At last! CIPO starts accepting sound mark applications

Pursuant to a recent groundbreaking Federal Court order, the Canadian Intellectual Property Office has issued a new practice notice stating that as of 28th March 2012, the Trademarks Office is accepting applications for sound marks.

The office can accept only 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 trademark consisting of a sound should: 

• State that the application is for the registration of a sound mark.
• Contain a drawing that represents the sound graphically.
• Contain a description of the sound.
• Contain an electronic recording of the sound.

The criteria for assessing the distinctive character of a sign consisting 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 trademark cannot be functional or clearly descriptive 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 trademark owner, the registrar would likely recognise the acquired distinctiveness of a sound and approve the application.

Canada's first sound mark application – MGM’s roaring lion – was advertised on 28th March 2012, 20 years after the filing of the application. It will be interesting to see whether trademark owners will race to the Trademarks Office to file their applications.

The trademark community will no doubt monitor whether the Trademarks Office will accept non-distinctive sound combined with other distinctive elements such as words or designs.

The filing of sound marks may also give rise to copyright issues, which could probably be dealt with at opposition proceedings.

The acceptance of sound marks is no doubt the first step in a much-anticipated revision of the Trademarks Regulations.