In an increasingly crowded market, businesses are investing
heavily into unique customer experiences to boost brand identity
and loyalty. As expected, there is a growing need to protect the
design and other distinguishing elements incorporated into the
products, packaging as well as off and online customer experiences.
Collectively, these features are known as the trade-dress or the
look and feel of the brand. The recent crack-down on 22 counterfeit Apple
stores illustrates the importance of trade-dress protection.
This article provides an overview of the law on trade-dress in
Canada and surveys the movement in the US to protect the trade
dress of websites, apps and other digital properties.
PROTECTING TRADE-DRESS IN CANADA
In Canada, trade-dress can be protected by registration under
the Trade-marks Act ("Act") as a "distinguishing
guise", which is defined in the Act as the packaging,
containers or wrapping of "wares". Unlike regular
trade-marks, trade dress can only be registered as a distinguishing
guise if it has become "distinctive" or recognizable to
the public as associated with a brand or product.
Unregistered trade-dress established by ordinary commercial use
can still be protected under s. 10 of the Act, which codifies the
common law tort of passing-off. Broadly, s. 10 requires the
plaintiff to show that the trade-dress is publicly associated with
a certain brand or product in Canada as well as deception of the
In a recent decision, the Federal Court ordered a
restaurant to remove a mural painting that infringed the trade
dress of a competing restaurant. The Court reasoned that the mural
embodied the thematic concept of the plaintiff's franchise
restaurants and the mural was a prominent design feature in every
A significant limitation on the use trade-dress is regarding
functional features. In Kirkbi AG v Ritvik Holdings,
the Supreme Court of Canada held that the feature of LEGO
bricks that allows them to snap together could not be protected as
trade-dress because it is primarily a functional
The principle from Kirkbi applies to commercial spaces
as well. For example, the US Patents and Trademarks Office required Apple to remove recessed lighting,
seating and shelving from its trade-dress application for its
retail stores. 2
TRADE-DRESS FOR WEBSITES AND OTHER DIGITAL PROPERTIES
There is considerably more trade-dress litigation in the US than
in Canada, particularly regarding the look and feel of
In the US, trade-dress claims are brought under the Lanham Act
and must allege that:
The trade-dress is distinctive and identifies the source of the
There is a likelihood of confusion between the parties'
goods or services; and,
The trade-dress is not functional.
In a recent New York case,4 a trade-dress claim was
dismissed because the plaintiff did not persuade the Court that the
elements on its website amounted to a distinctive look and feel
that a viewer would associate with its business. The Court noted
that simply cataloguing a website's features is insufficient to
establish a trade-dress. Plaintiffs must plausibly describe how the
elements come together to synthesize the brand's look and
While the law is still early in development in the US, it is
clear that US courts are prepared to enforce the trade-dress of
websites with a distinctive "look and feel" associated
with its brand or product.
As sales and consumer interaction shifts online and into mobile
applications, businesses should be more vigilant about protecting
their brand identities and trade-dress.
1. 1429539 Ontario Limited v Café Mirage
Inc., 2011 FC 1290.
2. Office Action Outgoing for U.S. Trademark Application,
Serial No. 85,036,990 (Aug. 23, 2011).
3. Express Lien Inc. v National Ass'n of Credit
Management Inc., 2013 WL 4517944 (ED La August 23,
4. Parker Waichman LLP v Gilman Law LLP et al.,
(EDNY, Jul. 24, 2013).
The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
Last year we saw the Canadian Courts release trademark decisions that granted a rare interlocutory injunction, issued jailed sentences for failure to comply with injunctive relief, grappled with trademark and internet issues...
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