Trade Dress Protection In Canada

Trademarks create significant value for a business and are applicable to almost all business types. The most common examples of trademarks are brand names, logos, slogans, and phrases. However, amendments to the Trademarks Act, which came into force on June 17, 2019, broadened the scope of what is considered eligible for trademark registration purposes in Canada. In recognition of the changing marketing landscape, non-traditional signs such as colours, holograms, animated images, and scents became eligible for protection in the Canadian market.

“Trade dress” is a term used, particularly in the United States, to refer to the appearance of a good, a good’s packaging, or a service, and which serves to identify and distinguish the source of the good or service. In relation to a good, trade dress can refer to the appearance of an object, including its size‚ shape‚ color‚ and/or texture. In relation to a service, trade dress can refer to the design, layout or unique colour scheme of a store or restaurant. Well-known examples of trade dress include the shape of a Coca-Cola bottle (product packaging), Louis Vuitton red soled shoes (colour), and the layout of an Apple store (the “Apple Store Design”). With the broadening of what is eligible for trademark registration, protecting trade dress through a Canadian trademark has become more accessible.

As with all trademark types, there are both formal application requirements and substantive requirements in order obtain a trademark registration for trade dress in Canada. Formal application requirements for trade dress will depend on the nature of the trademark sought. For example, an application for the colour scheme of a business interior could be considered a three-dimensional shape, a position, or a colour per se trademark and each of these non-traditional trademark types have their own formal application requirements.

Regardless of which non-traditional trademark type is selected in a trademark application for registration of trade dress, there are at least two substantive requirements that must be met for the trade dress trademark to register. First, a trademark is not registrable if, in relation to the goods or services in association with which it is used or proposed to be used, its features are dictated primarily by a utilitarian function. This requirement is rather straight forward and can be readily accessed prior to filing the trademark application.

Second, the applicant must demonstrate that the trade dress has acquired distinctiveness throughout Canada as of the trademark application’s filing date. This means that the applicant must show that the Canadian public has come to recognize the trade dress as designating the source of a good or service as of the trademark application’s filing date. This is done by submitting an affidavit or statutory declaration from the applicant which includes sales figures and advertising figures throughout Canada (broken down by year and by province and territory). These types of figures are not always readily available and are not always sufficient to demonstrate to the Canadian Intellectual Property Office that the trade dress has acquired distinctiveness in Canada. Additionally, it is particularly difficult, if not impossible, to demonstrate the acquired distinctiveness of a trade dress when the applicant has not begun using the trade dress in Canada prior to filing the trademark application or only recently begun using the trade dress in Canada prior to filing the trademark application. In these circumstances, we use one of the following two strategies to acquire distinctiveness in Canada without losing rights to the trade dress in Canada.

The first strategy is to proceed with the preparation and filing of a Canadian trademark application for the trade dress, even if the trade dress has not yet been used in Canada or has only been used in Canada for a short period of time. This strategy is typically used when the trade dress relates to a service. This trademark application will not mature into a trademark registration. However, while the trademark application is pending at the Canadian Intellectual Property Office, the applicant can use the trade dress in Canada with the trade dress acquiring distinctiveness over time. The application will eventually be refused because acquired distinctiveness as of the filing date cannot be shown. However, once the application is close to being refused (which can take a number of years from filing date), a second Canadian trademark application for the same trade dress is filed. The applicant can then submit evidence of acquired distinctiveness that was obtained any time prior to the filing date of the second application to demonstrate that the trade dress has acquired distinctiveness as of the filing date of the second application.

If the trade dress relates to the appearance of a good or a good’s packaging, an alternative strategy is to first file an application for a Canadian industrial design. Industrial designs protect visual features such as shape, configuration, pattern or ornament, or any combination of these features, applied to a finished article. This is similar, but distinct from the protection of trade dress as trade dress also services to identify and distinguish the source of goods or services. Once the industrial design application has been filed, the applicant can start using the trade dress in Canada. Canadian industrial design registrations provide a term of protection beginning on the date of registration and lasting the longer of 10 years from the date of registration and 15 years from the filing date of the industrial design application. This period of time is likely adequate in which to acquire distinctiveness for the trade dress. Prior to the term of the industrial design registration coming to an end, a Canadian trademark application for the trade dress is filed, together with evidence of acquired distinctiveness over the last 10 or 15 years.

If an applicant cannot demonstrate that their trade dress has acquired distinctiveness throughout Canada prior to the filing date of the trademark application, they nevertheless may be entitled to geographically limited protection in the Canadian provinces and territories in which they can show than their trade dress has acquired distinctiveness.

Obtaining trademark registration of trade dress provides several advantages, including the exclusive use to the trade dress throughout Canada. A trademark registration also assists the owner in enforcing these rights, as the registration is considered to be direct evidence of ownership. Obtaining registration of a trademark in Canada provides the owner with additional legal remedies that are not available to an owner of an unregistered trademark, including Federal Court infringement and depreciation of goodwill actions. In cases where registration is not possible in view of the above two substantive requirements, common law rights may be acquired in the Canadian provinces and territories in which the trade dress has acquired distinctiveness. The owner of an unregistered trademark may only enforce its trademark rights through a claim of passing off. Additionally, unlike other forms of intellectual property such as patents, industrial designs, and copyright, trademarks registrations can be renewed indefinitely as the long as the trademark continues to be in use.

If you would like our help with trade dress, please make a complimentary and confidential no-obligation appointment with a member of our team.