Below is an excerpt from
John McKeown's October Mailer where he discusses protecting
product shape and appearance.
The Trade-marks Act contains provisions which allow for
the registration of product "getup" as a trade mark. A
distinguishing guise is defined to mean a shaping of the wares or
their containers or a mode of wrapping or packaging wares, the
appearance of which is used by a person for the purpose of
distinguishing wares manufactured, sold, leased, or hired by it
from those manufactured, sold, leased, hired or performed by
A distinguishing guise is registrable only if
it has been used in Canada by the applicant to such an extent
as to have become distinctive at the date of filing of an
application for its registration; and
the exclusive use by the applicant of the distinguishing guise
in association with the wares or services with which it has been
used is not likely unreasonably to limit the development of an art
or an industry.
The registration of a distinguishing guise will not interfere
with the use of any utilitarian feature embodied in the
The owner of a distinguishing guise generally has the same
rights as those available to a trade mark owner.
An applicant seeking to register a distinguishing guise must
provide evidence similar to that required to establish acquired
distinctiveness or secondary meaning concerning a regular trade
mark. The registration of the distinguishing guise may be limited
to a defined area of Canada.
A distinguishing guise incorporating functional features of a
product which relate primarily or essentially to the product itself
will not be registrable. For example, in a case relating to
registrations for distinguishing guises of a triple headed rotary
shaver assembly the registrations were expunged on appeal to the
Federal Court of Appeal.
The court observed that every form of trade mark, including a
distinguishing guise is characterized by its distinctiveness. Since
a distinguishing guise is not different in essence from a design
mark, it must be governed by the same considerations relating to
functionality and public policy. It is permissible to allow a trade
mark owner to distinguish their wares from their competitors by
monopolizing the mark used in relation to them but not by
monopolizing the wares. The court concluded that to the extent that
functionality relates primarily or essentially to the wares
themselves, it will invalidate a trade mark registration of a
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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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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