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Tetris trade-marks sound good

By Chris Bennett, Tudor Carsten, Michael R. Coburn, Sarah Dale-Harris, Pablo Guzman, Danielle (Dani) Lemon, Chris Metcalfe and David Spratley

When you think of some of the most valuable trade-marks in the world, you probably think of marks like MICROSOFT and SONY. You might also think of some logos, such as the EA logo or, for snack breaks, the McDonalds' Golden Arches.

But what about the Intel Inside tune, or the Harlem Globetrotters' Sweet Georgia Brown theme, or Nokia's distinctive ring tone? Are these protected under trade-mark law?

Unregistered Protection

The short answer is that sound marks are protected by the common law if their owners can prove: (a) there is goodwill in the marks (i.e., the marks have developed a reputation), (b) a third party's use of a similar mark is deceiving the public, and (c) the third party's use of the marks is causing damage to the owner.

Common law trade-mark protection is great, but it's a lot of work and it can be very expensive. Also, the protection only applies to the geographic area where the mark has developed a reputation. That's why registering trade-marks is a much better solution: the owner of a registered mark doesn't need to have or prove any reputation in the mark in order to protect it.

Registered Protection

Unfortunately, it's extremely difficult to register sound marks in Canada. There appears to have been only one sound mark registration in Canada. The mark was owned by Capitol Records, but was expunged in 2005 because it was not renewed.

One of the difficulties in getting sound marks registered in Canada is a 1986 Federal Court of Canada case where the court ruled that a trade-mark must be something that can be represented visually. This requirement certainly isn't in the Canadian Trade-marks Act, which defines a trade-mark as ??oea mark that is used by a person for the purpose of distinguishing or so as to distinguish'--' This definition does not explicitly exclude a sound from being registrable as a mark, and in fact appears to be broad enough to encompass a sound as long as that sound is used to distinguish the wares and services of one source from those of another.

Another difficulty is describing the sound. Unlike traditional trade-marks which can been represented visually, even the most elaborate description of a sound can't be truly understood and experienced unless it is played through some other means, such as on a musical instrument. And some sound marks (such as MGM's roaring lion) are even harder to describe because they can't be easily translated into musical notes.

These difficulties haven't prevented other countries from registering sound marks. Dozens of sound marks have been registered in the US alone. The fact is that many of these marks are highly distinctive and recognizable trade-marks. They should be registrable in Canada.

Video Games

To our knowledge, the only video game sound mark that has been registered in North America is the Russian folk song used in Tetris. That mark was registered in the US in 1999 by Elorg Corporation, which apparently owns the licensing rights for Tetris.

There is clearly plenty of opportunity for games companies to protect some of their memorable sound marks, such the sounds the PS3 makes when you load a game, or the 360's "achievement unlocked" sound, or EA's whispered "challenge everything". Elorg led the way. Who'll be next?

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Full post as published by Video Game Law Blog on January 27, 2009 (boomark / email).