Ivy Tsui is a JD Candidate at Osgoode Hall Law School
Granting trade-marks to outré elements such as sound, smell, shape, taste, and texture has long been considered unconventional. However, as Professor David Vaver has foreseen, today’s “unconventional” trade-marks may become the “conventional” trade-marks of tomorrow.[1]
In recent years, the practice of trade-marking sounds has exploded across the globe, with the USPTO leading the distinctive sounds tally. In Australia, the Trade Marks Act was amended in 1995 to broaden the definition of a trade-mark to specifically include shape, colour, sound, or scent. It then took nearly a decade for the European Court of Justice to conclude that sounds could function as trade-marks in Europe. Most recently, India granted its first sound mark for the Yahoo “yodel”.
Yet the CIPO has consistently refused registration for “sound marks”. The current interpretation of the Trade-marks Act in Canada requires that marks be represented “visually”. If unconventional trade-marks such as sounds are to be registered in Canada, the Trade-marks Act might need to go through the arduous process of amendment. Such amendment has been widely requested by organizations such as the Intellectual Property Institute of Canada and International Trademark Association, and corporations like Intel. They reason that as major trading partners of Canada are recognizing the value of sound for trade-mark protection, Canada should also align itself with international business conventions and standards.
While trade-marking sound is commonplace in the US, a more restrictive policy is applied in Europe. In the case of Shield Mark BV v. Joost Kist 2003, the ECJ held that a sound trade-mark must have a graphical representation that satisfies all seven requirements of being: “clear, precise, self-contained, easily accessible, intelligible, durable and objective”. To put this into perspective, the graphical representation of musical note does not satisfy the requirements, but sheet music that shows clef notation and rests would be deemed appropriate.[2] However, as Professor Vaver has argued, it is unclear how representing sounds by stave notation could be an “intelligible” representation, and this ECJ criterion presumes a standard musical literary in the trade-mark registry.[3]
In the US, “distinctiveness” is critical in sound mark application. When Harley-Davidson, for instance, attempted to trade-mark the revving sound of its “V-twin common crankpin motorcycle engine,” nine of its competitors opposed the registration. They contended that other brands also use V-twin engines, producing the same sound. Harley-Davidson eventually removed its own application.
The issue of sound marks in Canada also brings to mind The Hockey Theme dispute between media giants CBC and CTV. Canadians have long associated the theme song with CBC’s Hockey Night in Canada (HNIC), but the song’s copyright was recently acquired by CTV. If sound marks were allowed in Canada, The Hockey Theme’s distinctive identification would likely be granted trade-mark protection. If CBC had registered this song for trade-mark protection, would the song still currently be protected as a trade-mark in association with HNIC? What about the copyright currently owned by CTV? Would CTV be allowed to play this song on CTV channels without infringing CBC’s trade-mark?
While Canada has good reasons to allow sound mark registration, critical issues and policies from other countries should be carefully considered. The goal of trade-mark protection is to avoid product confusion and dilution. Many of these sounds have existed for years and were granted protection retroactively following huge marketing campaigns. Professor Vaver has suggested that the justifications for granting trade-mark protections only after a sound has been recognized should be examined from a social economic perspective, as sound mark protection could become the exclusive realm of powerful entities, potentially impeding innovation.[4]
The increasing use of digital technologies in marketing techniques will continue to drive the development of sounds marks. “D'oh!” is a catch-phrase that immediately conjures Homer Simpson up for me, regardless of who I hear blurt it out. And just a second of a certain drum roll instinctively causes me to reach for the popcorn. Aural cognition is a powerful means for distinguishing specific goods and services, and Canada should consider recognizing so by granting some form of protection for sounds under the Trade-marks Act.
[1] David Vaver (2005) “Unconventional and Well-Known Trademarks” Singapore Journal of Legal Studies 1-19, at 2.
[2] Willajeanne F. McLean (2008)“Protecting unconventional trademarks in the European Union and the United States”, In The Global Challenge of Intellectual Property Rights. Robert C. Bird and Subhash C. Jain (ed.) Edward Elgar Publishing Ltd. BP, 177-194, at 183
[3] David Vaver (2005) “Unconventional and Well-Known Trademarks” Singapore Journal of Legal Studies 1-19, at 9.
[4] David Vaver (2005) “Unconventional and Well-Known Trademarks” Singapore Journal of Legal Studies 1-19, at 18.