequate graphical representation and evidentiary support demonstrating distinctiveness, have taken off the ground.