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Sounds Like a Revolution – Trade-marking Sounds in Canada

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On March 28, 2012, the Canadian Intellectual Property Office (CIPO) announced that it is now accepting applications for “sound marks”.  As Lorraine Fleck points out in a guest post at the IPKat blog, the genesis of this change in Canadian trade-mark policy stems from an application by Metro-Goldwyn-Mayer (otherwise known as MGM) for a trade-mark for its “roaring lion” sound, which film fans will recognize from the opening credits of MGM films (the application can be seen here – give MGM props for perseverance: they first filed the application in 1992).

CIPO’s announcement stipulates that applications for sound marks must include the following elements:

  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.

The graphic representation of the sound will almost inevitably be a “spectrogram” and the “electronic recording of the sound” must be “in MP3 or WAVE format, limited to 5 megabytes in size, and recorded on a CD or DVD”.

The change brings Canada into line with trade-marks practice in other jurisdictions such as the United States, Australia and the EU.  What sorts of sounds have been registered as marks in the US?  Helpfully, the US Patent and Trademark Office hosts a “Kids’ Pages” directory which contains links to multiple registered sound marks.  Among them:

The change has a number of interesting implications for Canadian entertainment lawyers.  As Jeanette Lee points out, once registrations for sound marks start being issued, another element will be added to errors and omissions (E&O) clearance reviews: people who incorporate pre-existing works into their own works will need to be cognizant that a sound they are incorporating might be protected as a registered trade-mark.

There will certainly be an expansion in the number of “things” which can be trade-marked, which may make lawyers and trade-mark agents salivate at the thought of additional filings, though proposed sound marks will still need to meet the usual thresholds for trade-mark registration of not being functional and/or clearly descriptive or deceptively misdescriptive.  When it comes to “entertainment products”, however, policy issues are raised where there is an overlap between a copyrighted work and a proposed sound mark.  (As an example, in the US, the composition “Sweet Georgia Brown” is a registered mark of the Harlem Globetrotters in connection with “entertainment services in the nature of basketball exhibitions”.)  Canadian courts have expressed some reservations about using trade-marks to extend intellectual property protection over copyrighted works (see Drolet v. Stiftung Gralsbotschaft, 2009 FC 17), since the time-limited quasi-monopoly provided by copyright could be skirted by the possibly-perpetual protection afforded by trade-mark registration.  As Ivy Tsui speculated at IPilogue (The “Unconventionality” of Sound Marks), could the “Hockey Night in Canada” theme song be trade-marked, thereby trumping a transfer of copyright?

The immediate effect of the CIPO announcement is to expand the possibility of IP protection for sound-based assets – what will play out in the long-term will be the question of quite where the boundaries should exist between trade-mark and copyright protection for those same assets.