By Ashlee Froese of Gilbert's LLP
Ever eager to keep our readers in tune with the latest
developments, CanadaFashionLaw is
excited to share some red hot news. (Ok - yes it's about
trade-marks law, but it's still pretty interesting!) Last
week, the Canadian Trade-marks Office issued a notice that it has launched a
consultation period aimed at amending the Trade-marks Regulations. Yawn? Maybe
yes, maybe no.
What caught our attention is the possibility that the Canadian
Trade-marks Office may be ready to accept sounds as trade-marks. To
date, Canada has taken a hard line position that in order to be
recognized as a trade-mark, the trade-mark must be visual. Based on
this threshold, slogans, logos, three-dimensional shapes, etc., can all
function as trade-marks. But what about sound, smell or
touch? Nope. These cannot yet function as trade-marks
in Canada. Is this inline with modern day
branding? Arguably no. Is Canada's trade-marks system
lagging behind those of other countries? Arguably yes.
wanting to show trade-marks at work in the real world, CanadaFashionLaw has provided some fun
examples of what could possibly qualify as a sound mark:
Example Numero Uno
You're at a movie (I'm setting a scene - go with it).
It's a first date.
dim. The popcorn is too salty.
roar startles you.
are you're at a movie produced by Metro-Goldwyn-Meyer Lion Corp.
Example Numero Duo
Frustratingly, your date's phone rings in the middle of a gripping
scene of the movie.
phone's ring has a very distinctive 4 note descending tune.
be that your date is using a NOKIA phone?
Example Numero Trio
date is clearly not going well.
is your date taking calls, but you hear the clicker clacker of typing.
You hear a
long drawn out southern drawl "YAHOOOOOOOOOOOOO".
be that your date is IM'ing via YAHOO?
The date ends early.
number of other countries have had a far more liberal view
than Canada of what could constitute a trade-mark by allowing
non-traditional trade-marks to be capable of registration. Now
that Canada is finally thinking about stepping up its game, it will
be interesting to see how this will all play out.
the consultation paper, the Canadian Intellectual Property Office is eager to
hear from stakeholders, both large and small, on their
perspective. Should Canada venture further into
non-traditional trade-marks? If yes, what should be the threshold
for registration? Should the applicant be required to prove acquired
distinctiveness in order to gain trade-mark rights to a
sound? Should specimens be included in the
deadline to provide this input is April 23, 2012. It's
likely that the heavy hitters such as INTA and IPIC will put in their submissions. Law
firms have also been known to draft up submissions on behalf of their
CanadaFashionLaw is interested to hear
View more from Canada Fashion Law and @BrandFashionLaw
(C) Ashlee Froese, 2011. All rights reserved.
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