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What Is a Distinguishing Guise?

When thinking of trademarks, it is common to focus on concrete and distinctive combinations of words and/or images, such as brand slogans or product logos. Imagining that something like a pattern on a scarf or the shape of a designer handbag could constitute intellectual property is not something that many business owners think about. But maybe it should be! Decorative features, and/or the form and shape of a product or its packaging, can be integral to a product's success with consumers.

There are several available methods to protect the design of a product. The best intellectual property protection for the design in question may depend on the nature of the product itself (for example, whether it is a singular artistic work such as a painting or a replicable design such as a clothing pattern), and the length of time for which the protection is necessary. The three main ways through which the visual characteristics of a product can be protected are copyright, industrial design and get-up.

Trademark protection for get-up in Canada

A Canadian trademark registration for a distinguishing guise is effectively protection of product get-up, that is a type of trademark protection that protects the reputation in the overall appearance of a product or its packaging much like trade dress in the United States. Visual representations of services, such as a distinctive design of a business storefront, can also be covered under get-up.

Well known distinguishing guises include the shape of a COCA-COLA bottle, the shape of a TOBLERONE chocolate bar, and the colour and shape of certain pill tablets.

The basics of get-up protection

Protection of a get-up exists under common law in Canada, but stronger national exclusive rights can be obtained through registering a trademark for the distinguishing guise.

Getting a Canadian trademark registration for a distinguishing guise

A trade dress can be registered with the Trademarks Office in Canada as a "distinguishing guise," which is defined in the Trademarks Act as the "shaping of wares or their containers" or "a mode of wrapping or packaging wares."

Canadian law also requires that a distinguishing guise:

  1. must be distinctive across Canada, i.e., it must be in used in Canada and distinguishable by consumers at the date of filing (which generally means it must have been extensively used) and a declaration or affidavit to that effect must be included with the application;
  2. must not have functional purpose and be used for purely aesthetic reasons; and
  3. must not excessively inhibit the development of any art or industry.

If your distinguishing guise meets these conditions, it may be eligible for a Canadian trademark registration. As a "trademark" under the Act, once registered, the owner of a distinguishing guise registration can enforce its rights as would any other trademark owner.

At common law

For aesthetic designs that do not meet these conditions, it may be possible to protection the reputation in a get-up without applying for a trademark registration.

Under Canadian common law, the tort of passing off can apply. To establish passing off, the cause of action requires:

  1. the plaintiff to show that goodwill has been established in the brand;
  2. that there has been a deception of the public due to misrepresentation; and
  3. that actual or potential damages have been caused to the owner

Thus, passing off can be used to protect common law rights to a particular get-up. Nevertheless, an unregistered trademark does not provide its owner with the all the benefits that a registered one does – namely, protection is available only in the geographic region in which the owner operates and the mark can be shown to be well known rather than across the country by virtue of the exclusive rights provided by a trademark registration. Moreover, the trademark must be continuously used to retain any degree of protection.

Enforcement of your rights in a distinguishing guise

As discussed above, you may register the package or shape of your product as a distinguishing guise enabling you to take advantage of all remedies provided under the Trademarks Act in the case of infringement. If you do not have a registration and are dealing with a situation where your design is being unlawfully replicated, you may seek relief from a court through the tort of passing off.

How does protection of a distinguishing guise differ from other forms of intellectual property?

Filing an application for a distinguishing guide is only one of the many ways to protect the look and design of a product or service in Canada. A more common one is industrial design protection, which is registrable with the Canadian Intellectual Property Office for a term of 10 years. Industrial designs protect the visual features of an article; namely its shape, configuration, pattern and/or ornament. To qualify for industrial design protection, works must not be functional in nature. Industrial designs only protect physical goods, and cannot apply to qualities that are not visible to the eye. The distinguishing difference between industrial design and get-up is that, while an industrial design grants exclusive protection for a limited term, protection of a get-up as a distinguishing guide may run indefinitely as long as it is properly renewed and reputation in the get-up continues to exist.

Another possible protection for unique visual designs is copyright. Copyright protection is conferred automatically at the time of creation of an original work and has less stringent requirements for originality (a creation may be similar, though not substantially similar, and still be eligible for copyright). However, certain exclusions from copyright protection subsisting exist for designs applied to a useful article although there are a number of exceptions to such exclusions.

Protecting get-up strategically

It is key to remember that protecting the get-up of a product is not exclusive of other types of intellectual property available to Canadian designers and manufacturers. It is possible to use this protection concurrently with registering the product in question as an industrial design. If you think that you will be using your aesthetic design in production for more than ten years, it may be worth pursuing an industrial design registration to protect your product at the outset of commercialization, and then use the goodwill developed over the decade of operations to qualify for protection of a distinguishing guise.

Upcoming changes to Canadian law

With the changes to the Trademarks Act that will take effect in 2019, three-dimensional objects and distinctive colour patterns will be eligible for trademark registration. The option for registering for distinguishing guise protection will remain after the changes take effect. However, applying for a trademark registration for a distinguishing guise will no longer require proof of use.

With the inclusion of these new registrable options in the Trademarks Act, many designs that have previously not qualified for trademark protection may now be eligible. If you are the owner of such a design, it may be useful to consult with a lawyer about whether registration for a trademark will be possible under the new law, as a registered trademark confers significantly more protection than common law.

International trade dress protection

Protection of a product's three-dimensional design is available in several other jurisdictions and is most often referred to as trade dress. The United States has clear rules about what types of designs qualify for trade dress protection, in that the product in question must be non-functional and distinctive. The law across these two jurisdictions is quite similar. Trade dress protections also exist in several other countries, including the United Kingdom, Australia and New Zealand to varying extents. Considering filing in foreign jurisdictions may be an important part of your company's brand strategy and worth exploring.

Related resources:

Trademark FAQ