MGM’s Lion’s Roar Announces the Advent of Sound Marks into Canadian Trade-mark Law

In Metro-Goldwyn-Mayer Lion Corp v Canada (A-G), the Federal Court of Canada directed the Registrar of Trade-marks (Registrar) to approve the registration of Metro-Goldwyn-Mayer’s (MGM’s) trade-mark consisting of the sound of its signature Lion’s Roar, which has been featured in MGM films since 1928. The decision marks a reversal of the long-standing position of the Registrar to deny the registration of sound marks. Canada now joins the United States, the European Union and Australia as jurisdictions that recognize the validity of sound marks. MGM filed its Canadian application for the Lion’s Roar sound mark in 1992 (Application 714314). In prosecuting the application, MGM submitted a spectrogram, an audio recording, and a video recording of the Lion’s Roar. After granting several extensions of time, in 2010 the Registrar refused the sound mark on the basis that MGM had failed to provide “a drawing of the trademarks and such number of accurate representations of the trademarks as may be prescribed”, pursuant to section 30(h) of the Trade-marks Act. MGM filed an application for judicial review of the Registrar’s decision. MGM and the Registrar joined in a motion on consent to allow MGM’s application for judicial review and Prothonotary Aronovitch of the Federal Court ordered the Registrar to approve the Lion’s Roar sound mark. The Registrar’s consent on the motion is consistent with its position taken in the Proposed Amendments to the Trade-mark Regulations, which expressly permit the registration of sound marks (and summarized in this issue of E-TIPS® by Adam Lis here). On March 28, 2012, the Registrar issued a Practice Notice reflecting these developments. The Practice Notice instructs applicants to include the following in an application for a sound mark:

1. a statement that the application is for the registration of a sound mark;
2. a drawing that graphically represents the sound;
3. a description of the sound; and
4. an electronic recording of the sound (stored in .mp3 or .wav format, limited to a size of 5 MB, to be submitted on a CD or DVD only)

As with other trade-marks, proposed sound marks must meet all of the other requirements for registration and must not be functional, clearly descriptive or deceptively misdescriptive of the wares or services associated with the trade-mark. For a link to the Practice Notice, see: http://tinyurl.com/6r83c99 For a link to the Proposed Amendments to the Trade-mark Regulations, visit: http://tinyurl.com/76n58z7 For a link to MGM’s trade-mark registration, see: http://tinyurl.com/6rva9sr Summary by: Darren Hall