In order to obtain immediate and comprehensive rights in 3D product and packaging shapes, one should employ a coordinated strategy that incorporates both trademark and design protection.
Trademark protection for 3D product and packaging shapes is highly desirable, since it offers potentially indefinite protection, and registration offers multiple legal grounds on which to sue a would-be infringer.
However, in order to obtain trademark protection, the shape must not be confusingly similar to a trademark that is the subject of a prior trademark application or registration, or one that has been previously used by another in Canada. (In Canada, it is possible to establish common law trademark simply by using and advertising a mark.)
Typically, one also must be able to prove that the shape: has acquired distinctiveness as a trademark through extensive use in Canada; is not primarily functional; and is not likely to unreasonably limit the development of any art or industry. The reason for this is that in Canada, 3D product and packaging shapes are likely to fall within the statutory definition of a “distinguishing guise” trademark.
Industrial Design Protection
In Canada, a design that consists of or incorporates features of shape, configuration, pattern or ornament that “appeal to and are judged solely by the eye" can be registered as an industrial design provided the following conditions are met: the design is not identical to, or so similar as to be confounded with, a registered design, and the design is original; and the design has not been publicly disclosed anywhere within one year prior to the date on which a Canadian industrial design application is filed.
Industrial design registration does not protect “features applied to a useful article that are dictated “solely” by a utilitarian function of the article,” nor “any method or principle of manufacture or construction”.
An industrial design registration is valid for 10 years, provided a maintenance fee is paid within five years of the date of registration. Importantly, recent case law has confirmed that industrial design protection does not preclude protection of the same design as a trademark.
Integrated Protection Strategies
For new 3D product and packaging shapes, one should first consider filing an industrial design application. As discussed above, the threshold for novelty is relatively low and the threshold of permitted functionality is relatively high. Moreover, successful registration will provide a ten-year monopoly, during which trademark distinctiveness can be acquired.
The second step should be to establish common law trademark rights in the 3D shape. The shape should be treated as a trademark, and appropriate marking and trademark legends and notices should be used.
Then, once trademark distinctiveness can be shown in a significant region of Canada, a distinguishing guise application should be filed.
In conclusion, by seeking both trademark and industrial design protection, it is possible to obtain immediate protection, and an overlay of rights offering multiple legal grounds on which to enforce one’s rights.
Please note that while additional protection by copyright has not been discussed in this paper, it may also be available and useful in some cases. Any reasonable steps to secure title to copyright in works embedded in the product or package are likely to be worthwhile, and registering copyright may also be considered as part of an overall strategy.