Register that tune

Register that tune
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.”

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