Two decades ago, Smart & Biggar was successful in registering Canada's first and only sound mark. The registration, TMA 359,318, now cancelled for non-renewal, was for the sound at the beginning of an audio tape. Since that time, and until this week, the Trade-marks Office has refused to register any other sound marks, on the basis that a sound is not visual and therefore does not fall within the definition of a "trade-mark" under section 2 of the Trade-marks Act.
Although the definition of a "trade-mark" in the Trade-marks Act has not been amended, the Trade-marks Office has changed its position by issuing a practice notice on March 28, 2012, indicating that sound marks are now registrable. The practice notice mentions that the change in practice is as a result of a recent court order issued on consent. In that case, the applicant appealed a decision of the Trade-marks Office refusing an application to register the familiar roar of the MGM lion, which can be heard at the following link: http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03433.html.
In the court order, the Federal Court of Canada stipulated that the mark was to be advertised for opposition purposes. The court order did not provide any discussion of the law or the inherent registrability of sound marks.
In the new practice notice, the Trade-marks Office has required that an application for sound marks must:
- 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.
The practice notice also specifies that objections will be raised in cases where the sound mark is considered to be functional or either clearly descriptive or deceptively misdescriptive. However, the practice notice does not provide any guidance as to when a sound mark will be considered to be functional, clearly descriptive or deceptively misdescriptive.
The practice notice appears at the following link: http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03439.html.
Philip Lapin, Ottawa
Updated by: Cheryl Ng, Toronto
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