A recent decision of the Federal Court considered the difficult question of determining whether a mark was a distinguishing guise.
The Facts
Imperial Tobacco Products Limited (Imperial) filed a trade mark application consisting of the colour orange applied to the visible surface of the cigarette packaging shown below. The drawing was lined for colour as required by the regulations under the Trade-marks Act.
The Opposition
JTI-Macdonald TM Corp (JTI) opposed the application on the basis that the subject matter of the application was a distinguishing design and should not by registered as a trade mark. The opposition was dismissed by the Trade-marks Opposition Board and JTI appealed from this decision to the Federal Court.
Distinguishing Guise
A “distinguishing guise” means a shaping of the wares or their containers or a mode of wrapping or packaging wares, the appearance of which is used by a person for the purpose of distinguishing wares manufactured, sold, leased, or hired by it from those manufactured, sold, leased, hired or performed by others.
A distinguishing guise can be registered under the Trade-marks Act only if a) it has been used in Canada by the applicant so as to have become distinctive at the date of filing of an application for its registration; and b) the exclusive use by the applicant of the distinguishing guise in association with the wares or services with which it has been used is not likely unreasonably to limit the development of an art or an industry. The registration of a distinguishing guise does not interfere with the use of any utilitarian feature embodied in the distinguishing guise
Unlike an ordinary application for a trade mark, an applicant seeking to register a distinguishing guise must provide evidence to establish that the distinguishing guise has been used in Canada so as to have become distinctive. The onus of showing distinctiveness is on the applicant and has been categorized as a heavy burden similar to that required to show acquired distinctiveness or secondary meaning.
The Federal Court
JTI argued on appeal to the Federal Court that the applied for design should be characterized as a mode of wrapping or packaging of the wares and was a distinguishing guise. This was an issue of mixed fact and law falling within the expertise of the Board and reviewed on a reasonableness standard.
The judge referred to the fact that the application claimed “the colour orange applied to the visible surface of the particular packaging”. A colour alone may constitute a valid trade mark. The Board reasonably viewed the reference to the packaging as defining the scope of the application of the trade mark rather than part of the trade mark itself.
The judge then said that the decision was consistent with the current Trade-mark office Practice Notice. The Practice Notice states that a trade mark consisting only of one or more colours applied to the whole of a visible surface of a particular three-dimensional object, is not considered to be a distinguishing guise and may be registered as a trade mark unless it forms part of a mode of wrapping or packaging wares.
In the present case, the colour orange was not “an element” that “forms part” of the mark for which Imperial applied – the colour was the mark. The Practice Notice underscores the distinction between colour claimed alone, which is a trade mark, and colour claimed with other three-dimensional elements, which may be a distinguishing guise.
As a result it was concluded that the Board had reasonably found that the applied for design did not have to be registered as a distinguishing guise.
Comment
The case turned on the determination that the reference to the packaging in the application defined the scope of the application and was not a part of the trade mark itself. The decision shows that it can be difficult to decide what is or is not a distinguishing guise.
John McKeown
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.