The Business Benefits of Sound Trademarks
Sound marks are a relatively new addition to the intellectual property protections available in Canada. They were first allowed as registerable by the Canadian Intellectual Property Office in 2012, after a decision was made in the MGM Lion case. In that case, the Federal Court held that distinctive sounds like the MGM lion's roar are protectable by law.
What qualifies as a sound mark
Under the current provisions of the Trademarks Act, aural logos are registrable as trademarks, provided that they can be visually represented to CIPO at the time of registration and are distinct enough to create a subconscious association to the product or service in the consumer's mind.
The mark must also be non-functional in nature (that is, non-essential to the operation of the product in question), non-descriptive and not deceptively misdescriptive. Sound marks must also apply only to the product for which they are being registered to avoid consumer confusion.
The Canadian Intellectual Property Office lists four criteria that must be present in an application for a sound trademark:
- It must specifically state that the trademark application is for the registration of a sound mark.
- It must contain a drawing that graphically represents the sound (i.e., a waveform or a note sheet that clearly specifies the notes and rests, if applicable).
- It must contain a description of the sound (i.e., either a listing of the notes in the sound, or the recognizable equivalent of the sound such as an animal noise).
- It must provide an electronic recording of the sound in CD or DVD format, with other formats not being acceptable for the purposes of registration.
Although CIPO does not explicitly state this as a requirement, registrable sound marks tend to be fairly short. Intellectual property protection for longer original sound fragments can be obtained through a copyright registration.
Sound trademarks are protected in Canadian intellectual property law to the same extent as design and other types of trademarks are. As such, the owner of a sound mark will have the exclusive right to commercially reproduce the sound for their purposes for a renewable period of fifteen years.
Developing a sound mark
Before filing for trademark registration, it is key to develop a final version of the sound mark that resonates well with consumers and reflects the image that you want your brand to convey. It may be wise to test your audio recording with focus groups after the initial prototype has been confirmed, and refine it if necessary in accordance to consumer reactions and/or changing brand values. Consider conducting an audio touch point analysis that evaluates where the audio recording will come into contact with consumers (e.g., is it played when the product or service is in use, at the point of purchase, etc.), and whether the sound should be the same at every touch point or should be adapted to reflect different needs.
From a trademark law perspective it will also be helpful to check for the uniqueness of your proposed sound mark where possible. While checking trademark databases for registered sound marks may yield somewhat limited results, consider using an application like Shazam to see if the sound resembles any songs or tunes that are already in the public domain.
Should I pursue a sound mark application?
Although on the surface the requirements for registering sound marks are fairly similar to that for registering other trademarks, the Canadian Intellectual Property Office has been somewhat reluctant to grant them and appears to be imposing a high burden on the applicant in regard to the proof of use requirement. However, this may change in the next few years when the changes to the Trademarks Act take place in 2019. Under the new legislation, trademark applicants will no longer need to provide proof of use. That means that an application can be submitted for a proposed sound mark or a sound mark that is not yet recognizable by consumers, and potentially obtain registration.
Potential applicants should nevertheless consider the relative reluctance with which sound trademarks have been granted by CIPO in the past five years. It is advisable to make sure that your aural mark properly meets all specified requirements before applying for registration, and considering whether it may be eligible for copyright protection as well, which tends to be granted on a less stringent basis.