The Canadian Intellectual Property Office has announced that, effective immediately, it will accept applications for sound marks.
This announcement comes at the end of a 20-year battle for Metro-Goldwyn-Mayer to register its iconic roaring lion sound. The application was filed in 1992. It was rejected, not because of a policy against sound marks, but rather because the application did not meet the formal requirements of the Trade-marks Act. Specifically, section 30(h) of the Act requires that unless the application is for words or words in a special form, the application must include "a drawing of the trade-mark and such number of accurate representations of the trade-mark as may be prescribed."
MGM included the following spectrogram of the roar in the application, as well as an audio recording. The spectrogram was not considered to be an accurate representation of the mark; the application was rejected.
MGM appealed the decision to the Federal Court of Canada. Before a hearing on the merits, the Office consented to an order allowing the appeal and directing that the application be advertised for opposition purposes.
The practice direction will be welcome news to the increasing number of trademark owners who have embraced sonic branding. Sonic branding (the use of sound to reinforce brand identity) is not new – NBC has been using the three-note chime of G-E-C in its broadcasts for over 50 years – however it is becoming more valuable as companies are looking for branding that can be used across different media platforms. Unlike logos, sound marks can be equally used in radio, television and on-line advertising. Another benefit of sound marks is that they do not require translation when used in different countries. The five notes used in McDonald's "I'm lovin' it" campaign and the Intel chime demonstrate the strong brand association that can be made with a sound mark.
Confirmation that sound marks may now be registered with the Canadian Intellectual Property Office is a welcome and positive step.
Please note that this publication presents an overview of notable legal trends and related updates. It is intended for informational purposes and not as a replacement for detailed legal advice. If you need guidance tailored to your specific circumstances, please contact one of the authors to explore how we can help you navigate your legal needs.
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Bennett Jones