Introducing the newest kind of trademark in Canada: the soundmark.
These branded sounds, which don’t necessarily include words or melodies, have existed for some time in the United States — with some notable soundmarks including the Intel and NBC chimes — but until last week, soundmarks had not been accepted by the Canadian Intellectual Property Office (CIPO).
That changed when CIPO finally accepted Metro-Goldwyn-Mayer’s lion roar (you know, the one opening all your favourite movies) as Canada’s first registered soundmark — 20 years after the original application in 1992.
The hold-up, according to Trent Horne, the IP lawyer at Bennett Jones LLP who wrote a bulletin on this development, was the challenge in representing a specific lion’s roar (which, in theory, could be trademarked) as distinct from a generic lion’s roar (which can’t).
MGM’s original application included an audio recording as well as the above spectrogram, which made up part of its trademark in the U.S.
CIPO, however, did not consider the spectrogram to be an accurate representation of the mark, so the application was rejected. After an appeal to the Federal Court of Canada, however, CIPO relented, consenting to an order allowing the appeal and directing that the application be advertised for opposition purposes.
Horne says the decision is of particular significance for branded sounds that aren’t easily represented visually.
“If it’s three or four notes on a piano, you can just use sheet music. But if it’s a lion’s roar, or the THX note that rumbles in the theatre at the beginning — unless you put in one of these spectrograms, there’s no way you can do it.”
Companies with familiar sounds in their branding already had some protection in Canada under the law of “passing off” (given that most courts will be able to see through a deliberate attempt to mislead a consumer by using a sound associated with a brand). In addition, basic melodies and words enjoyed copyright protection. But Horne says the ability to trademark a sound creates another layer of protection.
“It’s easier to sue someone if you have a trademark registration as opposed to relying on the common law of passing off.”
Horne doesn’t expect to see a flood of registrations in Canada, though, given that the bar for trademarking a sound is still exceptionally high. Consider the notorious failure of Harley-Davidson in 1994 to trademark the rumble of their engines.
“Needless to say, every other motorcycle manufacturer opposed it,” says Horne. “How can you register a trademark on what they described as the ‘potato potato potato’ sound of an engine?”
The first soundmarks in Canada will likely be ones that have already been registered in the U.S., including the aforementioned Intel and NBC chimes, THX’s “deep note” that rumbles at the beginning of your cinema experience, as well as the famous 20th Century Fox fanfare.
“And then it’s obviously open for companies like the Rogers of the world,” says Horne. “If they have a unique sonic branding, then I’d expect that they would take advantage of it.”