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:
a) state that the application is for the registration of a sound mark;
b) contain a drawing that graphically represents the sound;
c) contain a description of the sound; and
d) 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 application.
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 proceedings.
The acceptance of the sound marks is no doubt the first step in a much anticipated revision of the Trade-marks Regulations.