{"id":1663,"date":"2008-03-11T00:00:00","date_gmt":"2008-03-11T00:00:00","guid":{"rendered":"https:\/\/perlaw.ca\/2008\/03\/11\/goldfish-shaped-crackers-using-trade-mark-law-to-protect\/"},"modified":"2019-07-23T16:56:33","modified_gmt":"2019-07-23T16:56:33","slug":"goldfish-shaped-crackers-using-trade-mark-law-to-protect","status":"publish","type":"post","link":"https:\/\/perlaw.ca\/fr\/2008\/03\/11\/goldfish-shaped-crackers-using-trade-mark-law-to-protect\/","title":{"rendered":"GOLDFISH SHAPED CRACKERS: USING TRADE-MARK LAW TO PROTECT THE SHAPE OF YOUR GOODS"},"content":{"rendered":"

Many of us are familiar with the concept of a trade-mark.\u00a0 A trade-mark is defined in the Trade-marks Act <\/em>as \u201ca 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\u201d.\u00a0 In simpler terms, a trade-mark\u2019s 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.<\/p>\n

\u00a0And while some of you may not be familiar with the term \u201cdistinguishing guise\u201d, my guess is that you encounter this type of a trade-mark on a daily basis.<\/p>\n

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.\u00a0 Did you know that the shape of a goldfish for \u201cedible crackers\u201d is registered as a distinguishing guise?\u00a0 Think also about the \u201crabbit\u201d shape of a Nestle Quik chocolate syrup bottle.\u00a0 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.\u00a0 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.<\/p>\n

\u00a0So what does a party need to do to protect the shape of their goods and \/ or packaging as a distinguishing guise?\u00a0 Well, they will need to file a trade-mark application with the Canadian Intellectual Property Office.\u00a0 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.\u00a0 In other words, you have to have a reputation in the shape BEFORE you file your application.\u00a0 Evidence will need to be filed to prove the existence of this reputation.<\/p>\n

Further, the application will be registrable only if it is not likely to unreasonably limit the development of any art or industry.\u00a0 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.\u00a0 A distinguishing guise should not be functional but should be solely used to distinguish the goods of a particular trader.\u00a0 Other types of intellectual property law such as patents may be options if you\u2019ve created a functional product or an improvement to an existing product.<\/p>\n

A distinguishing guise application can be complex.\u00a0 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.\u00a0 Who would have thought that so many layers of complexity could exist behind those goldfish shaped crackers and rabbit shaped bottles of chocolate syrup?<\/p>\n

\n

This article was originally published in the March 11, 2008 edition of the Ottawa Business Journal. <\/strong><\/p>\n","protected":false},"excerpt":{"rendered":"

Many of us are familiar with the concept of a trade-mark.\u00a0 A trade-mark is defined in the Trade-marks Act as \u201ca 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 […]<\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"_acf_changed":false,"wds_primary_category":0,"wds_primary_expertise_area":0,"footnotes":""},"categories":[82],"tags":[],"class_list":["post-1663","post","type-post","status-publish","format-standard","hentry","category-publication","expertise_area-intellectual-property","expertise_area-trade-marks"],"acf":[],"_links":{"self":[{"href":"https:\/\/perlaw.ca\/fr\/wp-json\/wp\/v2\/posts\/1663","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/perlaw.ca\/fr\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/perlaw.ca\/fr\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/perlaw.ca\/fr\/wp-json\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/perlaw.ca\/fr\/wp-json\/wp\/v2\/comments?post=1663"}],"version-history":[{"count":1,"href":"https:\/\/perlaw.ca\/fr\/wp-json\/wp\/v2\/posts\/1663\/revisions"}],"predecessor-version":[{"id":2908,"href":"https:\/\/perlaw.ca\/fr\/wp-json\/wp\/v2\/posts\/1663\/revisions\/2908"}],"wp:attachment":[{"href":"https:\/\/perlaw.ca\/fr\/wp-json\/wp\/v2\/media?parent=1663"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/perlaw.ca\/fr\/wp-json\/wp\/v2\/categories?post=1663"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/perlaw.ca\/fr\/wp-json\/wp\/v2\/tags?post=1663"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}