On March 28, 2012, the Canadian Intellectual Property Office (CIPO) announced the immediate acceptance of sound mark trademark applications. On the same day, the CIPO published in the Canadian Trade-marks Journal
the first advertisement of a Canadian sound mark application: Application No. 714314, for MGM’s roaring lion sound mark. That application was filed on October 6, 1992, claiming motion picture–related wares and services. MGM’s application registered July 31, 2012.
The CIPO had refused MGM’s application on October 10, 2010. MGM appealed the refusal to the Federal Court of Canada two days later. It appears that the CIPO’s new policy resulted from a March 1, 2012, Federal Court order in the MGM appeal that directed the advertisement of MGM’s application. The CIPO consented to that order. This is not surprising, given that on February 23, 2012, the CIPO had announced proposed amendments to the Trade-marks Regulations, which, if enacted, would permit the registration of sound marks, as well as motion and holographic marks, in Canada.
Per the CIPO’s sound marks Practice Notice, issued on February 28, 2012, a Canadian sound mark application 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 in MP3 or WAVE format recorded on a CD or DVD, with a maximum file size of 5MB. The CIPO will not accept recordings on other media types, or recordings accessible via a hyperlink or streaming location.
At present, CIPO is not accepting sound mark applications through its online filing system. As sound mark applications can be submitted only in paper form, the government application fee is marginally higher ($300 CDN filing fee for a paper application, versus $250 CDN filing fee for an online application).
Sound marks will be examined using the same criteria as for other trademarks. This means that the CIPO will object to sound marks it considers functional and/or clearly descriptive or deceptively misdescriptive. However, such marks may still be registrable on the basis of acquired distinctiveness in Canada or registration and acquired distinctiveness abroad.
For proponents of nontraditional marks, this Canadian practice development may be a positive one. As of this writing, 14 sound mark applications have been filed with the CIPO since it began accepting such applications. Ultimately, it remains to be seen whether a significant number of brand owners will utilize Canada’s first foray into nontraditional marks in an attempt to protect their brands.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2012 International Trademark Association