A recent ruling of the Federal Court has allowed for the Canadian registration of a sound mark by Metro‐Goldwyn‐Mayer Lion Corp. consisting of the well‐known lion roar. Sound marks are a form of a trade‐mark which uses sound to distinguish one’s wares and services from the wares and services of others.
In response to the Court Order, the Canadian Intellectual Property Office (“CIPO”) has begun accepting registration of sound marks and has posted guidelines on their website for sound mark applications.1 CIPO has also made an electronic database available where sound mark applications can be viewed and the sound mark can be listened to.2
The CIPO guidelines state that an application for the registration of a sound mark should:
- 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.
Note that sound marks are held to the same standards as trade‐marks and objections may be raised under s.12 (1)(b) of the Trade‐marks Act if the sound mark is functional and/or clearly descriptive or deceptively misdescriptive.
Applications for sound marks can only be submitted by paper application and not electronically. Further, an electronic recording of the sound mark must be submitted at the time of filing in MP3 or WAVE format (5 Mb or less), without any looping or repetition of the sound, and recorded on a CD or DVD. CIPO will not accept hyperlinks to a sound file or streaming location.