1. By: Chantal Bertoša Shapiro Cohen Barristers & Solicitors | Patent & Trade-mark Agents Ottawa Non-Traditional Trade-marks – a Canadian Perspective

2. 2012 © Intellectual Property Institute of Canada What is a Trade-mark? It is a source identifier of wares and services. Its purpose is to distinguish one’s wares/services from those of others. Traditional Trade-marks: Non-Traditional Trade-marks: Words, designs, images, phrases, slogans, numerals or a combination of one or more of these elements Shapes, colors, sound, taste, smell, motion, holograms

3. 2012 © Intellectual Property Institute of Canada Sound Marks Are Now Registrable in Canada Practice Notice of March 28, 2012 entitled “Trade-mark consisting of a sound”. An application for a trade-mark consisting of a sound should: state that the application is for the registration of a sound mark; contain a drawing that graphically represents the sound; contain a description of the sound; and contain an electronic recording of the sound.

4. 2012 © Intellectual Property Institute of Canada The applicant must also: submit the application by way of a paper application; and provide a recording of the sound in MP3 or WAVE format limited to 5 megabytes in size; recorded on a CD or DVD.

5. 2012 © Intellectual Property Institute of Canada Since the introduction of sound marks, CIPO created an additional database for sound marks only. 5 APPLICATION NUMBER TRADE-MARK SOUNDOWNER 1543014MOCKINGJAY CALLLions Gate Entertainment, Inc. 1572000 WORK.REST.PLAY Jingle Mars Canada Inc. 1574816 YUMM Red Robin International, Inc. 1574817 RED ROBIN YUMMM Red Robin International, Inc. 1575748 TOYS "R" US JINGLE Toys ‘R’ Us (Canada) Ltd. 1578741 TARZAN YELL Edgar Rice Burroughs, Inc. 1579541 INTEL CORPORATION Intel Corporation 1580577 TELEPRESENCE END Cisco Technology, Inc. 1580578 TELEPRESENCE START Cisco Technology, Inc. 1580579 WEBEX Cisco Technology, Inc. 1586404 STING Cisco Technology, Inc. 1586405 STEAM WHISTLE Steam Whistle Brewing Inc. 1588383 NATIONWIDE SEVEN NOTE JINGLE Nationwide Mutual Insurance Company 1590383 STING ING Bank of Canada 1593620 SUCCESS SOUND MARK 1756211 ON Inc.

6. 2012 © Intellectual Property Institute of Canada In the European Union: sound marks are registrable, and have been for a few years The most notable differences between how to register a sound mark in Canada and in the European Union are: that a sound mark may be applied for electronically; the representation of the sound mark graphically must be in JPG format not exceeding 2MB in size; a sonogram is acceptable as a graphical representation of a sound when it is accompanied by a sound file; the sound file must be in MP3 format not exceeding 2MB in size.

7. 2012 © Intellectual Property Institute of Canada The ROARING LION (SOUND ONLY) Trade-mark – At the Origin of the Practice Notice on Sound Marks? It is a sound mark Filed in 1992; 4 Official Actions; Refused on August 10, 2010; Appealed to the Federal Court on October 12, 2010; Agreement to narrow down the issues:  sound mark is a trade-mark;  if MGM can show the Court that it submitted a drawing in compliance with the requirements of paragraph 30(h), the sound mark will be advertised. 7

8. 2012 © Intellectual Property Institute of Canada Paragraph 30(h) of the Trade-marks Act provides that an application shall contain: Unless the application is for the registration only of a word or words not depicted in a special form, a drawing of the trade-mark and such number of accurate representations of the trade-mark as may be prescribed. 8

9. 2012 © Intellectual Property Institute of Canada The Registrar refused the application under paragraph 30(h) because: MGM had not provided an accurate representation of the trade- mark; and the drawing submitted is not the trade-mark. 9 MGM filed: A voiceprint of the trade-mark as a drawing An audio recording and a recording of the trade-mark on video cassette as accurate representations of the trade-mark; A description of the mark:  the trade-mark is a sound mark consisting of a lion roaring and is shown in the attached drawing

10. 2012 © Intellectual Property Institute of Canada What is a drawing? It can be a graphic representation … of an object or idea It does not need to be a representation of the trade-mark but an illustration thereof; It constitutes the physical means of entering it on the Register for public searches. 10

11. 2012 © Intellectual Property Institute of Canada There is nothing in the Act to suggest that Parliament contemplated a situation where a trade-mark, i.e. a mark that is clearly capable of and does in fact distinguish the wares and services associated with it from those of others, is not registrable by reason only that by its nature, it is unable to be drawn or accurately represented on a narrow or traditional interpretation of those words. 11

12. 2012 © Intellectual Property Institute of Canada If paragraph 30(h) needs to be a representation of the trade-mark, then what are these marks? 12 TMA 535,786 In the Marketplace Description: The trade-mark is shown in the attached drawing and consists of the colour blue applied to the whole of the visible surface of the masking tape depicted in the drawing. The representation of the length of masking tape shown in the dotted outline does not form part of the trade-mark. The trade-mark is lined for the colour blue.

13. 2012 © Intellectual Property Institute of Canada If paragraph 30(h) needs to be a representation of the trade-mark, then what are these marks? Description: The trade-mark consists of coloured stripes applied to toothpaste. The representation of a slug of toothpaste shown in dotted outline does not form part of the trade mark. The top stripe is green and the bottom stripe is blue, the remainder being white. Colour is claimed as a feature of the mark. 13 TMA 760,655 In the Marketplace

14. 2012 © Intellectual Property Institute of Canada If paragraph 30(h) needs to be a representation of the trade-mark, then what are these marks? Description: The trade-mark consists of the colour blue as applied to the liquid in the particular level vial as shown in dotted outline in the attached drawing. 14 TMA 716,075 In the Marketplace

15. 2012 © Intellectual Property Institute of Canada Moving towards a wider acceptance of non- traditional trade-marks in Canada? CIPO consultation on “Non-Traditional Marks” – Fall 2010 CIPO’s consultation regarding “Proposed Amendments to the Trade- marks Regulations” - Winter 2012. The amended rules cover:  colour;  a hologram;  a motion mark  a trade-mark in a 3D object  a sound  arguably any non-traditional trade-marks that can satisfy the expanded definition of the drawing requirements 15

16. 2012 © Intellectual Property Institute of Canada Hologram Marks Description: The stippling in the mark represents the hologram with iridescent effect superimposed on the design elements. 16 Serial No. 1,404,448 TMA 545,538 The trade-mark is identified as the 1997 MASTERCARD GLOBE HOLOGRAM DESIGN but it is registered as a design mark. The trade-mark is identified as the MASTERCARD GLOBE HOLOGRAM DESIGN but it is registered as a design mark. TMA 515,834

17. 2012 © Intellectual Property Institute of Canada MOTION MARK Trade-mark: PAIR OF FLASHING LIGHTS (MOTION MARK) Description: Lights, each having an orange outer dome cover with a black base. Inside the cover is a mirror that rotates about a central bulb. When in motion, the mirror rotates about the bulb creating a moving beam of light. The subject application covers only one trade-mark. 17 Serial No. 1,511,976

18. 2012 © Intellectual Property Institute of Canada MOTION MARK Trade-mark: ITC IN THE CREASE (AND DESIGN) Description: The design portion of the trade-mark consists of a globe that is in motion orbiting a hockey puck, as provided by the applicant. 18 TMA 549,268

19. 2012 © Intellectual Property Institute of Canada MOTION MARK Trade-mark: PAIR OF FLASHING LIGHTS (MOTION MARK) Description: Le mot 'ecooptiq' au-dessus des lettres 'co' sont posées deux cartes de plastique en 3D. 19 Serial No. 1,553,728 Protection of non-traditional trade-marks … great potential for the future!

20. 2012 © Intellectual Property Institute of Canada Thank You! 20 Chantal Bertoša B.C.L., LL.B. Partner / Patent & Trade-mark Manager cbertosa@shapirocohen.com Barristers & Solicitors | Patent & Trade-mark Agents Suite 200, 411 Legget Drive, Ottawa ON Canada K2K 3C9 Tel: 613-232-5300 www.shapirocohen.com