"Trade dress," also known as a "Get Up," is a term generally used to refer to visual characteristics of a product or its packaging that identify to consumers the source of such product. Notable examples include the triangular packaging of the TOBLERONE chocolate bar or the shape of the COCA-COLA bottle, but trade dress can cover all manner of product or packaging such as the shape of a car grille, the colour and shape of a pill or a recognizable look of a clothing line.
Trade dress can similarly apply to services, such as the design, layout or unique colour scheme of a store or restaurant that would be recognized by the public as identifying the source of the store or restaurant services. Similarly, a distinctive and unique manner of displaying products in a store may be the subject of trade dress.
In Canada, trade dress can be protected both under the Trademarks Act ("Act") and at common law.
A trade dress can be registered with the Trademarks Office in Canada as a "distinguishing guise," which is defined in the Act as the "shaping of wares or their containers" or "a mode of wrapping or packaging wares."
However, unlike traditional trademarks, a distinguishing guise is only registrable in Canada if it has been used in Canada so as to have become distinctive as of the filing date; in other words, the applicant must show that the public has come to recognize the distinguishing guise as designating the source of the product. The applicant is required to prove such acquired distinctiveness through an affidavit or statutory declaration, and proof of acquired distinctiveness across Canada must be presented, failing which the resulting registration may be limited geographically.
A distinguishing guise is defined as a "trademark" under the Act, and, once registered, the owner of a distinguishing guise registration can enforce its rights as would any other trademark owner (subject to any geographical restrictions).
An unregistered trade dress can also be protected at common law through the tort of passing off. The classic test of passing off, which has also been codified in the Act, requires the plaintiff to show the existence of goodwill in the trade dress, deception of the public due to a misrepresentation, and actual or potential damage to the plaintiff. Where an entity can establish that it has a reputation and goodwill in a particular trade dress, such that the public recognizes the trade dress as belonging to a single source, that entity can prevent others from using a similar trade dress that would confuse the public as to source of the product or services involved.
Given that an owner of a trade dress essentially has to establish the first branch of the test for passing-off (i.e., existence of goodwill) to obtain a distinguishing guise registration from the Canadian Trademarks Office, one may question why it is worth seeking registration in the first place. There are several advantages to obtaining a registration rather than relying on common law rights, the first being that the term of protection for a registered trademark is potentially indefinite for so long as the trademark is not abandoned. A trademark registration also provides for additional causes of action beyond passing-off, including the right to prevent the sale, distribution or advertising of goods or services with a confusingly similar trademark by another, and the right to prevent the use of the registered distinguishing guise in such a manner as to depreciate the value of the goodwill attached to the distinguishing guise.
As can be appreciated, in Canadian law, allowing both registration and common law protection for the shape or design of a product or packaging or in the design or layout of a store or restaurant, a state exists that has potentially serious consequences in limiting the ability of other traders to produce and package their goods, or to design and operate their establishments. Both the Act and the jurisprudence developed at common law therefore incorporate various safeguards in an attempt to avoid unreasonably limiting other traders.
For instance, the Act prevents registration of a distinguishing guise that is likely to unreasonably limit the development of any art or industry. Similarly, a distinguishing guise registration will not prohibit others from using any utilitarian or functional feature that the distinguishing guise embodies.
Further, while a trade dress/distinguishing guise may be permitted to have some functional or utilitarian features (so long as such features do not create a monopoly on the function), the courts in Canada have held that a distinguishing guise or trade dress that is purely or "primarily" functional goes beyond the legitimate bounds of what a trademark should be allowed to protect, whether registered or unregistered. Rather, such functional features should be available for use by all traders, and a primarily functional trademark will therefore be barred from registration and cannot form a legitimate basis for a passing off claim. For example, the Supreme Court of Canada has held that the shape of LEGO bricks could not form a basis for a passing off action, as the purported trade dress consisted solely of the technical or functional characteristics of the bricks.
The law in Canada on trade dress is not as developed as in other jurisdictions where trade dress protection is available, such as the United States. However, the law in Canada is continuing to evolve in this area, with the protection of "non-traditional trademarks" such as trade dress, sounds, smell and moving marks being the subject of both statutory consideration and continued development through court decisions. For businesses dealing in products or packaging that have a unique visual appearance, or operating an establishment or display area with a distinctive look, careful consideration should be given to the possibility of trade dress protection, including whether protection as a distinguishing guise may be available and worth applying for under the Act.
Karen F. MacDonald, Vancouver
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