The Canadian Intellectual Property Office (CIPO) has issued a
new practice notice pursuant to a recent groundbreaking Federal
Court Order. Effective March 28, 2012, the Trade-marks Office will
accept applications for sound marks.
The Office can only accept a recording of the sound in MP3 or
WAVE format, limited to 5 megabytes in size, and recorded on a CD
or DVD. Other types of recording media and references to a
hyperlink or a streaming location will not be accepted.
The application for the registration of a 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 criteria for assessing the distinctive character of a sign
which consists of a sound are no different from those to be applied
for conventional marks. A sound mark should be capable of
distinguishing the goods and services of the applicant.
Sounds which serve in trade to designate the kind, quality,
function or other characteristics of the goods or services cannot
be accepted. A sound trade-mark cannot be functional and/or clearly
descriptive of deceptively misdescriptive of the goods and services
of the application.
However, the Registrar is willing to review applications filed
on the basis of acquired distinctiveness. If the applicant can
demonstrate, typically by reference to evidence of use, that
consumers in the marketplace exclusively associate the sound mark,
as used in connection with the identified goods and services with
the trade-mark owner, the Registrar would most likely recognized
the acquired distinctiveness of a sound and approve the
MGM's roaring lion is Canada's first sound mark
application was advertised on March 28, twenty years after the
filing of the application. It will be interesting to see whether
trade-mark owners will race to the Trade-marks Office to get their
applications on file.
The trade-mark community will no doubt monitor whether the
Trade-marks Office will accept non-distinctive sound combined with
other distinctive elements such as words or designs.
The filing of sound marks may also give way to copyrights issues
which could probably be dealt with at the opposition
The acceptance of the sound marks is no doubt the first step in
a much anticipated revision of the Trade-marks Regulations.
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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