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By Timothy C. Bourne Non-traditional marks get their day in court How will sensory trademarks be handled in the future? D oes your laptop make a distinctive sound when you power up? Do you know the source of your date's perfume or cologne just by its smell? Could you identify a chef by tasting her minestrone? Recent developments in the courts, at the trademarks office, and now from Parliament may encourage the registration of these and other non-traditional trademarks. The first step: Sound marks The process of officially recognizing nontraditional marks in Canada began without fanfare over 20 years ago when MetroGoldwyn-Mayer Studios Inc. applied to register the sound of a roaring lion. The application was finally rejected by the registrar of trademarks in 2010 and two years later the Federal Court issued a consent order setting aside the registrar's decision. Soon after, the trademarks office published a practice notice listing the elements that must be included within an application to register a sound, thus precipitating a flood of sound mark applications. Today the trademarks office maintains a list of registered and appliedfor sound marks on its web site and many of them, from Tarzan's yell to the Sweet Georgia Brown melody, are worth a listen. Many legal issues arise for owners of sound marks. Applicants should consider whether the applied-for sound mark is "primarily functional." Consider, for example, an application to register a warning sound for fire alarms. An ensuing registration would be susceptible to challenge because the sound mark is closely intertwined with the function of the alarms for which the trademark is registered. Courts are apprehensive to apply trademarks law to limit the use of a product's inherent utilitarian features. Such features should be protected by patents, the term limitations for which ought not to be circumvented by registering a trademark. Applicants should choose the sound mark with care. Distinctiveness, or the ability to distinguish the trademarks owner's goods or services from those of others, is the hallmark of any trademark. Lack of distinctiveness is a basis for challenging a trademark application or registration. Accordingly, it is the distinctive portion of a jingle that should be protected. Additionally, those who seek to protect sound marks for goods (as opposed to services) should be cautious. For many trademark applications, a trademark must be used in Canada before the registration issues. Generally, to use a trademark in association with a good, the Trade-marks Act requires it be associated with the good at the time of a sale. However, normally a sound mark will not be heard during the purchase transaction. Thus many sound mark applications and registrations may be challenged. The next frontier: Bill C-56 Bill C-56, the combating counterfeit products act, was introduced in March 2013 and referred to committee June 13. The main thrust is to provide new enforcement mechanisms for copyright and trademark owners. One outcome of this effort is the desire for the trademarks register to accurately reflect trademarks owners' rights. Thus a broader definition for "trademark" was introduced. It is proposed that the aforementioned sensory marks, along with indicia such as holograms, textures, and moving images, be expressly contemplated in the Trade-marks Act (regarding moving images, think of how the doors of a Lamborghini car open). If the bill is enacted into law in its current form, new issues would arise for owners of non-traditional marks. Trademark examiners will have discretion to request evidence that an applied-for non-traditional mark is distinctive. Thus applicants may have to file evidence in the public trademarks office record regarding sales volumes and promotional efforts across Canada. This is important because there is no mechanism for imposing confidentiality restrictions on such evidence. Also, to encourage consistency, the trademarks office will hopefully establish guidelines for when trademarks examiners should request this evidence. Another issue is the current Trademarks Act requirement to include a drawing of the trademark and accurate representations of the trademark. Bill C-56 does not alter that requirement. For sound marks, the practice notice mentioned above requires the inclusion of a graphical representation, a description, and an electronic recording of the sound. It will be interesting to see how the trademarks office will require owners of taste and smell marks, for example, to represent the marks. The future Once Bill C-56 is enacted into law, monitoring applications for non-traditional marks and attempts to enforce ensuing registrations should be intriguing. IH Tim Bourne practises intellectual property law in Ridout & Maybee LLP's Ottawa offices. w w w. c a n a d i a n law y er m a g . c o m / i n h o u s E october 2013 • 13

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