Comparing Trade Dress Protection in Canada and the United States

Introduction

If you type “little blue box” into Google, you will get an array of Tiffany & Co. images. Something as simple as colour can evoke thoughts of a brand. This is a very famous example of trade dress and a good example of how the look of product packaging can sway consumers. Brands will often invest millions of dollars into building and protecting their trade dress because of how strong a force it can be in the marketplace. The indefinite lifetime of trade dress also contributes to the strong market drive to protect it. Similarly, the monopolistic protection it can afford gives rise to stringent rules surrounding its enforcement. Especially for North American companies, consistent protection in both the U.S. and Canada is important. Below is a discussion of trade dress protections in both countries.

Get-up in Canada

Because there is often goodwill and reputation attached to the way goods are packaged or configured, Canadian law protects such configurations and packaging through “get-up”. Get-up (synonymous with “trade dress”) is registrable as a trademark in Canada but must first meet the requirements of:

1. Acquired distinctiveness; and
2. Non-functionality

Acquired distinctiveness in the marketplace means that the appearance of the product or packaging is recognized by customers and has thereby gained a secondary meaning (e.g., the distinctiveness of the little blue box or red-soled heels). Beyond colour, an example of a simple shape trade dress would be the classic triangular appearance of Toblerone bars. To be registrable in Canada, an applicant must provide evidence that their product is distinctive in the marketplace before the filing date (this means that any evidence of secondary meaning to consumers after the filing date is not considered by the examiner).

Non-functionality, or the requirement that trade dress be “not primarily functional”, means that the product/packaging design cannot be utilitarian (this type of product/package would only be eligible for patent protection). Simply put, the trade dress should not serve a practical, functional purpose beyond its aesthetic appeal. In Canada, there is only a consideration of utilitarian functionality, whereas the U.S. also considers aesthetic functionality (discussed below). See Trade Dress Protection In Canada for more information on get-up/trade dress protection in Canada.

U.S. Trade Dress

The law of trade dress in Canada is not as developed as that of other jurisdictions, such as the U.S. Trade dress in the U.S. refers to any of the following related to a product or service (including but not limited to) the colour, shape, size, configuration, and packaging of a product. It also incorporates anything that is designed to promote those products or services. We have discussed Tiffany boxes and Louboutin heels as examples of colour trade dress, and Toblerone chocolate as an example of shape trade dress. An example of trade dress over a pattern is the Burberry tartan pattern. A lesser-known form of trade dress is atmosphere. Restaurants with distinct atmospheres (such as McDonald’s), for example, can claim trade dress protection over that element of their services. The Lanham Act protects trade dress in the U.S.

1. Protecting Unregistered Trade Dress

Registration is not required to claim trade dress rights in the U.S. Both common law protection and trade dress registration with the Principal Registrar require the trade dress to be primarily non-functional as well as have a secondary meaning in the marketplace, similar to Canadian requirements. The main difference in the protection of registered and unregistered trade dress is through the standard of proof to ground secondary meaning. Trade dress designs registered at the Trademark Office for more than five years reach “incontestable” status, which means no proof of secondary meaning is needed, while the secondary meaning of unregistered trade dress will need to be proven. Below is a discussion of the requirements to register trade dress with the Trademark Office.

2. Requirements for Registration

To be registrable, trade dress directly related to the goods or services must be distinctive and non-functional. There are different categories of trademarks: generic, descriptive, suggestive, arbitrary, and fanciful. Generic marks cannot be registered, and descriptive marks can be registered but only after gaining secondary meaning. Unlike in Canada, there can be inherently distinctive trade dress in the U.S. This means evidence of secondary meaning is not required for designs that are not considered generic or descriptive. However, if not inherently distinctive, an applicant will need to show evidence of secondary meaning. This means that inherently distinctive trade dress would need to be something memorable that distinguishes the design from any other. As such, incorporating shapes or designs that are common in an industry will amount to weak trade dress.

Importantly, only trade dress that is distinct from the commercial goods or services with which it is associated can be considered inherently distinctive. This means that the trade dress of products themselves, such as clothing design, cannot be inherently distinctive. However, if there is an element of trade dress that is not the goods or services themselves and that functions to show the origin of the product/service, this could be inherently distinctive. For example, restaurant décor can be inherently distinctive in the U.S.

In the U.S., when considering whether something is primarily utilitarian and therefore not eligible for trade dress protection, there is both the doctrine of utilitarian functionality and the doctrine of aesthetic functionality. Aesthetic functionality in the U.S. goes a step further than the Canadian consideration of utilitarian functionality, excluding essential characteristics that, without allowing competitors to copy, might grant a significant advantage to the trade dress owner. Canadian courts have explicitly excluded consideration of aesthetic functionality, meaning that there could be differing outcomes in litigation between Canadian and U.S. courts when it comes to whether a design is eligible for trade dress protection.

What is aesthetic functionality? The doctrine was introduced to combat unwarranted monopolies on trade dress that are not easily avoided in the marketplace. Particularly, it was created to remedy situations in which consumer preferences for aesthetic qualities are quite consistent. An example of something that aesthetic functionality would protect against would be a monopoly over heart-shaped candy boxes. Especially around Valentine’s Day, such a monopoly would be extremely unfair to any other candy seller in the market.

3. Identifying Trade Dress

While trade dress is broad enough to cover anything that makes up the “overall look” of a product or packaging, this exact broadness has caused trouble for plaintiffs seeking trade dress protection in the past. Ambiguous claims of trade dress infringement have historically been dismissed in courts. U.S. courts have been clear that defendants are entitled to “adequate notice”, and trade dress litigation that starts out as ambiguous could give rise to changing or increasingly creeping claims of infringement over the course of proceedings. In complicated designs or patterns, it is important to ask what else, beyond an exact copy of the design, would be infringing.

Specificity in trade dress claims is better than trying to claim protection over a wide variety of designs. An effective strategy to avoid the problem of adequate notice is to define a universe of accused designs. Especially for issues where multiple designs may be implicated, defining the scope of the infringement claim will help the defendant understand what goods they will have to defend, and prevents creeping claims. Remember, while trade dress operates broadly, courts are reluctant to enforce overly broad or ambiguous trade dress claims.

Design Patents and Industrial Design Registration

In Canada, industrial design protects the visual features of a finished article. Importantly, applicants do not have to show secondary meaning in the marketplace when applying for industrial design protection. So, while industrial design and get-up can protect the same designs in Canada (i.e., a combination of features, in a finished article, that appeal to and are judged solely by the eye) the threshold for industrial design protection is lower. While it is easier for an applicant to gain such protection, the length of protection is significantly limited compared to trademark protection.

Similarly in the U.S., a design patent protects any combination of those features that, in a finished article, appeal to and are judged solely by the eye.

It is advisable for an applicant in Canada with a new design that has not been in commercial use yet to register for industrial design protection, proceed with commercializing their product, and then register with the Trademark Office once their product has gained secondary meaning in the marketplace. This extra step is not necessary for U.S. applicants since the U.S. has a supplemental register where applicants with descriptive designs can apply for protection, providing limited protection to marks that may in the future gain distinctiveness. Further, for trade dress that is separate from goods and services, there can be inherently distinctive trade dress in the U.S.

A Summary of Similarities and Differences Between Canadian Get-up and United States Trade Dress

Inherently distinctive trade dress: the U.S. recognizes inherently distinctive trade dress for designs that are separate from goods and services themselves. Canadian applicants can never argue inherently distinctive trade dress (it must be shown there is secondary meaning in the marketplace even if it concerns trade dress separate from the goods or services).

The doctrine of functionality: both Canada and the U.S. have the doctrine of utilitarian functionality (to ensure trade dress is not primarily functional), but only the U.S. recognizes aesthetic functionality (the recognition that some aesthetic elements are too integral to a certain market that granting a monopoly over the design would unfairly impede competition).

Pathways to registration: in Canada, registering an industrial design and then transitioning to trademark protection upon acquisition of distinctiveness within the marketplace is common. In the U.S., registration with the Supplemental Registrar for currently non-distinctive designs is more feasible (and more common) than registering a design patent before seeking trademark protection.

Conclusion

Obtaining trade dress protection is extremely important for brands, particularly for those brands who want to distinguish themselves in the marketplace. Trade dress has evolved to incorporate many different elements of products/services, product packaging, and other elements of marketing. When considering the benefits of, and difficulties associated with registering trade dress in both Canada and the U.S., it is important to understand how the doctrine functions in both countries.

Contact us now for a complimentary and confidential initial telephone appointment if you would like our help with trade dress protection.