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JURISDICTION REPORT: CANADA FREE TO ROAR AT LAST: SOUND MARKS MAKE THEIR DEBUT IN CANADA


Chantal Bertoša Shapiro Cohen


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. Te 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.


Te latter objection stemmed from the wording of the Trade-marks Act, which stipulates that for trademarks other than word marks, applicants must provide “a drawing of the trademark and such number of accurate representations of the trademark as may be prescribed”.


A spectrogram, an audiotape of the lion’s roar, a video which demonstrated the roaring lion at the start of an MGM movie and, on appeal, a digital recording of the roaring lion sound, were all submitted as drawings and representations of the mark. In his letter of refusal, the registrar of trademarks found that the applicant:


“has filed a drawing, specifically a visual representation of sound. However, the drawing submitted is not the trade-mark, since the applicant has clearly applied for a sound mark and not a design mark. As a result, the drawing is not considered to be an accurate representation of the trade-mark, which the applicant has described as ‘a sound mark consisting of a lion roaring’.”


Te registrar’s decision was appealed to the Federal Court. Te appeal was not limited to whether the drawing submitted satisfied the requirements of the act but also asked for a declaration that all objections raised during the prosecution of the application be found improper or, if proper, decided in favour of MGM. Tis was done because the registrar did not withdraw any objections made during prosecution and we did not want to return to prosecution if the court decided the issue of the drawing in MGM’s favour.


Early in the appeal, the parties agreed that if we could convince the court that the drawing submitted met the act’s requirements, the registrar would consent to an order requiring it to advertise the sound trademark.


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“THE APPEAL ALSO ASKED FOR A DECLARATION THAT ALL OBJECTIONS RAISED DURING THE PROSECUTION OF THE APPLICATION BE FOUND IMPROPER OR, IF PROPER, DECIDED IN FAVOUR OF MGM.”


Te evidence filed and our memorandum of fact and law showed the meaning that should be given to the term ‘drawing’, plus countless examples of registered trademarks where the drawing submitted was not the trademark nor had much resemblance to the mark actually in use, such as colour marks, distinguishing guises or trademarks that encompass a portion of a three-dimensional object.


Was it timing that brought success? Our convincing arguments? Te nomination of a new registrar? Years of lobbying for non-traditional trademarks by the profession? Or a push to satisfy Canada’s international treaty obligations? Whatever the reason, aſter the filing of the memorandum of fact and law, the registrar revisited his position and agreed to advertise MGM’s sound mark upon the filing of a sound recording of the roaring lion in MP3 format. Te Federal Court issued an order on March 1, 2012 setting aside the registrar’s original decision and directing the registrar to approve the application.


On the day MGM’s sound mark was advertised in the Trade-marks Journal, CIPO released a practice notice indicating that sound trademarks are now accepted. Applications should state that the application is for registration of a sound mark, and contain a drawing that graphically represents the sound, a description of the sound, and an electronic recording of the sound.


MGM’s trademark for the sound of its famous lion is expected to be confirmed this summer. Te roaring lion is free to roar at last … even as a trademark!


Chantal Bertoša is a partner and the patent and trademark manager at Shapiro Cohen. She can be contacted at: cbertosa@shapirocohen.com


World Intellectual Property Review May/June 2012 53


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