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KNOWLEDGE CENTRE

Leave Your (Sound) Mark: Trade-marks consisting of a sound now permitted

April 2012

On March 1, 2012, the Federal Court set aside a decision of the Registrar of Trade-marks which refused a sound trade-mark application by Metro-Goldwyn-Mayer Lion Corp. consisting of the sound of a lion roaring. The basis of the Registrar’s decision to refuse the application was that the mark did not meet the requirements with respect to the contents of an application, as set out at Section 30 of the Trade-marks Act (the “Act”). With the consent of the parties and after consideration of the Registrar’s written representations, the Federal Court set aside this decision and approved the trade-mark for advertisement in the Canadian Trade-marks Journal.

Subsequently, on March 28, 2012, the Canadian Intellectual Property Office (“CIPO”) issued a practice notice advising that, effective immediately, CIPO would accept applications for the registration of sound trade-marks.

Requirements of a sound mark application

In the practice notice, CIPO provided some guidance with respect to filing an application to register a sound mark. Not surprisingly, the practice notice is consistent with CIPO’s proposed amendments to the Trade-marks Regulations which  also set out the requirements of a sound mark application. The consultation period for the proposed regulations is currently open and will close on April 23, 2012.

The practice notice provides that a sound mark application should clearly state that the registration of a sound mark is sought. Moreover, the application for a sound mark should contain the following:

  • A drawing that graphically represents the sound;
  • A description of the sound: and
  • An electronic recording of the sound.

The electronic recording of the sound:

  • Must be in MP3 or WAVE format;
  • Must be limited to 5 MB in size;
  • Must be recorded on a CD or DVD;
  • Should not contain any looping or repetition of the sound; and
  • Should only be submitted at the time of filing and need not be resubmitted with a revised application.

The provisions of the Act will apply equally to applications for sound marks. For instance, CIPO will raise an objection, pursuant to Section 12(1)(b) of the Act, where the sound mark is considered to be functional, clearly descriptive or deceptively misdescriptive of the character or quality of the wares or services in association with which the sound mark is used. However, the sound mark may still be registerable pursuant to Sections 12(2) or 14 of the Act, where the sound mark has been used in Canada to the point of becoming distinctive at the date of filing the application or where the sound mark has been duly registered outside of Canada and meets the other requirements set out in Section 14.

At this time, applications for a sound mark can only be made by way of paper application. Filing through CIPO’s online filing system is not available.

CIPO’s practice notice on trade-marks consisting of a sound can be viewed at:

http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03439.html

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