Canadian Trade-mark Practice Roars into a New Age: Sound Marks Now Registrable in Canada

On March 28, 2012, the Canadian Trade-marks Office (TMO) announced that it will be accepting sound mark applications effective immediately. On the same day, the TMO published the first advertisement of a Canadian sound mark application in the Canadian Trade-marks Journal at page 2 – application No. 714314 for MGM’s roaring lion sound mark, filed on October 6, 1992 claiming motion picture related wares and services. That application was finally refused by the TMO on October 10, 2010 and an appeal to the Federal Court of Canada was lodged on October 12, 2010. It appears that CIPO’s new policy is the result of a March 1, 2012 Federal Court order in that appeal, directing the advertisement of that application.  The TMO consented to that order, which is not surprising, given that the TMO announced proposed amendments to the Trade-marks Regulations on February 23, 2012 allowing the registration of sound marks in Canada, as well as motion and holographic marks.

The TMO’s Practice Notice on sound marks states that a Canadian sound mark 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 in MP3 or WAVE format recorded on a CD or DVD, with a maximum file size of 5MB. The TMO will not accept recordings on other media types, or recordings accessible via a hyperlink or streaming location.

The TMO will not accept sound mark application through its online filing system. As sound mark applications can only be submitted in paper form, the government application fee is marginally higher ($300 CDN filing fee for a paper application, vs. $250 filing fee for an online application).

Predictably, sound marks will be examined using the same criteria as other trade-marks. This means that the TMO will object to sound marks it considers functional and/or or clearly descriptive or deceptively misdescriptive. However, such marks may still be registrable on the basis of acquired distinctiveness in Canada or registration and acquired distinctiveness abroad.

It remains to be seen whether applicants will take advantage of Canada’s first foray into non-traditional marks.

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