Canada: Traps For The Unwary – Protecting Product Shape And Appearance

Last Updated: January 24 2017
Article by John McKeown

A recent decision of the Federal Court considered the rights associated with a line of playground sculptures.

The Facts

The plaintiff specializes in the design, development, manufacturing, marketing, and branding of playground equipment. They developed a line of so called playground sculptures which included works entitled Performer Arch, Performer Dome and Explorer Dome. The plaintiff's playground equipment was designed and built for the use of children on playgrounds and to be played with and climbed on etc. While the sculptures have aesthetic features they are also designed to be playful and safe, and are subject to technical safety requirements including requirements relating to arm reach and rope size.

The Performer Dome, which is representative of the plaintiff's products, is shown below:

The defendant is an Ontario corporation which is a competitor of the plaintiff's. The defendant received requests from its distributors for products similar to the plaintiff's sculptures. As a result the defendant engineered a line of playground equipment that was designed to be the equivalent of the plaintiff's sculptures.

The Action

The plaintiff claimed that the design of their playground sculptures was a distinguishing guise. In addition, it was alleged that the defendant directed attention to its products in such a way as to cause or to be likely to cause confusion between the two lines of playground structures. Finally, the plaintiff alleged that it was the owner of copyright relating to its playground sculptures and that the defendants infringed the copyright.

The defendant denied any responsibility and said that the plaintiff's failure to seek protection under the Industrial Design Act was fatal to their case.

The Trademarks Act

The definition of a trademark under the Act includes a "distinguishing guise" which is defined as consisting of "a shaping of goods...the appearance of which is used by a person for the purposes for distinguishing goods manufactured, or sold by them from those manufactured, or sold, by others."

The plaintiff alleged that the appearance of its playground structures was recognised by the public as having a particular source and that the visual external appearance and three dimensional shape of each of the sculptures, was a distinguishing guise.

Unfortunately, for the plaintiff the court found that the plaintiff had not presented sufficient evidence to show that the relevant market recognized the shape and appearance of its playground sculptures as having a single source or that the shape of the sculptures was used to market them. On the contrary the evidence seemed to indicate that the plaintiff used a traditional written trademark to indicate the source of its products to customers.

The judge observed that despite the connection with a product, a trademark must not be confused with the product. A trademark is something else, a symbol of connection between the source of the product and the product itself.

For the same reasons the plaintiff was unsuccessful in asserting a claim for passing off. In addition, the plaintiff was not in a position to show that there was any goodwill associated with its playground sculptures in Canada.


The plaintiff established that it owned copyright in its sculptures and that the defendant had made reproductions of its playground sculptures that were prima facie infringing. The Copyright Act provides there is no liability for infringement where copyright subsists in a design applied to a useful article and with the authority of the copyright owner the article is reproduced in a quantity of more than 50. For the purposes of this provision a useful article is "an article that has a utilitarian function". A "utilitarian function" means a function other than merely serving as a substrate or carrier for artistic or literary matter.

The plaintiff argued that its sculptures were not useful. However, it was evident to the court that they were since they were designed and built for use on children's playgrounds, to be played with and climbed on.

It was not disputed that the plaintiff had authorized that more than the 50 reproductions of each of its playground sculptures be manufactured on a worldwide basis, which had occurred before the defendant copied the plaintiff's sculptures. However, each of the plaintiff's playground structures had not been reproduced more than 50 times in Canada when the defendant commenced selling and manufacturing the impugned products.

When the judge considered the wording of the relevant provision of the Copyright Act, she said it was clear that the section should be interpreted by reference to the actions of the parties on a worldwide basis. As a result, the plaintiff's claim for copyright infringement was dismissed.

Industrial Designs

The Industrial Design Act applies to designs which means features of shape, configuration, pattern or ornament and any combination of those features that, in a finished Article, appeal to and are judged solely by the eye. A registration could likely have been obtained under the Act for the plaintiff's sculptures. Unfortunately for the plaintiff, if a design has been published anywhere in the world more than 1 year prior to date of the application in Canada, a registration will be refused. In this case the plaintiff failed to obtain protection in Canada under the Industrial Design Act.


This situation in Canada as illustrated by this case is substantially different from that in the United Kingdom or in the European Union. In the U.K. and countries which are members of the EU it is possible to assert rights relating to a non-registered design right that protects the shape and configuration of the products in issue. The term of protection of the relevant rights in the U.K. and EU vary as does the term of protection for registered designs.

Frequently the failure to file a timely application for industrial design in Canada is a trap for the unwary. This is particularly so for businesses from the U.K. or the EU who may be relying on the non-registered design right. It would make sense for the Government to consider making a non-registered design right available in Canada.

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

John McKeown
In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.