Canadian companies have historically relied on unique icons, images, and phrases for brand recognition but now they can add sounds to that list.
On March 28, the Canadian Intellectual Property Office published a Practice Notice entitled “Trade-mark consisting of a sound,” thus effective immediately, CIPO will accept applications for the registration of sound marks.
That means sound can function as a brand and can now be registered as such in Canada. Some iconic sounds associated with top brands include the “Intel Inside” chime or the myriad sounds made by cellphones that have become familiar to their specific brands.
“We need to encourage companies to get their message across in sound because there is no greater medium for communication than sound — it is universal,” says Andrea Rush, a trademark and copyright specialist with Heenan Blaikie LLP who is also a performer and musicologist.
“With computer technology it’s easy to create sound marks and sound appeals to the head and the heart as all musicians know. Ask any string player what distinguishes one player from another — (cellist) Yo-Yo Ma from (Mstislav) Rostropovich — they will tell you it is his sound because his sound becomes the trademark of the performer. What better way to convey the brand experience than in a manner in which draws on the ability to reach out to people universally?”
Previously, the CIPO refused applications for the registration of sound marks on the basis that s. 30(h) of the Trademarks Act requires that “unless the application is for a word or words not depicted in a special form, a drawing of the trade-mark and such number of accurate representations of the trade-mark as may be prescribed.”
The recent change in CIPO’s practice brings its policy in line with the position of other countries around the world. The practice notice resulted from an appeal by Metro-Goldwyn-Mayer Studios Inc. on the refusal of the registrar to approve its application to register as a trademark the sound of its familiar roaring lion.
Rush says people have applied to register sound marks for many years — the MGM lion was first applied for in October 1992. At the time, the company submitted the sound-only portion of the roaring lion — the drawing of the trademark in the form of the voiceprint and a cassette tape containing the roaring lion sound.
“The issue was whether the sound of the lion is a trademark within the Trademarks Act,” says Rush. “We know that sound can be used to distinguish but the problem was whether or not there is a visual requirement — in other words can you speak a mark or do you need to see it for that sound mark to be in use?”
In other countries where sounds are permissible as trademarks, most parties have faltered at the opposition stage, says Cynthia Rowden of Bereskin & Parr LLP.
“I think that while some people may be willing to give this a try and meet the requirements in the act, at the same time the possibility for successful oppositions is certainly there,” says Rowden.
“I think something like the roaring lion is the reason we have this policy. It strikes me as a mark that does have immediate recognition,” she says. “On the other hand it’s going to be difficult — most parties won’t have a trademark that will meet that kind of threshold and if there is an opposition I think it will be interesting to see how the opposition board handles the degree of distinctiveness that a registrant will have to have in order to get a registration.”
According to the practice notice, an application for the registration of a sound mark must:
• 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.
“The guidelines effectively establish a manner of transposing the audible to the visual — in other words how you deposit your sound mark is done in two ways — audible and also a visual component,” says Rush.
“The reason this is so important is that over the years so much has happened in the field of computer technology,” says Rush. “There were no administrative procedures in place for drawing a co-relation between visual and audible.”
A sound mark application may only be submitted through paper application, and not through the office’s online filing system. The electronic recording of the sound must be less than five megabytes in size and recorded on a CD or DVD in mp3 or wav format and should not contain any repetition of the sound.
“People need to think about the criteria that the trademarks office has stated. They have introduced a procedure that will require people to spend a bit of effort to put their trademark application together,” says Rowden. “It will still continue to be possible for other parties to challenge the application by way of an opposition based on the trademark not being sufficiently distinctive and is clearly description.”
Rush sees the ability to register sound marks as a big step forward for companies that increasingly want to communicate globally with a universal means that is not tripped up by language differences.
“One of the difficulties in visual marks or words that have one meaning in one language is the meaning in another language is not necessarily the same or can often be something completely contradictory. One of the challenges for companies that do branding all over the world is to come up with a sound bite, so to speak, or mark which effectively communicates the same message to the consumer base or stakeholders all over the world at the same time in a language they understand. Sound can do that,” she says.
“I see this as a natural evolution — it’s as though we’ve been given the opportunity to use new palettes of colours and new paint brushes have just become available for everyone.”
Canadian companies have historically relied on unique icons, images, and phrases for brand recognition but now they can add sounds to that list.
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When Philip Mendes da Costa started out at Bereskin & Parr LLP in the mid-1980s, intellectual property boutiques were small affairs. Twenty-five years later, “we’re now larger than some of the mid- to large-size firms,” says the firm’s managing partner. He says the 59-lawyer shop has grown in tandem with the increasing emphasis corporations are putting on their IP portfolios. “Back then, patents and trademarks were considered important, but not really central to the business of the company,” he says. “More recently, you’ve got companies who can receive more revenue from patent royalties than manufacturing products, and companies where the value of the IP portfolio or goodwill represented by the trademark portfolio is very significant, and stands out on the balance sheet. It’s of critical importance to make sure the IP strategy aligned with the business strategy.” For that reason, he says it’s natural that larger corporate firms are looking to get in on the action. “It’s not just a peripheral issue at the moment.æ
“[Boutiques] don’t dominate the field anymore like they might have done 10 years ago. Big firms have formed their own departments and the market has certainly become more competitive,” says one Bay Street practitioner, who says full-service firms are strong on the litigation and transactional side of IP law.
Another western Canada-based lawyer at a full-service firm says IP lawyers outside boutiques are still often overlooked because the field is so strongly associated with specialist firms. “Most IP practices, even in large firms, are run as mini boutiques. The IP department is run very differently from departments in other areas of law, because it really is quite distinct,” he says.
Mark Evans, managing partner of Smart & Biggar/Fetherstonhaugh’s Toronto office, says that the unique nature of IP law makes it difficult for large firms to match the depth of expertise boutiques can provide. Because the volume of IP litigation is not as high as in other jurisdictions such as the United States, firms need to branch out. Evans says some larger firms struggle to accommodate patent agents in their structure, or the specific file-handling systems IP demands. “We have our own proprietary systems and administrative features that are geared to that,” Evans says. “There are certain elements of IP that can be suited to general practice firms, but a lot of it is an uneasy fit.”
Despite the new competition, Mendes da Costa says IP boutiques have a long future ahead of them. “I don’t think it’s ever going to be subsumed into the full-service firm and disappear. We’re going to be here forever,” he says.
In employment and labour law, conventional wisdom says that large firms sop up the management-side work, while boutiques live off referrals when conflicts arise. But Erin Kuzz, co-founder of Toronto firm Sherrard Kuzz LLP, says there’s a lot more to it than that. “To be candid, our experience is a lot of the large firms have issues with billing rates. Some of the files that we do just can’t bear the billing rates that a large corporate commercial department might charge. I certainly understand that creates some conflict sometimes in the larger firms,” she says.
Paul Young, managing partner at Filion Wakely Thorup Angeletti LLP, agrees that price has been a key factor in the rise of the employment and labour boutique. He says new ones seem to spring up every year. “We just have a greater ability to be flexible in terms of fee schedules, which really makes us quite competitive,” he says.
And boutiques are cementing their positions by forming their own alliances across international borders to expand referral networks in an increasingly global business landscape. Young says the firm’s recent tie up with L&E Global, the Belgium-based group of 10 management-side employment boutiques, will bring in new work, as well as offering domestic clients with international business a ready-made panel of counsel in foreign jurisdictions. “You also get lots of ideas from the other firms in the alliance about how to attract new business, which leads to more entrepreneurial thinking,” he says.
Sherrard Kuzz also branched out last year, joining the larger Employment Law Alliance, which consists of 3,000 lawyers from 135 countries around the world. “Clients feel very well looked after,” says Kuzz. “I’d say it gives us bigger reach than some of the large firms, because they may not be willing to refer to firms around the world who may be competitors in other fields. We have no competition with the other members of the alliance, so it takes away that conflict issue.”
Our editorial team began the process of selecting Canada’s top IP and labour and employment boutiques by creating a short list of the most notable firms in their respective fields. From there, we drew on the experience of in-house counsel and large-firm lawyers who refer work to these boutiques, conducting a series of confidential interviews to identify the cream of the crop. The following results are an alphabetical list of the 10 boutique firms in each of the intellectual property and labour and employment categories that are most often called upon by other lawyers when stakes are high.
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