Free to roar at last: sound marks make their debut in Canada

01-06-2012

Chantal BertoŇ°a

It took a 20-year battle for Metro-Goldwyn-Mayer Studios Inc (MGM) to get a ruling confirming that sound marks are registrable in Canada.

Despite legislation that was, arguably, broad enough to encompass the registration in Canada of trademarks consisting of a sound, it took a 20-year battle for Metro-Goldwyn-Mayer Studios Inc (MGM) to get a ruling confirming that sound marks are registrable in Canada.

On behalf of MGM, the producer and distributor of motion pictures, our firm applied to register the famous roaring lion sound that appears at the start of its movies.

The application was filed before the Canadian Intellectual Property Office (CIPO) in October 1992 and was in prosecution for 18 years until it was rejected. During prosecution, there were objections to the application on several grounds, including (i) that a sound mark is not a trademark; (ii) that the sound mark is not used in association with the wares and services covered by the application; (iii) an inquiry into whether a sound mark may be distinctive; and (iv) that a trademark must be represented visually and, since a sound mark cannot be represented visually, it cannot be registered.


Sound mark, MGM, CIPO, Canada Trademarks Act

WIPR