Trade-mark registration: some sound practical tips for Canadians

"When I grow up, I want to be
the MGM lion", says Gabby

The IPKat is always delighted to show the extent of his tolerance towards the curious customs and practices of those good folk who happen to belong to other nations, particularly when it doesn't cost him anything to do so.  For this reason, whatever he might privately think of the bizarre ritual of hyphenating the words "trade" and "mark", he understands that this is something that Canadians just can't help doing.  It's part of Canadian heritage, just like maple syrup, Mounties and those dam beavers. The post below from his Canadian friend and fellow blogger Lorraine Fleck shows tell-tale symptoms of Canadian Hyphen Syndrome which, like all well-mannered Kats, he will endure with grim, self-sacrificing fortitude while he grinds his teeth a good heart, a warm smile and a liberal dollop of benign forbearance.

Lorraine, a barrister, solicitor and trade-mark agent with Hoffer Adler LLP, Toronto, has some exciting news for us all, on the subject of trade marks for sounds.  Her guest post runs like this:

"Canadian Trade-mark Practice Roars into a New Age: Sound Marks Now Registrable in Canada 

On 28 March 2012 the Canadian Trade-marks Office (TMO) announced that it will be accepting sound mark applications effective immediately. On the same day, the TMO published the first advertisement of a Canadian sound mark application in the Canadian Trade-marks Journal at page 2 – application No. 714314 for MGM’s roaring lion sound mark, filed on 6 October 1992 claiming motion picture related wares and services. That application was finally refused by the TMO on 10 October 2010 and an appeal to the Federal Court of Canada was lodged on 12 October 2010. It appears that CIPO’s new policy is the result of a 1 March 2012 Federal Court order in that appeal, directing the advertisement of that application. The TMO consented to that order. This is not surprising, given that the TMO announced proposed amendments to the Trade-marks Regulations on 23 February 2012 allowing the registration of sound marks in Canada, as well as motion and holographic marks. 

The TMO’s Practice Notice on sound marks states that a Canadian sound mark application should:

1. state that the application is for the registration of a sound mark;
2. contain a drawing that graphically represents the sound;
3. contain a description of the sound; and
4. contain an electronic recording of the sound in MP3 or WAVE format recorded on a CD or DVD, with a maximum file size of 5MB. The TMO will not accept recordings on other media types, or recordings accessible via a hyperlink or streaming location.

The TMO will not accept sound mark application through its online filing system. As sound mark applications can only be submitted in paper form, the government application fee is marginally higher ($300 CDN filing fee for a paper application, v $250 filing fee for an online application).  

Predictably, sound marks will be examined using the same criteria as other trade-marks. This means that the TMO will object to sound marks it considers functional and/or or clearly descriptive or deceptively misdescriptive. However, such marks may still be registrable on the basis of acquired distinctiveness in Canada or registration and acquired distinctiveness abroad. 

Will applicants will take advantage of Canada’s first foray into non-traditional marks? The answer is anyone's guess [Merpel says, "anyone's guess" rhymes with ... "yes"]".

Leo the MGM Lion here
The Sound of Music here
The Sound of Silence here