We use cookies to customise content for your subscription and for analytics.
If you continue to browse the International Law Office website, we will assume you are happy to receive all of our cookies. For further information please read our Cookie Policy.

Kaboom! Sound marks are now registrable in Canada - International Law Office

International Law Office

Intellectual Property - Canada

Kaboom! Sound marks are now registrable in Canada

April 16 2012


Two decades ago, Canada's first and only sound mark was registered. The registration – TMA 359,318 – (now cancelled for non-renewal) represented the sound at the beginning of an audio tape. Since then, and until recently, the Trademarks Office had refused to register any other sound marks on the basis that a sound is not visual and therefore does not fall within the definition of a 'trademark' under Section 2 of the Trademarks Act.

Although the definition of a 'trademark' in the Trademarks Act has not been amended, the Trademarks Office has changed its position by issuing a practice notice(1) on March 28 2012 indicating that sound marks are now registrable.

The practice notice mentions that the change in practice resulted from a recent court order issued on consent. In that case, the applicant appealed a decision of the Trademarks Office refusing an application to register the familiar roar of the MGM lion.(2) In the court order, the federal court stipulated that the mark was to be advertised for opposition purposes. The court order did not provide any discussion of the law or the inherent registrability of sound marks.

In the new practice notice, the Trademarks Office has stipulated that an application for sound marks 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 practice notice also specifies that objections will be raised in cases where a sound mark is considered to be functional or either clearly descriptive or deceptively mis-descriptive. However, the practice notice does not provide any guidance as to when a sound mark will be considered to be functional, clearly descriptive or deceptively mis-descriptive.

For further information on this topic please contact Philip Lapin at Smart & Biggar/Fetherstonhaugh by telephone (+1 613 232 2486) or by fax (+1 613 232 8440) or by email (plapin@smart-biggar.com).

Endnotes

(1) Available at www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03439.html.

(2) Available at www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03433.html.


Comment or question for author

ILO provides online commentaries as specialist Legal Newsletters. Written in collaboration with over 500 of the world's leading experts and covering more than 100 jurisdictions, it delivers individually requested information via email to an influential global audience of law firm partners and international corporate counsel. Please click here to register for the service.

The materials contained on this website are for general information purposes only and are subject to the disclaimer.

ILO is a premium online legal update service for major companies and law firms worldwide. In-house corporate counsel and other users of legal services, as well as law firm partners, qualify for a free subscription. Register at www.iloinfo.com.