Jeanette Lee

The Lion Gets The Last Roar: Canadian Intellectual Property Office Now Accepting Sound Mark Applications

In Copyright Law, Entertainment Law, Intellectual Property, Marketing & Advertising Law, Trade-mark Law on March 29, 2012 at 1:13 pm

The Canadian Intellectual Property Office (CIPO) is now accepting sound mark applications.  CIPO released a practice notice on March 28, 2012 that “in view of a recent Federal Court Order, effective immediately, the Office will accept applications for sound marks.”

A Lion’s Tale

The order marks the end of a nearly twenty-year saga of arguments, refusals, extensions and appeals over an application for ROARING LION (SOUND ONLY) by Metro-Goldwyn-Mayer Lion Corp. (i.e. MGM Studios), filed in October 1992.  As of March 28, 2012, the mark has been advertised for opposition purposes. Among the issues had been the technical and procedural concern that marks be represented visually, since the Trade-marks Act requires the applicant to submit a “drawing” of the mark. MGM had submitted a spectrogram of the mark with its original application.  CIPO had taken the position that the spectrogram, a visual representation of the sound, was not an accurate representation of the mark, since the applied for mark was a sound mark and not a design mark.

Sound Mark Applications

Effective immediately, CIPO will now accept applications for the registration of a sound mark. The applications must contain a drawing that graphically represents the sound, a description of the sound, and an electronic recording of the sound. CIPO may refuse to register the sound mark if it is considered to be functional and/or clearly descriptive or deceptively misdescriptive.

To Sound Marks and Beyond?

From a technical perspective, some may argue that this is a step paving the way for protection of other non-traditional marks in Canada.  It will be interesting to see what sound marks are accepted. What will be the level of scrutiny at examination? At what threshold will CIPO determine that a mark is functional or clearly descriptive/misdescriptive?  What level of evidence would be needed to overcome a finding of a functional or clearly descriptive/misdescriptive sound mark?

Meanwhile, creators, producers, filmmakers and those who incorporate the IP of others in their content must stay alert in vetting their clearances and assessing their risks.  Sounds which until now have relied primarily on copyright protection in Canada may soon gain the additional benefit of trade-mark protection through formal registration as sound marks.

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  1. […] has a number of interesting implications for Canadian entertainment lawyers.  As Jeanette Lee points out, once registrations for sound marks start being issued, another element will be added to errors and […]

  2. […] has a number of interesting implications for Canadian entertainment lawyers.  As Jeanette Lee points out, once registrations for sound marks start being issued, another element will be added to errors and […]

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