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
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
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
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
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.
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