A groundbreaking decision today by the Canadian Federal Court now allows the registration of sounds as trademarks, and paved the way for other non-traditional trademarks.
In 1992 Metro-Goldwyn-Meyer Studios (MGM) applied to trademark the lion roar that occurs during their opening splash at the beginning of many movies. MGM had been using the lion roar since 1928. In other countries than Canada, sounds were allowed to be registered as a definable trademark, either through an interpretation of existing law, or by specific amendment. However, in Canada, section 30(h) of the Trademarks Act requires a drawing or representation of the mark. Many companies attempted to register sounds (such as NBC for their chimes) by registering a musical scale or depiction of notes. MGM attempted to register their roar by filing a spectrogram (sound image) of the roar. MGM also filed a sound recording and a video. The Trademark Office rejected the application, stating that MGM was not applying for a design mark (i.e. the spectrogram submitted) but rather a sound, which could not be accurately depicted.
As a result of nearly 19 years of legal argument, MGM finally won their case and the law has now evolved. The Canadian Intellectual Property Office is now accepting applications for sound trademarks. Their new policy is outlined here.
Trademark law will continue to evolve. Future amendments which are currently being explored by the trademark office include motion trademarks, holograms, and have already included 3D images.
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