A recent Federal Court decision and change in Trademarks Office policy have paved the way for sound marks in Canada.
Trademarks allow consumers to distinguish a vendor's goods and services from those of others. Typically, traditional trademarks are displayed on goods and in connection with advertising in the forms of words, phrases and designs.
In addition to these traditional trademarks, sounds and combinations of sounds can also be powerful indicators of source. Notable examples of registered sound trademarks in the United States include the INTEL chimes used to promote PENTIUM processors, the LOONEY TUNES theme song, the NBC chimes and the opening bell of the NEW YORK STOCK EXCHANGE, all of which can be heard at the following link from the United States Patent and Trademark Office: http://www.uspto.gov/web/offices/ac/ahrpa/opa/kids/kidsound.html.
In Canada, Smart & Biggar successfully registered the first sound mark over 20 years ago (Registration No. TMA359,318) on behalf of Capital Records Inc. This sound mark, now cancelled for non-renewal, was for the sound at the beginning of an audio tape. It is represented as 11 music notes as follows:
However, since the registration of this sound mark and until recently, the Canadian Trademarks Office took the position that a sound cannot be represented visually and therefore does not fall within the definition of a "trademark" under section 2 of the Trademarks Act. Accordingly, the Trademarks Office had refused to register any other sound marks, including a noteworthy sound mark owned by Metro-Goldwyn-Mayer (MGM).
Filed in 1992, MGM's sound mark application depicts a lion's roar, as can be heard at the beginning of many MGM movies. This application was rejected by the Trademarks Office in 2010. MGM appealed the rejection to the Federal Court.
On March 28, 2012, on consent of both MGM and the Registrar, the Federal Court issued an order stipulating that MGM's sound mark was to be advertised for opposition purposes. The Court did not provide any discussion of the law.
On the same day, the Canadian Trademarks Office changed its longstanding position by issuing a practice notice indicating that sound marks are now registrable. In the new practice notice, the Trademarks Office states that an application for the registration of a sound mark 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.
The practice notice also indicates that the Trademarks Office may raise objections if the sound mark is functional, clearly descriptive or deceptively misdescriptive. However, it remains unclear as to when a sound mark would be considered to fall into these categories.
The recent change in the policy of the Canadian Trademarks Office described above brings its policy in line with the position of many other countries that recognize sounds as proper subject matter for trademark registrations. These countries include the United States, the European Union and Australia.
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