Hear, hear: Canada reverses on TM for sounds

Listen up: The Canadian Intellectual Property Office has issued a  key Practice Notice, announcing that it has begun accepting applications to register sound marks. This abrupt change in Canada’s Intellectual Property Law follows a court ruling related to a 1992 application by MGM Studio Inc. seeking to trademark the lion’s roar heard at the beginning of all MGM movies.  MGM argued identifiers that are sound-based are difficult to represent visually, restricting  consumers’ ability to specifically identify the sound with a product.  Canadian officials had contended that trademarks were limited to the visual representation of brands and their identifiers, not in nontraditional sonic fashion.

The March 28 reverse, after 20 years of extensions and delays, came after Toronto’s IP office refused an MGM application in 2010, that action was appealed in federal court and MGM prevailed.  The latest decision brings Canadian trademark practice in line with other jurisdictions, including the U.S., European Union and Australia.

The Practice Notice on sound marks specifically states that a Canadian application should:

  1. state that the application 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.

Where it is not clear whether an application is intended to cover a sound mark, the Office will ask the applicant for written clarification.

Where a sound mark is considered to be functional and/or clearly descriptive or deceptively misdescriptive, an objection will be raised pursuant to the provisions of paragraph 12(1)(b) of the Trade-marks Act. In such cases, the mark may be registered pursuant to the provisions of subsection 12(2) or section 14 of the Act.

Applications for sound marks will only be accepted on paper and applicants may not use the office’s online filing system.  Further, the agency only will accept sound recordings in specified  formats (MP3 or WAVE) and the file size must not exceed five megabytes recorded onto CD or DVD. Submitted recordings may not include loops or repetitions of the sound.  If applications later must be revised, the recording need not be re-submitted after the initial submission.

“The office will be looking at the rationale and analysis [in the federal court decision, as well as] potentially other types of marks [that] fit within that decision,” said Lisa Power, director general of the office’s trademarks branch. Power stated the  test for granting a sound trademark will be similar to that used with other trademarks.

In MGM’s case, its lion’s roar is used in motion pictures and related commercial areas. It has been a signature of its products in theaters for almost a century.

The United States Patent and Trademark Office provides a “USPTO Kids’ Pages” where it posts sounds that have been offered trademarks.  These include the NBC Chime Jingle,  Time Warner Looney Tunes Theme Song,  Lucas Film THX Logo Sound,  and TiVo Two Pop.

Let’s see, eh, what, legal protections make noise now in the Great North.