After a 20 year legal battle, the Federal Court of Canada has finally ruled that the well-known roar of the Metro-Goldwyn Mayer lion, which has been heard during the opening credits of movies produced by the film studio since 1924, can be registered as a trade mark in that country. The Registrar of Trade Marks had initially refused an application to register the sound trade mark application on the basis that it is not capable of being a trade mark.

The main issue before the Federal Court was whether a sound mark was able to satisfy the requirements of Section 30(h) of the Canadian Trade marks Act, which requires an applicant to file, in respect of a mark other than a word mark, a “drawing of the trade mark and such number of accurate representations of the trade mark as may be prescribed”.

The Court accepted the sound trade mark application on condition that MGM, in addition to the sonogram already filed as part of the application, will submit to the Trade Marks Office a digital file containing the actual sound mark in .mp3 or other agreeable electronic format, in order to satisfy the requirements of Section 30(h).

In terms of the South African Trade Marks Act, a mark is defined as “any sign capable of being represented graphically, including a device, signature, word, letter, numeral, shape configuration, pattern, ornamentation, colour or container for goods or any combination of the aforesaid”.

The definition is therefore very broad and can include a sound trade mark, provided that the trade mark can be graphically represented and fulfils the other requirements of the Act, such as that it is distinctive. In fact, a number of sound trade marks have been registered in South Africa by brand owners, including the well-known NOKIA ringtone and the MASTERCARD and INTEL audio tones.

South African Courts have, in the past, taken into consideration the criteria set out in the European Court landmark decision, Sieckmann v Deutsches Patent-und-Markenamt, known as the “Sieckmann criteria”, which provide that a sign, which cannot be perceived visually, must be able to be represented graphically by means of images, lines or characters, and the representation must be clear, precise and self-contained, easily accessible, intelligible, durable and objective.

Brand owners should keep in mind that a brand is not limited to a word, logo or device, but can very well include less traditional aspects, such as sound marks. The Trade Marks Act enables brand owners to obtain protection for these “non-traditional” trade marks and they would be well-advised to do so.

Written by Shaun Cothill, Associate at Adams & Adams and Kelly Thompson, Partner at Adams & Adams