Sound-marks: Canada’s newest branding frontier
Following a change in position from the Trade-marks Office earlier this year, Canada now has its first registered sound-mark – a positive development that may ultimately reassure other brand owners looking to register their sounds, says Toronto lawyer and trade-mark agent Ashlee Froese.
“Canada is a newcomer to sound marks but I think that it’s mostly a welcome change,” says Froese, a lawyer with Gilbert’s LLP. Read CanadaFashionLaw blog
Froese says it has been a long road, especially for Metro-Goldwyn Mayer (MGM) who has pioneered this new branding frontier in Canada.
“MGM initially filed its sound trade-mark application in 1992 seeking protection of its roaring lion sound. This application was rejected by the Canadian Trade-marks Office, who took the position that a trade-mark must be visual in order to be registrable in Canada. MGM appealed this decision to the Federal Court, which sided with MGM. Upon issuance of the Federal Court’s decision, the Canadian Trade-marks Office almost immediately issued a Practice Notice explaining its reformed position with respect to sound marks,” she explains.
Canada’s acceptance of sound-mark applications is a relatively new development, says Froese, with the Canadian Trade-marks Office only changing its position in March 2012. However, since then, sound mark applications have only trickled in.
“It’s hard to say why. It could be that there is a lack of awareness of the availability of sound marks amongst brand owners. Or it could be a lack of interest on the part of brand owners. Or it could be that brand owners would like to hold off until others have given the process a test run to iron out any kinks in this new development,” she says.
However, she says, the registration of MGM’s sound-mark may give some assurance to other brand owners.
When it comes to registering a sound-mark, Froese notes that there is no indication in the Practice Notice issued by the Trade-marks Office that there is a higher burden of proof for a sound mark, as opposed to a traditional trade-mark application.
At the moment, says Froese, Canada has a pretty extensive scope of protection for non-traditional trade-marks.
“For example, Canada already recognizes the following as possibly functioning as trade-marks: color, shaping of products or packaging (“distinguishing guises”), three-dimensional shapes, phone numbers,” she explains.
Looking ahead, Froese says the Trade-marks Office is looking at potential registration of other non-traditional trademarks, as it is proposing to amend the trade-mark regulations to include protection for holograms and motion marks.
“It will be interesting to see if down the road, Canada will also tackle whether smell can function as a trade-mark,” she adds.