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.

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John McKeown
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