Trade-mark Applications for Sound Marks in Canada – The Left Hand “Giveth”: Will The Right Hand “Taketh Away”?

Published April 19th, 2012

The Canadian Trade-marks Office (the “Office”) has agreed to process trade-mark applications for sound based on a Prothonotary’s non-adjudicated order in Federal Court Number T-1650-10.  In view of the order, the Office issued a new practice notice indicating that it will accept applications for sound marks.

In October, 1992, Metro-Goldwyn-Mayer Lion Corp. (“MGM”) applied to register the sound of a “lion roaring” in association with, inter alia, “motion picture films and pre-recorded video tapes” and “motion picture services; entertainment services by distribution of motion pictures”, accompanying the paper filing with a tape containing the sound sought to be registered.

The Examiners (of which there were many over the course of the years) raised issues including:

a)   the definition of a trade-mark (intimating that sound did not fall within the definition contained in the Canadian Trade-mark Act (the “Act”));

b)   jurisprudence which was interpreted as precluding registration of sound (i.e., the Playboy Enterprises Inc. v. Germain (No. 1)[1] case where the judge stated, “I am of the opinion that use of verbal description is not use of a trade-mark within the meaning of the Trade-marks Act:  A mark must be something that can be represented visually”. – i.e., – for example, it must be visually marked on wares or on the packaging in which the wares are distributed;

c)   the suggestion that perhaps a prior “sound” registration on the Trade-marks Register had been an error on the part of the Office;

d)   the technical issue of providing a “drawing of the mark” as an “accurate representation of the trade-mark”; and

e)   the technical issue of showing the mark as used.

The Applicant argued strenuously for registration alleging:

       i.        distinctiveness;

      ii.        fame;

    iii.        that the existence of a prior third party registration for a trade-mark registration consisting of 11 musical notes;

    iv.        the definition of a trade-mark is broad enough to encompass sound as it includes “other business devices” used to distinguish; and

     v.        policy reasons.

The Applicant also filed a resolution of the Board of Directors of INTA in 1997 that in appropriate circumstances, sound, if connected with a product or service, could be entitled to trade-mark registration.

Finally, the application was refused and the Applicant informed that it had a right of appeal to the Federal Court of Canada.

So what did the Applicant do?

Along with the Attorney General of Canada and the Registrar of Trade-marks (the “Registrar”), the Applicant filed a motion in writing for consent judgment asking to set aside the Office refusal and directing the Registrar to approve the application for advertisement.

The parties to the Motion agreed to narrow the issue before the Court to whether the Applicant’s trade-mark application complied with the requirements of s.30 of the Act and specifically excluded the issue of whether sound is a registrable trade-mark in Canada stating “The issue of whether sound is a trade-mark is not at issue”.

On March 1, 2012, the Prothonotary directed that the application be approved for advertisement since it had been processed according to the Act, leaving unresolved the issue of whether the Office has the authority under the Act to register such marks.

On March 28, 2012, the Office published a notice indicating that trade-mark applications consisting of sound through a paper filing would be accepted, if the application met the technical and substantive requirements of the Office.

What conclusion can we draw?  Not much, except to say that under the appropriate circumstances, a sound mark application will be processed by the Office in accordance with the Act.  Will such an application be successfully opposed on the grounds that the Office does not have the authority under the Act to register such marks?  Does a sound mark meet the current Canadian definition of the trade-mark which is:

a)           a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold leased, hired or performed by others;

b)           a certification mark;

c)           a distinguishing guise; or

d)           a proposed trade-mark?

Could a registration be expunged because it did not meet the aforesaid definition?

Only time will tell.  Applicants must be aware of the possibility of an unfavourable Opposition or expungement decision that could result in invalidation of their sound mark registration.  The question remains whether the Office has the authority under the Act to register sound as a mark.

So why did the Attorney General and the Office join ranks with the Applicant to push the MGM application to advertisement?  Did the Office wish to provoke a judicial interpretation?  Is the Office hoping to short circuit the more tedious (but clearly more certain) process of seeking an amendment to the Act to specifically permit such registrations?  Did it feel compelled to try to “catch up” to other jurisdictions that currently register sound marks?  The answers to these questions remain to be seen, or more accurately, heard.

Until there is a clear, adjudicated decision from the Federal Court or an amendment to the Act, the possibility exists that the “sound of silence” will continue at the Canadian Trade-marks Office.

[1] (1978), 39 CPR (2d) 32 at 39, affd (1979), 43 CPR (2d) 271 (FCA)

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