There are a number of ways to protect product packaging. One
possibility is by filing an application for a trademark.
If the product packaging is sufficiently durable and distinct it
may be independently protected by a trademark registration. The new
amended Trademarks Act expressly allows applications to be filed
relating to a three-dimensional shape, a mode of packaging, a
texture and the positioning of a sign. In addition if the colour of
the packaging is distinctive, it may be protected in conjunction
with the shape of the packaging. For example, a particular shade of
blue is registered for use of the visible surface of the box in
which WEDGEWOOD brand jewelry and porcelain is sold.
To the extent that the part of packaging to be protected is
two-dimensional in nature
no special rules apply to the prosecution of that application.
However, If the
trademark consists exclusively or primarily of one or more of
the following signs:
(i) the three-dimensional shape of the packaging of any of those
(ii) a mode of packaging goods,
(iii) a single colour or of a combination of colours without
(iv) a texture,
(v) any other prescribed sign
an applicant must furnish the Registrar with evidence
establishing that the trademark is distinctive at the filing date
of the application for its registration. The Registrar may restrict
the registration to the specific goods or services and to the
defined territorial area in Canada the trademark was shown to be
While it is possible to register the label or package design as
a trademark and protect it in this fashion, there may be practical
problems with this approach. First, it may be difficult to
determine exactly what constitutes the trademark. For example, if
there are a number of different models or signs of a product with
different designations or descriptors, each separate presentation
may have to be independently registered. If an application is filed
relating only to the common elements of the label presentation, the
registration obtained may be open to attack on the basis that only
unregistered variations of the registered trademark are being
Second, while the actual brand name may not change, the label
presentation may be changed from time to time with the result that
new trademark application(s) need to be filed. Depending on the
frequency of the changes or the length of the life of the product,
maintaining trademark registrations may be uneconomic in light of
the cost of obtaining registrations.
Effective Use of Surveys in Trademark Litigation August 21,
2014 LIVE Webcast
Survey evidence and its use in trademark litigation has always
been a topic that I found to be particularly interesting. Some of
you may be aware that a webinar was put on with the Knowledge Group
last year dealing with this topic. It seems that others have found
it interesting also and I have been asked by the Knowledge Group to
take part in an updated webinar this year along with additional
If you are interested in attending please let us know as there
may be complimentary passes still available as well as
significantly reduced rates once the passes have been taken.
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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