Entrepreneurs considering introducing a new product or service brand offering in Canada readily turn their minds to filing proposed use trade-mark applications to ensure they can use key logos, phrases and symbols as trade-marks in Canada. Fewer, though, consider protecting the ornamental features of their product lines, packaging, and associated brand value items such as store fixtures, furniture and service ware.
Proposed use trade-mark applications are valuable, and often serve as a legitimizing due diligence milestone looked to by investors as evidence of brand rights that can be securitized in the roll-out of a product or service offering in Canada. However, trade-marks do ultimately require use in trade in Canada prior to registration, continued use in trade to maintain rights, and ongoing control at law and in fact in order to preserve the owners’ rights to champion the exclusive monopoly accorded by the corresponding trade-mark registration. Moreover, registered trade-mark protection is restricted to the wares and services for which a trade-mark is registered and wares and services likely to be confused with it. Vigilant monitoring of both the Trade-Mark Register and the marketplace are of on-going importance not just to identify potential infringers, but also to maintain the distinctiveness of the registered trade-mark itself. Registered trade-marks in Canada that lose their distinctiveness are subject to attack and expungement from the Register.
It should also be noted that a three-dimensional mark is registerable in Canada, but it is important at the outset to classify whether the three-dimensional mark in question is either:
- An ordinary trade-mark (in which case one proceeds to register in a manner consistent with any other trade-mark filing); or
- A “distinguishing guise” in which circumstance the application and registration is not for a trade-mark per se but rather for the distinguishing guise. Under the Trade-marks Act (Canada) (the “Trade-marks Act”) a “distinguishing guise” is either1:
- A shaping of wares or their containers; or
- A mode of wrapping or packaging wares,
the appearance of which is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others.
A distinguishing guise is registrable in Canada only if it has been used as such in Canada by the applicant or its predecessor-in-title so as to have become distinctive at the date of filing an application for its registration; and subject to the limitation that its use in association with the wares or services with which it has been usedis not likely unreasonably to limit the development of any art or industry2. Accordingly, an application for a distinguishing guise cannot be made in Canada on a proposed use basis. In order to verify an applicant’s claim to a distinguishing guise, the applicant must also furnish the Registrar of Trade-Marks with evidence by way of affidavit or statutory declaration establishing the extent to which, and the time during which, the trade mark has been used in Canada, and with any other evidence that the Registrar may require in support of the claim3. Having regard to the evidence adduced, the Registrar of Trade-Marks is entitled to restrict the registration to a defined territory within Canada in which it has been shown to have become distinctive4.
On the other hand, as an initial strategy, brand entrepreneurs might well wish to consider seeking registration for the novel ornamental elements of their wares, containers and/or packaging as industrial designs under the Industrial Design Act (Canada)5; especially if their proposed three-dimensional marks would otherwise be considered distinguishing guises. Registration as an industrial design in Canada, and the monopoly it affords, is not dependent upon use in trade nor acquired distinctiveness. Moreover, while there are product/packaging marking requirements if the owner of an industrial design wishes to pursue more than simply an injunction against use by an infringer6, there is no need to document or prove de facto and de jure control over a licensee of the industrial design (as is the case in the enforcement of a trade-mark). In Canada industrial design protection runs for a term of 10 years from the date of registration (not application), provided a maintenance fee is paid before the expiry of the fifth year from registration7. This 10-year window should afford most brand developers ample time to assess the strength, and distinctiveness of their distinguishing guises introduced in Canada and offer a modicum of protection for that ornamentation pending the filing of an application for protection as a distinguishing guise.