Protecting Product Shape and Appearance under the Trademarks Act

In our July blog, we discussed the importance of product shape and appearance as tangible elements of a brand. In many markets, product shape is a key component of brand identity. Consumer perception may be strongly influenced by the aesthetic appearance of the product and its packaging.

The primary methods of protecting product shape and appearance are registration under the Trademarks Act as a three-dimensional shape or a mode of packaging goods, registration under the Industrial Design Act, and common law actions for passing off. Registration under the Industrial Design Act is time-sensitive and must occur within one year of publication of the design in Canada or elsewhere.

This month, we consider protection under the Trademarks Act.  The starting point is filing an application. If a trademark consists exclusively or primarily of one or more of the following signs:

(i) the three-dimensional shape of any of the goods specified in the application, or of an integral part or packaging of any of those goods; or

(ii) a mode of packaging goods,

the applicant must furnish the Registrar with evidence to establish that the trademark was distinctive at the filing date of the application. Based on the evidence, the Registrar must restrict the registration to the goods or services, and to the defined territorial area in Canada, for which the trademark is shown to be distinctive.

These requirements are similar to those that previously applied to a mark claimed to be a “distinguishing guise.” Because there is a general requirement to show that a trademark is distinctive, registration will generally depend on evidence of use. In practice, this means that considerable time and effort may be required to locate evidence on a regional basis and prepare supporting affidavits.

To the extent that the applied-for mark incorporates functional features of a product that relate primarily or essentially to the product itself, it is unlikely to be registrable under well-established case law concerning distinguishing guises.

In addition, a trademark is not registrable if, in relation to the goods or services with which it is used or proposed to be used, its features are dictated primarily by a utilitarian function. The concept of “utilitarian function” is not defined, but the approach likely to be followed will be similar to functionality as a bar to registration.

Although protection can be difficult to obtain, it may be commercially important where product shape or packaging functions as a meaningful element of brand identity and consumer recognition.

If product shape or packaging is an important part of your brand identity, we would be pleased to help you consider the available options for protection.

To stay informed visit my blog and subscribe to my bi- monthly newsletter discussing the latest decisions and law concerning trademarks and copyright.

If you have questions, please contact me at  jmckeown@LN.Law

John McKeown

Loopstra Nixon LLP.  

130 Adelaide St W Suite 2800Toronto, Ontario, M5H 3P5Canada

 jmckeown@LN.Law

437 290-5960

This article is of general nature and is not intended to provide specific legal advice as individual situations will differ. Specialist advice should be sought about your specific circumstances. Copyright © John Mckeown, All rights reserved. To unsubscribe to the IP Update please send me an email at jmckeown@Ln.Law

Please feel free to share this post