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Intellectual Property

Will The Canadian Trade-marks Office Get Its Groove On?

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. 

Always 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. 

The lights dim.  The popcorn is too salty.

A lion's roar startles you. 

Chances 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.

The phone's ring has a very distinctive 4 note descending tune.

Could it be that your date is using a NOKIA phone? 

Example Numero Trio

Ok.  The date is clearly not going well. 

Not only is your date taking calls, but you hear the clicker clacker of typing.

You hear a long drawn out southern drawl "YAHOOOOOOOOOOOOO".

Could it be that your date is IM'ing via YAHOO?

The date ends early.

A 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.

In 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 application?    

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 clients. 

CanadaFashionLaw is interested to hear your thoughts... 

View more from Canada Fashion Law and @BrandFashionLaw

(C) Ashlee Froese, 2011. All rights reserved.

The contents herein are for informational purposes and do not constitute legal advice. It is strongly recommended that you seek a professional legal opinion in the event of a legal dispute.

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