I am a trademark, hear me roar! - an appeal for sound marks in Canada


Chantal Bertoša and Andrea Pasztor

If a sound is able to serve the function of a trademark, why shouldn’t the owner of the sound mark be permitted to register it?

Many jurisdictions have accepted the premise that sounds are able to function as trademarks and have allowed for the registration of sound marks. These countries have either interpreted their existing trademark law in such a way as to allow for the registration of sound marks or have amended their legislation to make it possible. Unfortunately, the registration of sound marks is currently not an option in Canada.

However, the question of whether and how sound marks can be registered in Canada has finally been put to the Federal Court in Canada by Metro-Goldwyn-Mayer Studios Inc. (MGM).

MGM, the producer and distributor of major motion pictures, applied to register the famous and distinctive roar of the lion that appears at the start of its movies. The application was filed in October 1992 and was in prosecution for 18 years until finally the Canadian Intellectual Property Office (CIPO) rejected the application based on a technicality, which is now the subject of an appeal before the court.

sound marks, Canada