Sound marks roar to life

Canada

The Canadian Intellectual Property Office (CIPO) has announced that it is now accepting applications to register sound marks and has set forth the criteria for sound mark applications. This is a major new development in Canadian trademark law after a two-decade-long battle over the 'roaring lion' sound mark of Metro-Goldwyn-Mayer (MGM).

MGM applied to register the 'roaring lion' sound mark in 1992 based on use in Canada since 1928, and use and registration in the United States in association with:

  • motion pictures films and pre-recorded video tapes;
  • motion picture services and entertainment services by distribution of motion pictures; and
  • entertainment services - namely, production and distribution of motion pictures and providing film and tape entertainment for viewing through the media of television, cinema and other media.

The mark was visually represented as follows:

In addition, MGM filed a cassette tape with a recording of the sound.

CIPO refused the application on August 10 2010. Interestingly, in refusing the application, CIPO did not reject the concept of a sound mark as a trademark; rather, CIPO focused on the technical issue of how to provide an accurate representation of a sound mark. CIPO took the position that the drawing was not an accurate representation of the mark, but the decision made no mention of the sound recording submitted with the application.       

MGM appealed the refusal to the Federal Court and the appeal was allowed on the basis of a consent motion made by the attorney general of Canada. Again, there was no issue on the appeal as to whether or not a sound mark was a trademark; instead, the focus appears to have been on the failure of CIPO to consider the suitability of the sound recording. 

The attorney general took the position on the appeal that CIPO had erred in concluding that there was no accurate representation of the mark. The attorney general noted that the purpose of the accurate representation requirement is so that public notice is given of the scope of the right being sought by the applicant. That being so, the attorney general concluded that CIPO ought to have accepted the visual representation of the mark in combination with the other material submitted by the applicant, including the sound recording. On the basis of the attorney general’s submissions, the Federal Court issued a consent order in the following terms:

  • the decision of the registrar of trademarks was set aside;
  • the application was approved for advertisement in the Canadian Trademarks Journal; and
  • MGM was to provide a digital file containing the actual sound mark in mp3 or other agreeable electronic format prior to advertisement of the application.

Pursuant to the order, the application was advertised on March 28 2012.

Following from the court order, CIPO has now issued a practice notice dated March 28 2012 governing applications for sound marks. The notice provides that such applications shall contain:

  • a statement that the application is for the registration of a sound mark;
  • a drawing that graphically represents the sound;
  • a description of the sound; and
  • an electronic recording of the sound.

In terms of the electronic recording, CIPO requires a recording of the sound in mp3 or WAVE format, limited to 5 megabytes in size, and recorded on a CD or DVD. CIPO will not accept other types of recording media or references to a hyperlink or a streaming location.

While this is an important development for trademark owners, it should be kept in mind that a sound mark must still satisfy the requirements of use in Canada as defined by the Trademarks Act. In other words, for a sound mark to be in use in association with goods and or services, the following criteria need to be met:

  • A trademark is deemed to be used in association with goods if, at the time of the transfer of the property in, or possession of, the goods, in the normal course of trade, it is marked on the goods themselves or on the packages in which they are distributed, or it is in any other manner so associated with the goods that notice of the association is then given to the person to whom the property or possession is transferred.
  • A trademark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.

It is expected that owners of sound marks in Canada will be looking to register their marks now that CIPO has cleared the way. This decision may also pave the way for CIPO to accept other types of non-traditional marks.

Robert A MacDonald and Monique M Couture, Gowling Lafleur Henderson LLP, Ottawa

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