Alice-Anne Morlock is a partner in the Toronto law firm McMillan Binch LLP and a member of the firm’s KNOWlaw group. This article was prepared with the assistance of Kate Krestow, student-at-law.

A strong trademark can be a valuable asset, so it’s not surprising that people try to register unique marks that will help ‘brand’ their products or services.

In Canada a trademark is defined as a mark that is used by a person for the purpose of distinguishing that person’s goods or services from another person’s goods or services.

A trademark can consist of a word or words (‘Roots’), a slogan (‘Just do it’), numbers (‘967-1111’), a design (the Nike ‘swoosh’), a combination of a design and words (‘Air Canada’ with a maple leaf in a circle), a combination of color and shape, or a distinctive form of a container (a Coca-Cola bottle).

Now people are beginning to think of sounds as something to be registered as trademarks. And while Canada currently doesn’t permit the registration of sound trademarks, it may have to change its thinking.

A number of countries (such as Germany, France, Italy and New Zealand) expressly allow sounds to be registered as trademarks. And registrations for sounds have been allowed in jurisdictions such as the United Kingdom and the United States, even though it’s not explicitly provided for in their laws.

Although it’s not yet common in the U.S., some sounds have been registered as trademarks, including Intel’s five-tone sound and the Yahoo! yodel. The marks are registered under a provision in the legislation that says a mark can include any word, name, symbol or device or any combination of these.

European sound marks

The European Court of Justice has confirmed that sounds can be registered as trademarks in the member countries of the European Union.

A Dutch firm had obtained registrations for two sound trademarks. The first was for the opening nine notes of Beethoven’s Fur Elise played on a piano and to be used in a radio advertising campaign where all the commercials began with these notes.

The second was the crowing of a rooster (represented on the trademark application by onomatopoeia – or the formation of a word in imitation of a sound – as ‘Kukelekuuuuu’) to be used in software that played the rooster crowing each time a program was started.

When the owner brought an action against someone for trademark infringement, the court said the sounds were not true trademarks. When the owner appealed, the Dutch court declined to make a decision.

Instead it referred the issue to the European Court of Justice, asking it to give a preliminary ruling on whether the European Union Directive aimed at harmonizing trademark law across the member states allowed sound trademarks to be registered.

Although the directive itself makes no mention of sound trademarks, the court found it must be interpreted to include them.

Once the court decided sounds could be registered, it had to set out some guidelines on determining whether a particular sound could be a trademark. Referring to the directive, the court said that sounds can be trademarks as long as they are:

* capable of distinguishing the goods or services of one undertaking from those of other undertakings, and

* capable of being represented graphically with a representation that is clear, precise, self-contained, easily accessible, intelligible, durable and objective.

The court said humans perceive and recognize sounds and noises, and that these ‘messages’ can allow goods and services to be distinguished from other goods and services.

In deciding whether a sound was capable of being represented graphically, the court stated that the requirements are generally satisfied by the representation of music notes on a staff.

However, describing and using only written language for musical notes (e.g., ‘the first nine notes of Fur Elise’ or ‘E, D#, E, D#, E, B, D, C, A’) will likely be insufficient to meet the requirements. And, since onomatopoeia may vary depending on what language it’s in, that alone won’t be enough either. This may make it difficult to register non-musical sounds as trademarks.

Canadian approach

With one exception, the Canadian Trade-marks Office has consistently refused to register sounds as trademarks. Although one series of musical notes was registered in 1989 (for Capitol Records), subsequent applications have not yet been approved.

A case litigated by Playboy Enterprises in the 1980s is referred to as the authority that sounds are not registrable in Canada. However, that case didn’t deal directly with the issue of whether sound marks could be registered.

Playboy was challenging the trademark of a businessman who had registered the mark ‘PLAYBOY’ in association with hairpieces and hair products. One argument was that the businessman was not using the trademark in association with the registered goods as required, so the trademark registration should be expunged for lack of use.

Although the word ‘PLAYBOY’ was nowhere on the hairpieces, the businessman said that he verbally described the hairpiece to a customer as a ‘PLAYBOY hairpiece’ and that he was therefore using the trademark in association with the goods.

The court said a verbal description isn’t sufficient to constitute use under the Trade-marks Act because a trademark must be something that can be seen and ordered the registration to be expunged.

As the case dealt only with whether the trademark was being used, rather than with whether a sound can be registered as a trademark, it may not be a clear indication of what future decisions on sound trademarks the Canadian Trade-marks Office may make, although it has been relied on to deny registration of sounds in the past.

Given the broader approach to sound trademarks in the U.S., Europe and other parts of the world, Canada’s refusal to register them is being challenged – there are a number of current applications in Canada for sound-mark registration, including Intel’s five-tone sound, the Yahoo! yodel and MGM’s roaring lion.

Once they have been processed, we’ll have a better idea of whether Canada will follow the international trend toward recognition of sound marks or continue its more narrow practice that allows trademarks to be seen but not heard.

(This article contains general comments only. It is not intended to be exhaustive and should not be considered as advice in any particular situation.)

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