In a reversal of its long held position, the Canadian Intellectual Property Office (CIPO) has announced that it is now accepting applications to register sounds as trade-marks. Yesterday’s announcement was the culmination of 20 years of effort by Metro-Goldwyn-Mayer Studios Inc. (MGM) to obtain Canadian trade-mark protection for the sound of a roaring lion that precedes most, if not all, of their film productions.
By way of background: since the early 1990s CIPO has refused all applications for sound marks in Canada for two primary reasons. First, CIPO pointed to the Trade-marks Act which requires each application for a mark, other than a word mark, to contain “a drawing of the trade-mark and such number of accurate representations of the trade-mark as may be prescribed”. On this basis, CIPO suggested that a sound mark could not be “drawn”, and was therefore not proper subject matter for a trade-mark application.
Second, CIPO took cue from a 1987 decision of the Federal Court which found that a mark was not “used” through mere oral utterance alone; a mark had to be capable of being seen. Together, these two considerations led CIPO to conclude that sound marks were not registrable in Canada.
CIPO has now changed its tune and has announced its willingness to accept applications for sound marks. CIPO’s new policy provides that such applications should:
- state that the application is for the registration of a sound mark;
- contain a drawing that graphically represents the sound;
- contain a description of the sound; and
- contain an electronic recording of the sound.
This is an important development for users of the Canadian trade-mark system: traders who have long used sound as a means to distinguish their goods and services from their competitors – like MGM and its use of the lion’s roar – appear at last to be able to obtain national protection for their marks. The newfound registrability of sound marks is also likely to spur new uses of distinguishing sounds in the Canadian marketplace as well.
More broadly, it must be noted that this change occurs in the context of recent (and still outstanding) consultations on a number of proposed modernizations to the Trade-marks Regulations, including plans to permit registration of other non-traditional marks, including motion marks and holograms.
Despite this period of flux, the song remains the same: traders who have invested in developing a distinct brand in the marketplace must take steps to protect and police that asset. The newfound ability to register sound marks in Canada provides one more avenue to do so.