Protection of Packaging in Canada or Win the speed-dating by protecting packaging!

Table of contents Definition Importance of packaging Protection of packaging Trade-Mark - 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 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).

Protection of packaging Legal protection through Intellectual Property Blending of legal protection Protections that can be hold simultaneously on the various aspects of the packaging For the present topic: Does not cover any innovation (which requires 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 public has come to identify such appearance with the wares or services of that person creating a proprietary right in that appearance*. 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

Trade-Mark / Get-Up Criteria Tri-partite series of conditions necessary to ground a successful 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* The more distinctive the get-up, the easier it is to establish a 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 the function of making the Product identifiable of a source (the public may rely on the appearance to recognize the product) If the get-up is an aggregation of different elements, the collection of appearances will need to be specific. Could there be any protection in trade dress all composed of non-distinctive elements? Distinctions should be drawn between a popular design and a get-up which is distinctive

Trade-Mark / 2-D Get-Up The trade-mark application should: (i) (ii) Contain a drawing of the trade-mark, article 30 (h) of the Trade-Marks Act 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

Trade-Mark / 2-D Get-Up However, if the two-dimensional trade-mark affixed on a three-dimensional object provides a better mean of identifying the mark, the Trade-Marks Office will accept the drawing as long as the 3 following requirements are respected: The configuration is presented in dotted lines There is a statement in the application which says that the 3D object shown in dotted lines does not form part of the trade-mark and is only produced to show an example of the manner affixing the trade-mark on a 3D object

Trade-Mark / 2-D Get-Up 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 the drawing shows where the trade-mark is affixed on the 3D object

Trade-Mark / 2-D Get-Up Common mistake: does not clearly set forth what is being claimed as a trade-mark Examples of 2-D Get-Up: - Packaging - Front presentation of the design - Unfolded packages

Trade-Mark / 2-D Get-Up Architectural trade-mark: i.e. total image and overall appearance including store-front presentation, window dressing, interior decoration of the store It is not a distinguishing guise: it does not represent a configuration or a packaging of the wares or services claimed Could constitute a trade-mark if it serves as a mean of identification Could be an important protection if the similarity in the more traditional trade-mark is not obvious but similarity in presentation is close: the whole may lead to confusion

Trade-Mark / 2-D Get-Up 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 trademark consists of the colours dark purple (Pantone code 2587C) and light purple (Pantone code 2567C) applied to the visible surface of portions of the particular object, namely an inhaler for administration of pharmaceuticals, shown in the attached drawing. The drawing is lined for the colours dark purple and light purple. 687313 OBLATE SPHEROID DESIGN

Trade-Mark / 2-D Get-Up The registration has been attacked on the ground that it is not distinctive and that, as a shaping of the ware, it should have been registered under S.13 as a distinguishing guise The inhaler has been successfully sold in Canada [$600 million CDN between 1989 and 2007] Recourse taken on December 21, 2007: The Applicants bear the burden of showing that at such date the trade-mark is not distinctive, in other words that the three types of consumers [physicians, pharmacists, patients] do not recognize the Mark by its appearance and do not associate the get-up to a single source

Trade-Mark / 2-D Get-Up The Federal Court said that to constitute a distinctive trademark 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 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

Trade-Mark / 2-D Get-Up The distinctiveness of a mark based on colour and shape may be diminished by its association with a registered trade-mark The get-up of a prescribed drug is almost never marketed without a label so the situation of choosing the product by the get-up is infrequent The court notes that there is no notice given of the mark on the product packaging or on the inhaler itself In the advertising the mark is not depicted as a self-standing mark Colour of inhalers functions as having a therapeutic meaning or association

Trade-Mark / 2-D Get-Up 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 - The feature must be connected to a particular source and must be a consideration in the purchasing decision

Trade-Mark / 2-D Get-Up 1443456 Two-dimensional mark - Packaging Design 748009 Two-dimensional Ghirardelli squares & bird design 1441113 Two-Dimensional - AFRIN PURESEA Packaging Design

Trade-Mark / 3-D Get-Up 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

Trade-Mark / 3-D Get-Up 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

Trade-Mark / 3-D Get-Up 679878 Extending fish profile Container Design The mark consists of a threedimensional fish device as applied to the particular packaging shown in dotted outline in the attached drawing 914908 Ring Design The mark consists of a threedimensional ring which comprises the initials of the University of Ottawa (UO), the logo of the Alumni of the University of 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 of which is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, 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 product from those of others

Trade-Mark / Distinguishing Guise Pitfalls More stringent to register than traditional trade-marks [show distinctiveness at time of filing] The exclusive use must not unreasonably limit the development of any art or industry Functionality - Section 13 (2) - Lego decision

Trade-Mark / Distinguishing Guise Colour Colour alone: not inherently distinctive Colour applied to a specific product, shape or design may acquire distinctiveness Burden is high Colours are distinguishing guises if the colours form part of a mode of wrapping or packaging wares the appearance of which is used to distinguish one person s wares from those of others

Trade-Mark / Distinguishing Guise If colour + shape of wares = distinguishing guise But ordinary trade-marks if: - The mark consists only of one or more colours applied to a 3-D object - The mark consists of colours + reading matter + 3-D elements applied in a particular position of a 3-D object - The mark consists of colours applied in a particular position of a 3-D object

Trade-Mark / Distinguishing Guise Evidence submitted must establish in what areas in Canada it has 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))

Trade-Mark / Distinguishing Guise 1432191 Distinguishing Guise Packaging 648855 Distinguishing 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 Protection for the life of the creator + 50 years Section 64 (2): Creates a complete defence against infringement for designs applied to a useful article if the article 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 - A trade-mark or a representation thereof or a label (Distinguishing guise is also protected under Copyright Act as all other trade-marks)

Copyright - Decision: CCH* The originality requirement applies to the expressive element of the work and not to the ideas embodied in the work For copyright to subsist, skill and judgment must be exercised in the expression of an idea. Skill involves the use of knowledge, developed aptitude or practised ability. Judgment involves the use of discernment or ability to form an opinion or evaluation by comparing different possible options in producing the work. The exercise of skill and judgment involves intellectual effort which is not so trivial as to be capable of being 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 Registered Copyright of packaging 1077079 Peanut butter packaging concept 353054 BEBE A BORD! Safety sign 1075497 Slap chop product 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 and combination 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 Maximum ten (10) years protection

Industrial Design Requires: - An element of originality (higher than that required for copyright) - Must make sure that nothing similar is already registered or in the public domain Regime of protection less in use than the others Not much litigation [compared to other Intellectual Property protection]

Industrial Design Pitfalls Difficult to enforce. In litigation, the Plaintiff must prove infringement or substantial similarities between the designs: i. Would the designs be confused with one another? ii. Would the design of the alleged infringing article exist absent the registered design? iii. Is the infringing article more similar to the registered design than to any prior user? Subjective decision-making: similarities determined by the eye.

Industrial Design Rules of Thumbs Time is of the essence for protection Marking is important: Section 17 of the Act

Industrial Design 113828 Packaging Box 112285 Packaging Box 103633 Dental floss Packaging 096767 Packaging cup for noodles

Industrial Design 124715 Packaging Material 120743 Wrapping Paper

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.