The Canadian Intellectual Property Office has announced that,
effective immediately, it will accept applications for sound
This announcement comes at the end of a 20-year battle for
Metro-Goldwyn-Mayer to register its iconic roaring lion sound. The
application was filed in 1992. It was rejected, not because of a
policy against sound marks, but rather because the application did
not meet the formal requirements of the Trade-marks Act.
Specifically, section 30(h) of the Act requires that unless the
application is for words or words in a special form, the
application must include "a drawing of the trade-mark and such
number of accurate representations of the trade-mark as may be
MGM appealed the decision to the Federal Court of Canada. Before
a hearing on the merits, the Office consented to an order allowing
the appeal and directing that the application be advertised for
The practice direction will be welcome news to the increasing
number of trademark owners who have embraced sonic branding. Sonic
branding (the use of sound to reinforce brand identity) is not new
– NBC has been using the three-note chime of G-E-C in its
broadcasts for over 50 years – however it is becoming
more valuable as companies are looking for branding that can be
used across different media platforms. Unlike logos, sound marks
can be equally used in radio, television and on-line advertising.
Another benefit of sound marks is that they do not require
translation when used in different countries. The five notes used
in McDonald's "I'm lovin' it" campaign and
the Intel chime demonstrate the strong brand association that can
be made with a sound mark.
Confirmation that sound marks may now be registered with the
Canadian Intellectual Property Office is a welcome and positive
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The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
Last year we saw the Canadian Courts release trademark decisions that granted a rare interlocutory injunction, issued jailed sentences for failure to comply with injunctive relief, grappled with trademark and internet issues...
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