The Lion Roars – But Can It Be Trade-marked?

As followers of the Canadian trade-marks scene will almost certainly have learned, last week Metro-Goldwyn-Mayer succeeded in a long-running battle with the Canadian Intellectual Property Office in getting a trade-mark registration for its longstanding “roaring lion” sound mark. As was widely reported, the Federal Court issued an order setting aside the decision of the Trade-marks Office refusing MGM’s application. The Office then quickly issued a new sound mark practice notice indicating that it would accept other sound mark applications.

The practice notice cautions that “where a sound mark is considered to be functional and/or clearly descriptive or deceptively misdescriptive, an objection will be raised pursuant to the provisions of paragraph 12(1)(b) of the Trade-marks Act. In such cases, the mark may be registered pursuant to the provisions of subsection 12(2) or section 14 of the Act.” Further, new applications for sound marks may only be submitted by way of a physical application, and not through CIPO's online filing system. The sound mark is to be embedded in MP3 or WAVE format on a CD or DVD.

There are two points that are particularly worthy of discussion.

1. Legal Basis for Allowance Remains Unstated

The first is to note that the Federal Court matter never went to adjudication. Rather, the docket summary indicates that the matter was settled by an order of Prothonotary Aronovitch. This means that the legal basis for granting such an application remains unsettled. While the practice notice provides some guidance for how such marks will be prosecuted, all trade-marks practice notices are conditioned on a disclaimer that, in the event of any inconsistency between these notices and the applicable legislation, the legislation must be followed. Certain practice notices (such as the notice pertaining to the name or surname prohibition) are no longer an accurate presentation of the law (see this Federal Court decision for why the name or surname notice is out of date).

2. Conflict with Legal Precedent?

The second point is that the approval of the application may conflict with a longstanding precedent of the Federal Court of Appeal, Playboy Enterprises Inc. v. Germain (No.1) (1987), 16 C.P.R. (3d) 517 at 522 (F.C.T.D.), which considered the definition of a trade-mark under s. 2 of the Act. The critical part of that definition reads as follows:

“trade-mark” means

(a) a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others,

The Playboy decision involved a claim that the applicant had trade-mark rights in a word that was not “marked” on visual materials, but was used regularly as a verbal description to distinguish the applicant’s hairpieces. The applicant’s argument failed, with Justice Pinard holding that “I am of the opinion that use of a verbal description is not use of a trade mark within the meaning of the Trade-marks Act. A ‘mark’ must be something that can be represented visually.”

While this decision has been criticized as “shallow”, it will nonetheless be raised in future by opponents to sound marks. Absent a court decision setting out the registrability of a sound mark, the first cases will inevitably lead to creative arguments on how a law originally focused on marks, emblems and stamps will evolve (or not evolve) to accept non-traditional marks such as sound or smell marks.

A Middle Ground?

It may be that there is a middle ground between the Playboy decision and the MGM scenario: while the former sound was non-material because it was spoken and not recorded, the latter has been fixed in a vast number of films, trailers and commercials. Such a distinction makes a difference in copyright; perhaps it will for trade-marks law, too.

Canadian Intellectual Property Office copyright Federal Court Federal Court of Appeal practice notice sound mark trade-mark registration Trade-marks Act

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