Below is an excerpt from John McKeown's September Mailer
where he discusses protecting product shape and appearance.
Product shape and appearance are tangible elements of a brand.
Both elements affect the image and values associated with the
brand, as well as distinguishing the brand from other brands.
A familiar example of a brand being expressed through product
shape is the COCA-COLA® bottle, which is one of the world's
most widely recognized product shapes. The shape has been protected
in many countries through trade mark registrations.
In a number of markets product shape is a key element of the
brand as is evident from the distinctive shape of MAG® brand
flashlights, PERRIER® brand water containers or FERRERO®
Product shape and appearance can be positively coordinated with
the brand image in a number of ways. First, product shape and
appearance should be consistent with the brand's positioning.
For example, the positioning of TYLENOL® brand acetaminophen
emphasizes fast relief and the design of the easy open bottle is
consistent with this. Second, an innovative product shape may
result in a product which is easier to dispense or which delivers
improved product freshness. For example, fresh soups and pasta
sauces have been successfully delivered in tetrapak containers and
bottled water has been delivered in crushable plastic containers.
Finally, in markets characterized by container homogeneity
differentiation may provide a competitive advantage.
The primary methods of protecting product shape and appearance
are registration under the Trade-marks Act as a distinguishing
guise, registration under the Industrial Design Act and a common
law action for passing off. Registration under the Industrial
Design Act is time sensitive and must occur within one year of
publication of the design in Canada or elsewhere.
More information to follow next month.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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$314,000 in damages, $66,000 in costs at first instance, plus solicitor-client costs on the appeal (which was found to be "without merit"). In Lam v. Chanel S. de R.L., 2017 FCA 38, the Federal Court of Appeal confirmed these awards for four instances of selling counterfeit CHANEL goods at a Toronto-area mall between 2011 and 2013
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