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:
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.
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