By Paul W. Braunovan
March 11, 2008

Many of us are familiar with the concept of a trade-mark.  A trade-mark is defined in the Trade-marks Act as “a mark that 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”.  In simpler terms, a trade-mark’s function is to serve as an indicator of source: when you buy an computer that is branded with the name APPLE (and / or with the APPLE logo), you expect that you are purchasing the goods of Apple Inc., the well-known computer company.

 And while some of you may not be familiar with the term “distinguishing guise”, my guess is that you encounter this type of a trade-mark on a daily basis.

A distinguishing guise is a shaping of goods or their containers, or a mode of wrapping or packaging goods, where the owner uses this shaping, wrapping or packaging as an indicator of source.  Did you know that the shape of a goldfish for “edible crackers” is registered as a distinguishing guise?  Think also about the “rabbit” shape of a Nestle Quik chocolate syrup bottle.  The makers of these products recognize that consumers have come to associate the shape of the goods and / or their packaging with the goodwill of the maker of that product.  If I decide to sell chocolate syrup and put it in a rabbit shaped bottle under the brand name DONOVAN, I might very well be doing so because I know that some consumers are just going to buy the rabbit shaped bottle of chocolate syrup, even if sold under a different brand name.

 So what does a party need to do to protect the shape of their goods and / or packaging as a distinguishing guise?  Well, they will need to file a trade-mark application with the Canadian Intellectual Property Office.  In order for a distinguishing guise application to succeed, the applicant will have to show that the shape has become distinctive of the applicant as of the filing date of the application.  In other words, you have to have a reputation in the shape BEFORE you file your application.  Evidence will need to be filed to prove the existence of this reputation.

Further, the application will be registrable only if it is not likely to unreasonably limit the development of any art or industry.  In other words, if the shape of the goods and / or the packaging has some feature that is an advancement of art of industry, then it is not registrable.  A distinguishing guise should not be functional but should be solely used to distinguish the goods of a particular trader.  Other types of intellectual property law such as patents may be options if you’ve created a functional product or an improvement to an existing product.

A distinguishing guise application can be complex.  An applicant will need to file evidence of its pre-existing reputation and ensure that its distinguishing guise does not unreasonably limit the development of any art or industry.  Who would have thought that so many layers of complexity could exist behind those goldfish shaped crackers and rabbit shaped bottles of chocolate syrup?

This article was originally published in the March 11, 2008 edition of the Ottawa Business Journal.


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