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Non-Traditional Trademarks: Recent Developments in Canadian Trademark Practice

The iconic roar of the MGM Lion is poised to become Canada’s first registered sound trade-mark. The roar has been featured in MGM films since 1928, and has been the subject of a US trade-mark Registration since 1986.

On March 1, 2012, the Federal Court of Canada set aside a refusal by the Registrar of Trade-marks and directed the Registrar to advertise the trade-mark application by Metro-Goldwyn-Mayer Lion Corp. (“MGM”) for its lion’s roar. The trade-mark application for the roar was filed in 1992 and contained the spectrogram shown below.

The trademark application was initially refused by the Registrar of Trade-marks, not on any policy ground prohibiting the recognition of distinctive sounds as trade-marks, but rather because the form of the application did not meet the requirements of the Trade-marks Act.   

At present, Trade-marks Act requires that applications include either words in a standard font or “a drawing of the trade-mark”. The Registrar determined that the above spectrogram was not an adequate representation of the sound that MGM sought to register. During the course of the almost 20 years that the application has been pending in Canada, MGM also filed a recording of the lion’s roar and a video of a movie with the opening credits showing the roaring lion.

In a follow-up to the Court order, the Canadian Intellectual Property Office (“CIPO”) issued a Practice Notice, confirming that, effective immediately, applications for sound marks will be accepted.

The recent decision to accept sound marks in Canada is the precursor to the likely introduction of trade-marks applications for other types of non-traditional or sensory marks in Canada. In 2010, CIPO began a process to introduce a broad spectrum of amendments to the Trade-mark Regulations which will, among other things, have the effect of modernizing the filing requirements for sound marks and other non-traditional marks. For instance, the proposed amendments seek to introduce filing requirements for so-called “hologram” and “motion” trade-marks.

Businesses adopt a wide variety of ways to create brand recognition and increase customer loyalty. From a business perspective, it is important to consider which components of a brand may be entitled to legal protection and take steps to do so where warranted. If distinctive of a particular business, the law will endeavor to preserve monopolies in almost any form of trade indicia. And soon, we expect that we will also be able to protect most, if not all, of these trade indicia as registered trade-marks in Canada.

The following are instructive examples of trade indicia that reach beyond simple words, slogans and graphic logos to distinguish a brand.

  • holograms
  • motion marks
  • 3-D restaurant interiors
  • positioning of label on a container or package
  • stitching patterns on clothing
  • shape of product packages or containers
  • colouring of product packages
  • colouring of the products
  • colour of staff uniforms
  • signatures

Trade-marks provide legal monopolies that can give brands a competitive advantage in the marketplace. Recent developments promise to make it easier than ever to secure registrations to protect non-traditional trade-marks in Canada.

 

Disclaimer: The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.