Below is an excerpt from John McKeown’s October Mailer where he discusses protecting product shape and appearance.
Distinguishing Guise
The Trade-marks Act contains provisions which allow for the registration of product “getup” as a trade mark. A distinguishing guise is defined to mean 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 is registrable only if
a) it has been used in Canada by the applicant to such an extent 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 will not interfere with the use of any utilitarian feature embodied in the distinguishing guise.
The owner of a distinguishing guise generally has the same rights as those available to a trade mark owner.
An applicant seeking to register a distinguishing guise must provide evidence similar to that required to establish acquired distinctiveness or secondary meaning concerning a regular trade mark. The registration of the distinguishing guise may be limited to a defined area of Canada.
A distinguishing guise incorporating functional features of a product which relate primarily or essentially to the product itself will not be registrable. For example, in a case relating to registrations for distinguishing guises of a triple headed rotary shaver assembly the registrations were expunged on appeal to the Federal Court of Appeal.
The court observed that every form of trade mark, including a distinguishing guise is characterized by its distinctiveness. Since a distinguishing guise is not different in essence from a design mark, it must be governed by the same considerations relating to functionality and public policy. It is permissible to allow a trade mark owner to distinguish their wares from their competitors by monopolizing the mark used in relation to them but not by monopolizing the wares. The court concluded that to the extent that functionality relates primarily or essentially to the wares themselves, it will invalidate a trade mark registration of a distinguishing guise.