A ground breaking federal Court of Canada decision has allowed for the trademarking of sounds. CIPO (Canadian Intellectual Property Office) has been resistant to sound trademarks and, up until this point, only allowed words or designs to be trademarked, even though many other countries have already allowed for sound to receive the same protection. Because of this, Canada has some catching up to do in this realm, but this ruling can potentially pave the way for other non-traditional trademarks
The decision has come from a long and drawn out court case between Metro-Goldwyn-Mayer (MGM) Studios and CIPO. In 1992 MGM applied to trademark the sound of the lion’s roar that viewers hear before any MGM movie. CIPO, after years of delays, eventually denied the trademark application for MGM’s lion roar and MGM appealed the decision.The case made its way at the federal Court of Canada where MGM won. Because of the ruling, CIPO announced that it will now be accepting sound trademark applications.
Sound trademarks can be considered a kind of “aural brand” in that the sound you hear can instantly trigger the thought of a brand. Besides the MGM lion’s roar, other sounds that have been trademarked by brands in the US include the NBC chimes, the Intel Pentium chord sequence, the 20th Century Fox music and the Harlem Globetrotter’s theme music. However, in Canada the sound trademark does not extend to longer sounds like songs, which would instead be protected by copyright. Sounds like the clip of MGM’s lion roar or the NBC chimes are examples of the types of sounds that CIPO will accept in a trademark application.
To submit a sound mark in Canada, your application must include:
a. a statement that the application is for a sound mark registration;
b. a visual depiction that graphically represents the sound;
c. a description of the sound; and
d. an electronic recording of the sound in MP3 or WAV format or on CD or DVD (5 MB max.)
The recording should not contain any looping or repetition of the sound. Types of media other than listed above, hyperlinks, or streaming locations will not be accepted. SInce this is a new venture for CIPO, currently Nnw applications for sound marks can only be submitted through a paper application, and not by CIPO’s online filing system. You can find more information on sound marks by visiting the CIPO website.