The Canadian Intellectual Property Office (CIPO) has issued new guidelines for applications to register sound marks effective immediately. Companies that use or wish to use sound to distinguish their goods or services can now protect such sounds under trade-mark law.
The decision to issue guidelines follows an eighteen year dispute with Metro-Goldwyn-Mayer Lion Corporation (MGM), which sought to register the distinctive roar of Leo the Lion in 1992. MGM’s application was rejected by the CIPO on that basis that the applicant did not meet the formal requirements for including “a drawing of the trade-mark and such number of accurate representations of the trade-mark as may be prescribed.” MGM had included a spectrogram of the lion’s roar, as well as audio and video tapes of the roaring lion. MGM appealed the decision to the Federal Court of Canada. Prior to a hearing on the merits, the CIPO consented to an order allowing the appeal and directing the CIPO to approve the trade-mark application for advertising.
The new guidelines require that an application for registration of sound marks must: (a) state that it 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 recording of the sound must in MP3 or WAVE format and is limited to 5 megabytes in size.
Canada now joins other jurisdictions such as the United States, the U.K., the European Union, New Zealand, India and Australia in allowing sound trade-marks. Sound marks have the advantage of transcending language and culture. The increasing use of digital technologies and media in marketing provides opportunities for the development of sound marks. Sound marks are also of cultural and historical significance and allow organizations involved in these areas (such as First Nations, environmental and other such organizations) to creatively use sound marks to protect goods and services originating from such organizations.