Canada: More Passing-Off And Product Shape

Last Updated: March 31 2017
Article by John McKeown

A recent decision of a UK court has considered a claim for passing-off relating to the shape and decoration of a product.

The Plaintiff

The plaintiff is the successor to a long established business producing housewares and kitchen utensils under the trademark TALA. The specific product in issue was a measuring cup which had been made since 1934. The cups are called a cook's dry measure because they are mainly designed for measuring dry foods, such as flour and sugar, rather than liquids. The cups have been sold through numerous well-known retailers in the UK.

At all material times the cups have been made of template in almost exactly the same conical shape with a small curved base. Measurements are marked in columns on the interior.

The five elements of the get-up relating to the plaintiff's product were (1) the shape of the cup; (2) the TALA name and the design of and the wording used on the (3) exterior and (4) interior of the cup; and (5) the brand name. The plaintiff asserted that it had acquired goodwill in features (1) to (4), individually or in combination and that they played such a dominant role in the get-up that passing-off could occur regardless of the role of the brand name.

The plaintiff established substantial sales of its measuring cups and substantial advertising relating to them.

The Defendant

The size and shape of the initial versions of the defendant's measuring cups were extremely similar if not identical to the plaintiff's cups. Subsequently the defendant agreed to cease selling these versions of their cup and instead sell a different version which had substantially different exterior get-up and was sold in association with a distinctive trademark. Unfortunately, the defendant was unable to effectively fulfill its promise not to sell the initial versions of the cup and additional shipments of these arrived in the UK. As a result the plaintiff instituted an action for passing-off.

The Action

The elements of a claim for passing-off are well-known. In order to succeed a plaintiff must establish first, that goodwill or reputation attached to the goods in the minds of the purchasing public by association with the identifying get-up such that the get-up is recognized by the public as distinctive of the plaintiff's goods. Second, a misrepresentation must be established (whether or not intentional) leading or likely to lead the public to believe that the goods offered by the defendants are the goods of the plaintiff. Third, the plaintiff must show that it has suffered damages.

There are real difficulties in proving that trade dress or get-up has acquired a secondary meeting as an indication of trade origin where it is consistently used in conjunction with a trademark or name. In a previous case when a plaintiff took a similar position to that taken in this case, the court observed that it was being invited to look not at the whole get-up but at a part that suited the plaintiff's case. The court must look at the whole get-up and not only the part of it in which the resemblance is to be found.

The judge reviewed in detail the existing cases dealing with this type of situation and concluded that in order to succeed the plaintiff must prove that the shape of its product is the crucial point of reference for those who buy it. This reliance on product shape is the acid test for the purposes of acquisition of goodwill in a product shape for the purposes of passing-off.

While a principle function of a brand name is to denote origin, the shape and get-up of a product are not normally chosen for such a purpose. A member of the public seeing a product which looks identical to another (a red cricket ball for example) does not necessarily, or even normally conclude that they come from the same source. The plaintiff must prove the shape of its goods have come to denote a particular source to the relevant public.

The judge concluded that the plaintiff faced an uphill task in proving that a single feature of get-up of a product – and especially the shape of the product itself – had acquired the necessary secondary meaning such that it was an indication of trade source. Length of use alone is insufficient.

In addition, the plaintiff did not present any direct evidence from members of the relevant public to support its contention that the shape of the cup alone identifies the trade origin of the product. As a result, the plaintiff failed to show that the shape of its cup was the crucial point of reference for those who specifically wanted such a cup as opposed to those who want a measuring cup which performs the same function as the plaintiff's cup. The action was dismissed.


Very few claims of passing-off relating to product get-up succeed, although from time to time plaintiffs are successful but these cases are driven by their specific facts.

A plaintiff in this situation can obtain some protection by obtaining an industrial design registration for the shape of its product if the registration is filed in a timely fashion, i.e., within one year of the publication of the design. Unfortunately, the term of protection under the Industrial Design Act is limited to ten years.

Finally, it is possible to apply for a trademark relating to product shape, currently under the Trademarks Act referred to as a distinguishing guise. However, in order to obtain a registration it is necessary to file evidence by way of affidavit and it can be relatively difficult to satisfy the test of acquired distinctiveness which is similar to the test discussed in this case.

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.