Non-traditional trademarks unleashed


Chantal Bertoša and Victoria Carrington

As previously reported, Metro-Goldwyn-Mayer Studios Inc’s (MGM) 20-year battle to register its sound mark in Canada finally culminated in victory.

The iconic lion’s roar claimed its rightful place on the Canadian Trade-marks Register as of July 31, 2012, under registration no. TMA828890 for the MGM Roaring Lion (sound only), opening the door to more than a dozen new sound mark applications—among them the Mockingjay Call from the motion picture The Hunger Games, and the ever-familiar Tarzan Yell. These and other sound marks are now accessible through the new ‘Canadian Trade-marks—Access to Sound Marks’ database created by the Canadian Intellectual Property Office (CIPO).

We are gaining momentum towards a wider acceptance of non-traditional trademarks in Canada—a recognition that the definition of a trademark is not limited to words or designs but includes anything “that is used by a person for the purpose of distinguishing or so as to distinguish wares or services” from those of others.

In 2010, CIPO invited the profession’s comments on a proposed practice notice entitled Non-Traditional Marks, which was limited to motion marks and holograms. CIPO felt motion marks and holograms satisfy the definition of a trademark under the Trade-marks Act, therefore motion marks or holograms are registrable if the applications included:

non-traditional trademarks, CIPO, sound marks