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CIPO Comes Roaring into the Present: Sound Marks are now Registrable in Canada

April 26, 2012

The Canadian Intellectual Property Office (CIPO) has announced that, effective immediately, applications for the registration of trademarks consisting of sounds will be accepted. This announcement signals the reversal of long-standing CIPO policy and follows the recent order of the Federal Court in an appeal of CIPO’s refusal of an application filed by Metro-Goldwyn-Mayer Lion Corp (MGM) to register its “Roaring Lion” sound mark (No. 714314). The Court’s order, made with CIPO’s consent, set aside CIPO’s refusal and directed MGM to provide CIPO with a digital recording of the mark.

The application for the “Roaring Lion” mark was filed in October 1992, and pursuant to the Court’s order, was finally advertised for opposition on March 28, 2012. A recording of the sound mark can be accessed through a special section of the CIPO Trade-marks Database (a link to which is currently on the Database’s home page). However, the Database cannot currently be searched for sound marks.

CIPO’s Practice Notice of March 28, 2012 states that an application for the registration of a sound mark should: (1) state that it is for the registration of a sound mark, (2) contain a drawing that graphically represents the sound, (3) contain a description of the sound, and (4) contain an electronic recording of the sound. The electronic recording must be in MP3 or WAVE format, less than 5MB in size, and on a CD or DVD. Applications for sound marks may only be submitted by way of paper application. A sound mark considered to be functional and/or clearly descriptive or deceptively misdescriptive will be objected to under section 12(1)(b) of the Trade-marks Act (Act), but such an objection could be overcome by filing evidence showing that the sound mark has acquired distinctiveness.

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 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, CIPO has long been considering modernizing its treatment of non-traditional marks, and, in February 2012, asked for comments on proposed amendments to the Trade-marks Regulations (Regulations) accommodating the registration of sound and other non-traditional marks (which, we note, would not have addressed the hurdle created by section 30(h) of the Act). The requirements for sound mark applications set out in the March 28th Practice Notice mirror the proposals with respect to sound marks. Given that any amendment to the Regulations may be months or years away, this new Practice Notice is welcome news for brand owners interested in protecting sound marks in Canada.

Brand owners that use sound marks or are considering adopting such marks are encouraged to contact us for further advice regarding the registration of such marks, and other implications of the new Practice Notice.

Jonathan Burkinshaw, B.A., M.A., J.D., is an associate lawyer in Bereskin & Parr LLP's Trademark practice group. He can be reached in Toronto at 416.957.1623 or jburkinshaw@bereskinparr.com.

Cynthia Rowden, B.A., LL.B., is a partner and the leader of Bereskin & Parr LLP's Trademark practice group. She can be reached in Toronto at 416.957.1617 or crowden@bereskinparr.com.

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Author(s):

Jonathan Burkinshaw Jonathan Burkinshaw
B.A., M.A., J.D.
Partner
416.957.1623  email Jonathan Burkinshaw