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Canadian court clears way to trademark sounds

In 1992, MGM sought to trademark the sound of a lion’s roar that appears at the beginning of almost all MGM movies and is instantly recognizable to just about anyone who has ever seen one of its films.

Nick Ut/Associated Press/Nick Ut/Associated Press

The MGM lion is no longer an endangered species under Canadian trademark law.

A groundbreaking Federal Court of Canada decision has paved the way for the trademark of sounds in Canada, making it possible for companies to legally protect the short aural logos associated with their brands – and opening the door for other types of non-traditional trademarks.

The Canadian Intellectual Property Office announced Wednesday it will begin to accept sound-based trademark applications. Previously, CIPO took the position that sounds could not be trademarked. In many other jurisdictions around the world, however, sounds are regularly subject to the same protection as brand names and logos.

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"I think it's a step in the right direction," said Stephanie Chong, an intellectual property lawyer with Tabrizi Law in Toronto. "Internationally, we're definitely playing catch-up."

The CIPO decision is the result of an almost 20-year spat between the Canadian trademark office and Metro-Goldwyn-Mayer Studios. In 1992, the company sought to trademark the sound of a lion's roar that appears at the beginning of almost all MGM movies and is instantly recognizable to just about anyone who has ever seen one of its films.

However, CIPO has long had misgivings about so-called non-traditional trademarks. Usually, trademarks are things that can be easily represented visually, such as the Nike "swoosh" or McDonald's golden arches.

Sound-based brand identifiers, such as the MGM lion's roar or the "leap ahead" sound bite that accompanies the Intel logo in television commercials, are a more difficult to represent visually.

"What the MGM lion's roar is doing is giving consumers an aural brand," Ms. Chong said. "The trademarks office has taken the position that, prior to now, in order to obtain registration of mark it had to be able to be depicted in a drawing."

After years of extensions and delays, CIPO refused MGM's application in August of 2010. The company appealed the decision. Eventually, the case made its way to federal court, where MGM won.

In recognition of the ruling, CIPO announced Wednesday that it will begin accepting applications for sound trademarks. But the office still requires a visual representation of the sound, such as a waveform (the shape and form of an aural signal).

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The trademark process will not extend to longer sounds, such as songs, which are protected by copyright. But CIPO's decision likely paves the way for other non-traditional trademarks in future, such as holograms and scents.

"The office will be looking at the rationale and analysis [in the federal court decision]" said Lisa Power, director general of the trademarks branch at CIPO. "Potentially, other types of marks fit within that decision."

Ms. Power said the test for granting a sound trademark will be essentially the same as for other types of trademarks. In the case of MGM, the company is looking to trademark the lion's roar in association with motion picture services and related commercial areas.

As far as the roar goes, MGM would seem to have a fairly strong claim to trademark rights – the studio has been using the sound in Canadian theatres since at least 1928.

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