Canadian decision on sound marks paves way for future changes 30 Mar 12
The Canadian Intellectual Property Office (CIPO) has announced that it will accept applications for the registration of trademarks consisting of sounds, with immediate effect. With a consultation period on the country’s trademark regulations currently open, future changes to the treatment of non-traditional marks could soon follow.
The announcement follows a 20-year battle by Metro-Goldwyn-Mayer Lion Corp (MGM) to register its ‘roaring lion’ sound mark. The application was first filed in 1992 and was ultimately rejected, as Jonathan Burkinshaw, associate at Bereskin & Parr LLP, explains: “CIPO had objected to the application for the ‘roaring lion’ sound mark on the basis that it did not meet the requirements of Section 30(h) of the Trademarks Act, which requires that an application for registration of a trademark other than a word mark contain a drawing of the mark and ‘such number of accurate representations of the trademark as may be prescribed’. CIPO had taken the position that non-visual marks could not be accurately represented by visual means such as drawings.”
However, the Federal Court set aside the decision and, as a result, MGM’s application has now been advertised for opposition. Yesterday the office published a notice indicating:
“In view of a recent Federal Court order, effective immediately, the office will accept applications for sound marks. The application for the registration of a trademark consisting of a sound should:
a. state that the application is for the registration of a sound mark;
b. contain a drawing that graphically represents the sound;
c. contain a description of the sound; and
d. contain an electronic recording of the sound.”
Reflecting on the move, Shane Hardy, partner at Cassels Brock, told WTR: "Yesterday's announcement is another indicator that CIPO is open to even further changes in the way Canada treats non-traditional marks. CIPO has established a consultation period (ending on April 23) related to proposed changes to Canada's Trademarks Regulations wherein marks related to sounds, holograms and motion marks are gaining traction. The next few months will be critical in determining the pace of change in Canada's application process.”
For now, though, he concludes: “Brand owners that have delayed pursuit of registrations for non-traditional marks in Canada will be certain to take advantage of these changes as we certainly expect to see a significant increase in the number of applications filed."
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