It has been a long-standing position of The Canadian Intellectual Property Office that sounds cannot function as trademarks. While many countries in the world recognize and routinely register sound marks, as well other types of non-traditional trademarks, the Canadian Intellectual Property Office's position has been that sound marks cannot be represented in a manner prescribed by the Section 30(h) of The Trade-marks Act, which requires a graphical representation of a mark.
Back in 1992, MGM applied for a sound mark for their lion's roar that had been played at the beginning of their movies in movie theatres since 1928 and later on television. After 18 years of the on-going debate, The Canadian Intellectual Property Office finally refused the application in 2010. MGM appealed and just won the appeal at the Federal Court. MGM's application was finally advertised in the Trade-marks Journal on March 28, 2012.
As a result of this decision, The Canadian Intellectual Property Office published yesterday (March 28, 2012) a Practice Notice, confirming that The Canadian Intellectual Property Office will now start accepting applications for sound trademarks. Sound mark applications will need to:
- 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.
Owners of sound marks, both domestic and foreign, are now encouraged to obtain the trademark protection in Canada for thier trademarks following this change in The Canadian Intellectual Property Office practice.
Please email MBM or call us at 613.567.0762 with any questions or for further information regarding this ground-breaking change in The Canadian Intellectual Property Office practice.