The Business Benefits of Sound Trademarks

Trademarks are commonly thought of as combinations of words and/or images used to define a business's brand. Other types of branding, however, such as sound marks, can be equally useful in ensuring that the goodwill built by your marketing efforts is not compromised by competitors, and are similarly eligible for nationwide protection. A great example of how powerful of an association can be made with a sound mark is the Pixar animated film Wall-E. Many viewers immediately noted that Wall-E’s start-up sound was the F-sharp chord that, until recent models, was heard upon booting a Macbook.

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, sounds are registrable as trademarks in the same way that logos, brand names, and other, non-traditional marks like scents and textures are registrable. A number of examples of sound marks are available on the US Patent and Trademark Office website. Some notable examples of sound marks are the the “Ricola!” exclamation, the Macbook startup sound, and the McDonald’s five note jingle.

A sound mark must be non-functional in nature (that is, non-essential to the operation of the product in question), non-descriptive and not deceptively misdescriptive. A functional mark would be the sound an alarm clock makes when it goes off at the pre-set time. 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 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 MP3 format which may be provided online or, in the case of paper applications, via CD or DVD or USB. The recording must be limited to 5 MB in size or less.

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.

Further, pursuant to section 32(1) of the Trademarks Act, applicants for sound marks may be required to provide evidence of the mark’s distinctiveness – according to the Act, a distinctive mark is a mark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them. Evidence of distinctiveness may include a company’s sales figures associated with the trademark, advertising spend, or other information which would tend to show that consumers know the sound as being a mark of the company. If a sound mark is deemed functional or clearly descriptive or deceptively misdescriptive, the mark will likely be objected to and the objection may be overcome by the filing of evidence showing acquired distinctiveness.

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 ten 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. Ideally, you would want your sound mark to be unique and memorable, and help differentiate your brand from competitors or existing jingles or tunes. 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 with 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. You may also want to consider the different media and formats of your sound trademark and whether or not the sound trademark will be able to evoke the same emotional responses and reinforce the same brand messaging across all channels.

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 historically somewhat reluctant to grant them. Following changes to the Trademarks Act which came into force June 17, 2019, registrations for sound marks are now substantially easier to obtain on account of the elimination of the use requirement for registration. Applicants for sound marks do not need to show use of the mark, however, as is the case for any registered mark, the owner may be required to prove use once 3 years have elapsed from the time of registration. Since June 17th 2019, fifteen applications for sound marks have been filed with the Canadian Intellectual Property Office. While this may sound like very few, consider that in all of the years prior, only 53 applications had ever been filed, and 34 sound marks registered.

Potential applicants should nevertheless consider the relative reluctance with which sound trademarks have been granted by CIPO in the past several years. It is advisable to make sure that your aural mark properly meets all specified requirements before applying for registration, and consider whether it may be eligible for copyright protection as well, which tends to be granted on a less stringent basis.

If you would like to discuss registering a sound trademark, please contact us for a complimentary and confidential telephone appointment.