In a previous
IP monitor, we reported that CIPO was inviting consultation on
proposed amendments to the Trade-mark Regulations to
accept, among other things, applications for sound marks which
traditionally have not been allowed in Canada.
On March 28, 2012, CIPO issued a practice notice stating that in
view of a recent Federal Court order, effective immediately, the
Trade-marks Office will accept applications for sound marks.
The practice notice dictates that the application for a
registration of trade-mark consisting of a sound should:
state that the application is for the registration of a sound
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 specifies that sound mark applications
cannot be filed electronically and must be accompanied by a CD or
DVD with the sound mark in MP3 or WAVE format of no greater than 5
Today's notice comes on the heels of a recent change of
heart by the Registrar in a lengthy dispute between
Metro-Goldwyn-Mayer Lion Corp ("MGM") and the Registrar
in relation to MGM's attempts to register the sound only
portion of MGM's roaring lion as a trade-mark.
In written submissions on a motion for consent judgement to the
Federal Court, the Department of Justice argued on behalf of the
Registrar that the Registrar erred in its findings that MGM's
application, by including, inter alia, a visual
representation, an audio recording, and a written description of
the sound, did not satisfy the drawing requirement in 30(h) of the
For fuller details and the specifics of the revised practice,
please visit this link to the CIPO website:
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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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