On March 28, 2012, the Canadian Intellectual Property Office (CIPO) published a Practice Notice entitled "Trade-mark Consisting of a Sound" which provides that, effective immediately, CIPO will accept applications for the registration of sound marks.
Previously, it was the policy of CIPO to refuse applications for
the registration of sound marks on the basis that
Section 30(h) of the Trade-marks Act requires that
"unless the application is for a word or words not depicted in
a special form, a drawing of the trade-mark and such number of
accurate representations of the trade-mark as may be
prescribed".
The recent change in CIPO's practice is an important step in recognizing the registrability of non-traditional marks in Canada and brings CIPO policy in line with the position of many other countries of the world. The new Practice Notice resulted from an appeal by Metro-Goldwyn-Mayer Studios Inc. from the refusal of the Registrar to approve its application to register as a trade-mark the sound of a roaring lion that is familiar to movie goers and movie watchers.
According to the Practice Notice, an application for the registration of a sound mark must:
- state that the application is for the registration of a sound mark;
- contain a drawing that graphically represents the sound;
- contain a description of the sound; and
- contain an electronic recording of the sound.
A sound mark application may only be submitted by way of a paper application, and not through the Office's online filing system. The electronic recording of the sound must be less than 5 megabytes in size and recorded on a CD or DVD in MP3 or WAVE format and should not contain any looping or repetition of the sound.
Alexander's practice focuses on national and international trade-mark law, including trade-mark clearance, prosecution, opposition and litigation, as well as trade-mark portfolio management, licensing, due diligence and the commercialization of intellectual property.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.