Evolving Law Of Trade-Dress In A Digital World

• Published date: 25 July 2023
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Torkin Manes LLP
• Author: Mr Roland Hung

In an increasingly crowded market, businesses are investing heavily into unique customer experiences to boost brand identity and loyalty. As expected, there is a growing need to protect the design and other distinguishing elements incorporated into the appearance of products and services, as well as online customer experiences. Collectively, these features are known as the trade-dress or the look and feel of the brand. An example of trade-dress protection was illustrated in a recent Federal Court case, where it protected Skittles' trade-dress against three John Does who marketed and sold THC-infused confectionary products in Skittles lookalike packaging.

This article provides an overview of the law on trade-dress in Canada and surveys the movement in the US to protect the trade-dress of websites, applications and other digital properties.

PROTECTING TRADE-DRESS IN CANADA

In Canada, there is no separate process for registered trade-dress. Previously, trade-dress could be protected by registration under the Trademarks Act ("Act")¹ as a "distinguishing guise", which was defined in the Act as the packaging, containers or wrapping of "wares". However, this provision was repealed in 2014. Currently, trade-dress can be registered and protected as a trademark or as an industrial design.

Trademark Protection

In Canada, trademark registration is not required for trademark rights to subsist. However, trademark registration offers both national protection and statutory enforcement mechanisms that are not available for unregistered marks. Common law rights are available to unregistered trademarks, including trade-dress, through use and by creating a reputation for that mark.

Unregistered trade-dress established by ordinary commercial use can be protected under s. 10 of the Act, which codifies the common law tort of passing-off. Broadly, s. 10 requires unregistered trademark owners to produce evidence demonstrating how the mark is associated with the goods or services in the minds of consumers.

For the trade-dress to be registrable as a trademark, the trade-dress must be: (a) distinctive; and (b) not primarily functional. The Canadian Intellectual Property Office (CIPO) categorizes trade-dress categories, such as colour or three-dimensional shapes, as non-traditional trademarks, to be inherently non-distinctive. However, trade-dress can be protected in conjunction with a trademark if the mark itself is distinctive. Section 2 of the Act defines distinctive as a...