India recently granted its first “sound mark” to Yahoo Inc., in a development that brings India’s trade-mark registration system in line with the US, the EU, Australia and other trade-mark registries around the world. (Click here to listen the audio clip of the Yahoo yodel).

What about Canada? Although sound marks are not expressly prohibited by the Canadian Trade-marks Act, there has only been one successful registration of a sound mark in Canada (the MUSICAL NOTES DESIGN mark, which has since been expunged for failure to renew). The practice of the Canadian Intellectual Property Office (CIPO) has been to consistently refuse applications for sounds marks due to the procedural requirement that marks be visual in nature. This is not mandated by the definition of a “trade-mark” in the Trade-marks Act itself, but the Act does refer to the requirement of submitting a “drawing” of the mark, and court decisions have confirmed this. “A ‘mark’ must be something that can be represented visually” : Playboy Enterprises Inc. v. Germain (1987), 16 C.P.R. (3d) 517 (F.C.T.D.).  The MGM lion’s roar, which was the subject of a Canadian “sound mark” application in October, 1992 (Application No. 714314), is still before the office eighteen years later, having gone through various extensions, refusals and appeals.  It might be Canada’s longest-running application.

Is it finally time to permit sound marks in Canada? CIPO is considering some non-traditional marks – such as holograms – that can be depicted visually. Future amendments to the Trade-marks Act will probably permit registration of sound marks and other non-traditional marks in Canada, though these changes won’t likely be introduced for several years.  Listen for changes.

Related Reading: Registering Sound as a Trade-mark

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