The Canadian Intellectual Property Office (CIPO) announced
yesterday that, effective immediately, applications for the
registration of trademarks consisting of sounds will be accepted.
This announcement signals the reversal of long-standing CIPO policy
and follows the recent order of the Federal Court in an appeal of
CIPO's decision to refuse an application filed by
Metro-Goldwyn-Mayer Lion Corp (MGM) to register its "Roaring
Lion" sound mark. The Court's order, made with CIPO's
consent, set aside CIPO's refusal and directed MGM to provide
CIPO with a digital recording of the mark.
The application for the Roaring Lion sound mark (No. 714314) was
advertised for opposition yesterday, and a recording of the sound
mark can be accessed through a special section of the CIPO
Trade-marks Database (a link to which is currently on the
Database's home page). However, the Database cannot currently
be searched for sound marks.
CIPO's Practice Notice of yesterday's date states that
an application for the registration of a sound mark should: (1)
state that it 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. The electronic recording must be in MP3 or WAVE
format, less than 5MB in size, and on a CD or DVD. Applications for
sound marks may only be submitted by way of paper application. A
sound mark considered to be functional and/or clearly descriptive
or deceptively misdescriptive will be objected to under section
12(1)(b) of the Trade-marks Act (Act), but such an
objection could be overcome by filing evidence showing that the
sound mark has acquired distinctiveness.
CIPO had objected to the application for the Roaring Lion sound
mark on the basis that it did not meet the requirements of section
30(h) of the Act, which requires that an application for
registration of a trademark other than a word mark contain a
drawing of the mark and "such number of accurate
representations of the trademark as may be prescribed." CIPO
had taken the position that non-visual marks could not be
accurately represented by visual means such as drawings. However,
CIPO has long been considering modernizing its treatment of
non-traditional marks, and, in February 2012, asked for comments on
proposed amendments to the Regulations accommodating the
registration of sound and other non-traditional marks (which, we
note, would not have addressed the hurdle created by section 30(h)
of the Act.) The requirements for sound mark applications set out
in yesterday's Practice Notice mirror the proposals with
respect to sound marks. Given that any amendment to the Regulations
may be months or years away, yesterday's announcement is
welcome news for brand owners interested in protecting sound marks
Brand owners that use sound marks or are considering adopting
such marks are encouraged to contact us for further advice
regarding the registration of such marks, and other implications of
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guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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