protection of packaging in canada win the “speed-dating ... · trade-mark / 2-d get-up • the...

Protection of Packaging in Canadaor

Win the “speed-dating” by protecting packaging!

By Chantal Desjardins

Tous droits réservés © Goudreau Gage Dubuc / All rights reserved © Goudreau Gage Dubuc

June 2010

Table of contents

• Definition

• Importance of packaging

• Protection of packaging

� Trade-Mark

- 2-D get-up- 2-D get-up

- 3-D get-up

- Distinguishing guise

� Copyright

� Industrial Design

• Conclusion

Definition packaging

• Packaging itself + container bundled with the product

• Elements which may be two or three-dimensional

• No protection for functionality (Unless under the • No protection for functionality (Unless under the Patent Act)

Why packaging?

• Commercial importance

In marketing theory:

- Packaging stimulate sales

- Consumers come to recognize containers to buy products

- Value of product enhanced by the packaging

- It even has potentially independent value [sometimes even more than its content]

- Dr. Georges Day “People seek the benefits that products provide rather than the products per se. Specific products or brands represent combinations of benefits and costs. ”

Therefore even the packaging can constitute a “benefit”.

Why packaging?

• In many cases, the differentiation of the

products (from the others in the marketplace) is

less than the overall branded product unit (which

has an influence on the decision to buy or not).has an influence on the decision to buy or not).

Protection of packaging

• Legal protection through Intellectual Property

• Blending of legal protection

• Protections that can be hold simultaneously on the variousaspects of the packaging

• For the present topic: Does not cover any innovation (whichrequires utility)

Trade-Mark

• Definition of Packaging in connection with trade-mark:

-The distinctive presentation (usually wrapping, label, color,shape) of a product or an enterprise whereby the publichas come to identify such appearance with the wares orservices of that person creating a proprietary right in thatappearance*.

• Traditional trade-mark (whether common law or registered)

• Trade-mark and industrial design are not mutually exclusive

• If the features of the packaging are merely ornamental, it is not protected as a trade-mark

*See the remarks of the Supreme Court in the Mattel case as to the purpose and function of a trade-mark

Trade-Mark

• Any patent obtained for the packaging must be considered

carefully because it could lead to a conclusion that the party

considered the packaging as having a primarily functional use

Trade-Mark / Get-Up

• Acquisition of secondary meaning

• Evidence of a reputation is required. How?

- survey

- market search

- figures of sales

- amount spent on publicity, advertising, promotion- amount spent on publicity, advertising, promotion

Trade-Mark / Get-Up

• Criteria

� Tri-partite series of conditions necessary to ground asuccessful action in passing-off regarding a get-up

1) The existence of a goodwill [secondary meaning]

2) Deception of the public due to a misrepresentation

3) Actual or potential damage*3) Actual or potential damage*

� The more distinctive the get-up, the easier it is to establisha reputation

*Ciba Ceigy Canada Ltd. V. Apotex Inc., 1992, 3 S.C.R. 120

Trade-Mark / 2-D Get-Up

• Get-up: The whole of the visible external appearance of the products.

� The product’s appearance or its packaging may have thefunction of making the Product identifiable of a source (thepublic may rely on the appearance to recognize the product)

� If the get-up is an aggregation of different elements, the� If the get-up is an aggregation of different elements, thecollection of appearances will need to be specific.

� Could there be any protection in trade dress all composed ofnon-distinctive elements ?

� Distinctions should be drawn between a popular design and aget-up which is distinctive


• The trade-mark application should:

(i) Contain a drawing of the trade-mark, article 30 (h) of the Trade-Marks Act

(ii) Specify that the trade-mark claimed is a two-dimensional trade-mark

(iii) The drawing of a two-dimensional trade-mark should show the trade-mark only and not the trade-mark affixed on a three-dimensional object


• However, if the two-dimensional trade-mark affixed on athree-dimensional object provides a better mean ofidentifying the mark, the Trade-Marks Office will accept thedrawing as long as the 3 following requirements arerespected:

� The configuration is presented in dotted lines� The configuration is presented in dotted lines

� There is a statement in the application which says that the3D object shown in dotted lines does not form part of thetrade-mark and is only produced to show an example ofthe manner affixing the trade-mark on a 3D object


• There is a description of the trade-mark in the application

and a clear indication that the trade-mark is two-dimensional.

The description shall not contain any indication which would

lead to believe that the trade-mark may incorporate 3D

elements as would be a statement specifying that theelements as would be a statement specifying that the

drawing shows where the trade-mark is affixed on the 3D

object


• Common mistake: does not clearly set forth what is beingclaimed as a trade-mark

• Examples of 2-D Get-Up:

- Packaging

- Front presentation of the design- Front presentation of the design

- Unfolded packages


• Architectural trade-mark: i.e. total image and overallappearance including store-front presentation, windowdressing, interior decoration of the store

� It is not a distinguishing guise: it does not represent aconfiguration or a packaging of the wares or services claimed

� Could constitute a trade-mark if it serves as a mean of� Could constitute a trade-mark if it serves as a mean ofidentification

� Could be an important protection if the similarity in the moretraditional trade-mark is not obvious but similarity inpresentation is close: the whole may lead to confusion


• Apotex Inc et al. v. Registrar of Trade-Marks and Glaxo Group Limited

(T-2240-7 2010 FC 291)

Get-up of a prescribed inhaler registered by Glaxo Group Limited: The trade-mark consists of the colours dark purple (Pantone code 2587C) and light purple(Pantone code 2567C) applied to the visible surface of portions of the particularobject, namely an inhaler for administration of pharmaceuticals, shown in theattached drawing. The drawing is lined for the colours dark purple and lightpurple.

687313

OBLATE SPHEROID DESIGN


• The registration has been attacked on the ground that it isnot distinctive and that, as a shaping of the ware, it shouldhave been registered under S.13 as a distinguishing guise

• The inhaler has been successfully sold in Canada [$600million CDN between 1989 and 2007]

• Recourse taken on December 21, 2007: The Applicants bear• Recourse taken on December 21, 2007: The Applicants bearthe burden of showing that at such date the trade-mark isnot distinctive, in other words that the three types ofconsumers [physicians, pharmacists, patients] do notrecognize the Mark by its appearance and do not associatethe get-up to a single source


• The Federal Court said that to constitute a distinctive trade-mark it is required that physicians, pharmacists and patients relate the mark to a single source and thereby use the mark to make their prescribing, dispensing and purchasing choice

� A trade-mark based on product colour and shape is likely to be weak

� Demonstrating that product appearance or get-up has become � Demonstrating that product appearance or get-up has become distinctive is not easy to satisfy

� In the realm of prescription medications, the significance of colours and shape to purchasing choices and brand identification is less obvious because the initial choice are made on an informed basis by physicians and pharmacists


� The distinctiveness of a mark based on colour and shape maybe diminished by its association with a registered trade-mark

� The get-up of a prescribed drug is almost never marketedwithout a label so the situation of choosing the product by theget-up is infrequent

� The court notes that there is no notice given of the mark on the� The court notes that there is no notice given of the mark on theproduct packaging or on the inhaler itself

� In the advertising the mark is not depicted as a self-standingmark

� Colour of inhalers functions as having a therapeutic meaning orassociation


• Many previous decisions have been to the same effect

• The decision has been appealed

• Therefore for the time being:

- Marking is very important

- Education of the public as well- Education of the public as well

- The feature must be connected to a particular source and must be a consideration in the purchasing decision


1443456

Two-dimensional

mark - Packaging

Design

748009

Two-dimensional

Ghirardelli squares

& bird design

1441113

Two-Dimensional -

AFRIN PURESEA

Packaging Design


• Where an application is filed for a 3-D mark that is not a

distinguishing guise, the application should clearly identify a

3-D mark

• When a 3-D mark consists of a shaping of wares that is not

one of the wares claimed in the application or related to

them, the mark is not a distinguishing guise


• The reverse is also true:

- If the mark is the product claimed in the application or related

to it, it would constitute a distinguishing guise


679878Extending fish profile Container Design

The mark consists of a three-dimensional fish device as appliedto the particular packaging shownin dotted outline in the attached

drawing

914908Ring Design

The mark consists of a three-dimensional ring which comprises theinitials of the University of Ottawa (UO),the logo of the Alumni of the Universityof Ottawa, two horses…

drawingof Ottawa, two horses…

Trade-Mark – Distinguishing Guise

• S.13 of this Act

a) A shaping of wares or their containers or

b) A mode of wrapping or packaging wares the appearance ofwhich is used by a person for the purpose of distinguishing orso as to distinguish wares or services manufactured, sold,leased, hired or performed from him from those of others.leased, hired or performed from him from those of others.

c) The distinguishing guise could include the combination of the shape of the product + other visual features such as the reading matter.

d) Potentially enjoy continuous protection / must remain distinctive.

Trade-Mark / Distinguishing Guise

Three factors for distinctiveness

� That the guise and the products be associated

� That the owner uses this association

� That the association enables the owner to distinguish his� That the association enables the owner to distinguish hisproduct from those of others


• Pitfalls

� More stringent to register than traditional trade-marks [showdistinctiveness at time of filing]

� The exclusive use must not unreasonably limit the developmentof any art or industry

� Functionality

- Section 13 (2)

- Lego decision


• Colour

� Colour alone: not inherently distinctive

� Colour applied to a specific product, shape or design mayacquire distinctiveness

� Burden is high

� Colours are distinguishing guises if the colours form part of amode of wrapping or packaging wares the appearance of whichis used to distinguish one person’s wares from those of others


� If colour + shape of wares = distinguishing guise

But ordinary trade-marks if:

- The mark consists only of one or more colours applied to a3-D object

- The mark consists of colours + reading matter + 3-Delements applied in a particular position of a 3-D objectelements applied in a particular position of a 3-D object

- The mark consists of colours applied in a particular positionof a 3-D object


• Evidence submitted must establish in what areas in Canada ithas become distinctive

• A guise cannot be registered as a certification mark*

* Registrar of trade-marks v. Brewers Association of Canada, 1982, 62 C.P.R. (2d) 145

(see definitions of “trade-mark” (mark or guise) and “certification mark” (only a mark))


1432191

Distinguishing

Guise Packaging

648855Distinguishing Guise

Packaging 3 Peppers

1317128

Orange Packaging

Design

Rothmans Benson

& Hedges Inc

v.

JTI-Macdonald TM

Copyright

• Copyright Act

- Designs

- Photos

- Literary works

• Rights enjoyed immediately on creation of works• Rights enjoyed immediately on creation of works

• Protection for the life of the creator + 50 years

• Section 64 (2): Creates a complete defence againstinfringement for designs applied to a useful article if thearticle is reproduced in more than 50

Copyright

• Section 64 (3) (b) of the Copyright Act in force since June 8,1988.

� Copyright exists in:

- Textile designs and designs applied to articles

- Graphics displayed on the face of an article- Graphics displayed on the face of an article

- A trade-mark or a representation thereof or a label

(Distinguishing guise is also protected under Copyright Actas all other trade-marks)

Copyright

• Under the Act, protection of moral rights

• Decision: Euro Excellence

Copyright

- Decision: CCH*

“The originality requirement applies to the expressive elementof the work and not to the ideas embodied in the work…

For copyright to subsist, skill and judgment must be exercisedin the expression of an idea. Skill involves the use ofknowledge, developed aptitude or practised ability. Judgmentinvolves the use of discernment or ability to form an opinion orinvolves the use of discernment or ability to form an opinion orevaluation by comparing different possible options in producingthe work. The exercise of skill and judgment involvesintellectual effort which is not so trivial as to be capable ofbeing characterized as a purely mechanical exercise.”

*CCH Canadian Ltd. v. Law Society of Upper Canada, 2004, 30 C.P.R. (4th), pp 3-4,Supreme Court of Canada

Copyright

• Pitfalls

� Design of 64 (3) created before June 8, 1988: no copyright

� Chain-of-title problems

Copyright

• Registered Copyright of packaging

� 1077079 Peanut butter packaging concept

� 353054 BEBE A BORD! Safety sign

� 1075497 Slap chop product packaging

� 1045661 WII Hardware packaging� 1045661 WII Hardware packaging

� 1029075 TWIX peanut butter chocolate bar packaging

� 1026306 Cigarette packaging artwork: DK's with shield and crown logo

� 1011259 Duracell ultra AA 4 pack packaging

Industrial Design

• Features of shape, configuration, pattern or ornament andcombination of these features that, in a finished article,appeal to and are judged solely by the eye.

• Needs to be original and not published more than one (1)year prior to application

• Normal protection: arises upon registration• Normal protection: arises upon registration

• Maximum ten (10) years protection

Industrial Design

• Requires:

- An element of originality (higher than that required forcopyright)

- Must make sure that nothing similar is already registered orin the public domain

• Regime of protection less in use than the others• Regime of protection less in use than the others

• Not much litigation [compared to other IntellectualProperty protection]

Industrial Design

• Pitfalls

� Difficult to enforce.

� In litigation, the Plaintiff must prove infringement orsubstantial similarities between the designs:

i. Would the designs be confused with one another?

ii. Would the design of the alleged infringing article existii. Would the design of the alleged infringing article existabsent the registered design?

iii. Is the infringing article more similar to the registereddesign than to any prior user?

� Subjective decision-making: similarities determined by theeye.

Industrial Design

• Rules of Thumbs

� Time is of the essence for protection

� Marking is important: Section 17 of the Act

Industrial Design

112285

Packaging Box

113828

Packaging Box

103633

Dental floss

Packaging

096767

Packaging cup

for noodles

Industrial Design

120743

Wrapping

Paper

124715

Packaging

Material

CONCLUSION

• Judge of the Federal Court said:

“… copyright, trade-mark and industrial design are not mutually

exclusive incorporeal property rights, but rather they made

shade into each other which result in neat questions when a

trial judge considers such a matter.”trial judge considers such a matter.”

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