The more we hear something, the more it resonates with us. Sound can be a powerful trigger. Many gamers would recognize the Super Mario theme song even if heard out of context, just as many movie-lovers would identify the Twentieth Century Fox drum roll by ear. Sounds can be, and often have been, significant components of a brand, product, or service. Sounds can assume the role of trade-marks, serving not only to link a consumer’s mind to an end-product, but also to distinguish a specific end-product from that offered elsewhere.
Nonetheless, the Canadian Intellectual Property Office (CIPO) has previously taken the position that sound marks were not registrable. Only one sound mark was successfully registered, in 1989 (it has since been expunged for failure to renew), while others were denied registration. As of March 28, 2012, however, this has changed.
On March 1, 2012, the Federal Court of Canada issued an order allowing a sound-based application to proceed to advertising, and blazed the trail for the registrability of sound marks. The order comes as a result of litigation between the Canadian Trade-mark office and Metro-Goldwyn-Mayer Lion Corporation (MGM) concerning MGM’s application to register a sound mark consisting of a lion roaring, which application was originally filed with the trade-mark office in 1992. The application had been refused registration on the basis of section 30(h) of the Trade-marks Act, which requires an applicant to file a drawing of the trade-mark and such number of accurate representations of the trade-mark as may be prescribed, provided the mark is not a word mark. The Federal Court set aside such refusal, however, and instead approved that the trade-mark application be advertised in the Canadian Trade-marks Journal for the purposes of section 37(1) of the Trade-marks Act.