Hear the Lion Roar – Sound Mark Protection Now Available in Canada

In light of a recent Federal Court order approving the advertisement of Metro-Goldwyn-Mayer (MGM) Lion Corp.’s application to register its trademark lion’s roar, the Canadian Intellectual Property Office (CIPO) has announced that it will now accept applications for sound marks. The decision to allow sound marks comes as CIPO contemplates allowing other non-traditional marks such as marks for colour, 3D images, holograms, and motion.

Filed in 1992, MGM’s sound mark application is one of Canada’s longest pending trademark applications. MGM’s sound mark, consisting of a lion’s roar, appears at the beginning of almost all of MGM’s movies. After a series of delays resulting in the rejection of the application by the Trademarks Registrar in 2010, the case was appealed to the Federal Court where it was approved for advertisement. This is the first sound mark to be advertised by CIPO since 1989, when Capitol Records registered a sound mark for a series of musical notes.

According to CIPO’s new Practice Notice following this Federal Court order, “the application for the registration of a trade-mark consisting of a sound should:

  1. state that the application is for the registration of a sound mark;
  2. contain a drawing that graphically represents the sound;
  3. contain a description of the sound; and
  4. contain an electronic recording of the sound.”

Sound marks may include sound effects (like MGM’s lion’s roar), a short musical composition (like the series of musical notes used by Intel or NBC in their advertising), or a jingle. Applications for sound marks may only be submitted by paper with a CD or DVD containing a recording of the sound in MP3 or WAVE format. The Practice Notice reverses CIPO’s longstanding policy to not accept sound marks. CIPO has now made available a sound mark database.

By: Amy M. Fong and Henry N. Bian, Oyen Wiggs Green & Mutala LLP

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