Below is an excerpt from John McKeown’s August Mailer where he discusses product packaging and trademark reform.
Product Packaging
There are a number of ways to protect product packaging. One possibility is by filing an application for a trademark.
Trademarks
If the product packaging is sufficiently durable and distinct it may be independently protected by a trademark registration. The new amended Trademarks Act expressly allows applications to be filed relating to a three-dimensional shape, a mode of packaging, a texture and the positioning of a sign. In addition if the colour of the packaging is distinctive, it may be protected in conjunction with the shape of the packaging. For example, a particular shade of blue is registered for use of the visible surface of the box in which WEDGEWOOD brand jewelry and porcelain is sold.
To the extent that the part of packaging to be protected is two-dimensional in nature
no special rules apply to the prosecution of that application. However, If the
trademark consists exclusively or primarily of one or more of the following signs:
(i) the three-dimensional shape of the packaging of any of those goods,
(ii) a mode of packaging goods,
(iii) a single colour or of a combination of colours without delineated contours,
(iv) a texture,
(v) any other prescribed sign
an applicant must furnish the Registrar with evidence establishing that the trademark is distinctive at the filing date of the application for its registration. The Registrar may restrict the registration to the specific goods or services and to the defined territorial area in Canada the trademark was shown to be distinctive of.
While it is possible to register the label or package design as a trademark and protect it in this fashion, there may be practical problems with this approach. First, it may be difficult to determine exactly what constitutes the trademark. For example, if there are a number of different models or signs of a product with different designations or descriptors, each separate presentation may have to be independently registered. If an application is filed relating only to the common elements of the label presentation, the registration obtained may be open to attack on the basis that only unregistered variations of the registered trademark are being used.
Second, while the actual brand name may not change, the label presentation may be changed from time to time with the result that new trademark application(s) need to be filed. Depending on the frequency of the changes or the length of the life of the product, maintaining trademark registrations may be uneconomic in light of the cost of obtaining registrations.
Effective Use of Surveys in Trademark Litigation August 21, 2014 LIVE Webcast
Survey evidence and its use in trademark litigation has always been a topic that I found to be particularly interesting. Some of you may be aware that a webinar was put on with the Knowledge Group last year dealing with this topic. It seems that others have found it interesting also and I have been asked by the Knowledge Group to take part in an updated webinar this year along with additional speakers.
If you are interested in attending please let us know as there may be complimentary passes still available as well as significantly reduced rates once the passes have been taken.
Click here to read the entire mailer.