IP Monitor - MGM Roars to Registration - CIPO now allowing trade-marks for sound

March 2012 Authors: Adam Haller, Brian W. Gray

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In a previous IP monitor, we reported that CIPO was inviting consultation on proposed amendments to the Trade-mark Regulations to accept, among other things, applications for sound marks which traditionally have not been allowed in Canada.


On March 28, 2012, CIPO issued a practice notice stating that in view of a recent Federal Court order, effective immediately, the Trade-marks Office will accept applications for sound marks.
The practice notice dictates that the application for a registration of trade-mark consisting of a sound should:


a. state that the application is for the registration of a sound mark;
b. contain a drawing that graphically represents the sound;
c. contain a description of the sound; and
d. contain an electronic recording of the sound.


The practice notice also specifies that sound mark applications cannot be filed electronically and must be accompanied by a CD or DVD with the sound mark in MP3 or WAVE format of no greater than 5 megabytes.  
Today’s notice comes on the heels of a recent change of heart by the Registrar in a lengthy dispute between Metro-Goldwyn-Mayer Lion Corp (“MGM”) and the Registrar in relation to MGM’s attempts to register the sound only portion of MGM’s roaring lion as a trade-mark.


In written submissions on a motion for consent judgement to the Federal Court, the Department of Justice argued on behalf of the Registrar that the Registrar erred in its findings that MGM’s application, by including, inter alia, a visual representation, an audio recording, and a written description of the sound, did not satisfy the drawing requirement in 30(h) of the Trade-marks Act.


For fuller details and the specifics of the revised practice, please visit this link to the CIPO website:

http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr03439.html

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