Sound bites can now be registered as Trademarks in Canada

The famous MGM lion is roaring in celebration of its legal victory in the Federal Court of Canada.  The Federal Court of Canada rendered a decision on March 28, 2012 permitting the registration in Canada of sound bites as trademarks under the Trademarks Act.   The case was brought by Metro-Goldwyn-Mayer Studios after its application to register the lion’s roar that accompanies its logo at the start of films was rejected by the Canadian Intellectual Property Office.  The CIPO long insisted that sound could not be registered as a trademark, only visual representations (such as words and logos).  The Federal Court disagreed and has therefore opened the door to applications for registration of sound marks. CIPO has published a notice on its website setting out the requirements for sound mark applications, including:

1. the application must include a drawing that graphically represents the sound;
2. the application must contain a description of the sound; and
3. the application must contain an electronic recording of the sound.  The recording must be in a WAVE or mp3 format, less than 5mb in size.