Three-dimensional Marks

Publication Date: 2000-12-06

The requirements for registrability of a three-dimensional mark are dependent upon whether the mark falls within the definition of distinguishing guise in section 2 of the Trade-marks Act and accordingly upon whether the mark is a shaping of goods or their containers, or is a mode of wrapping or packaging goods. If a three-dimensional mark does not fall within the definition of a distinguishing guise, then it may be registrable as an ordinary trademark, i.e. as the kind of trademark referred to in paragraph (a) of the definition of trademark in section 2 of the Act. On the other hand, if a three-dimensional mark falls within the definition of a distinguishing guise, then it may be registered only as a distinguishing guise (and is subject to the special requirements applicable to registration of distinguishing guises) and cannot be registered as an ordinary trademark. This is because the context in which the word "mark" is used in the definition of "trademark" indicates that it is used in a narrow sense that excludes guise (Registrar v. Brewers Association, (1982) 62 C.P.R. (2d) 145.)

Where an application is filed for registration of a three-dimensional mark that is not a distinguishing guise, the application should include a description of the mark that makes clear that the trademark applied for is a three-dimensional mark. Where it is not clear whether an application is intended to cover a two-dimensional or a three-dimensional mark, the Office will ask the applicant for a written clarification.

Two-dimensional marks applied to three-dimensional objects

As a general principle, where an application is for a two-dimensional mark, the drawing of the mark should show the mark in isolation and should not show the mark as applied to a three-dimensional object. Where a better understanding of the mark would be achieved by submitting a drawing showing the mark applied to a three-dimensional object, such a drawing will be accepted by the Office provided that the applicant complies with the following requirements:

  1. The three-dimensional object must be shown in dotted outline.
  2. The application must contain a description of the mark that makes clear that the application covers the two-dimensional mark only.
  3. The description of the mark must specifically state that the three-dimensional object shown in dotted outline in the drawing does not form part of the trademark.

Should the description or the drawing of the mark explicitly or implicitly indicate that the mark has, in whole or in part, a shape that is defined by the shape of a three-dimensional object, the mark will be considered to be a three-dimensional mark and must be identified as such in the description. The Office will not, however, object to a mark being identified as a two-dimensional mark merely because the description includes a statement that the mark (whether it consists of one or more elements) is applied in a particular position (or positions) on a three-dimensional object; such a statement is viewed as being merely a restriction on the scope of protection being claimed for a two-dimensional mark.

Where (in cases where the drawing shows a mark applied to a three-dimensional object) the Office has doubts about an applicant's statement that its mark is a two-dimensional mark, the Office may request the applicant to submit a drawing showing the mark in a flat two-dimensional state; if the mark cannot be shown in a flat two-dimensional state, the Office will consider the mark to be a three-dimensional mark.

Distinguishing guises

Section 2 of the Act defines a distinguishing guise as follows:

"distinguishing guise" means

  1. a shaping of goods or their containers, or
  2. a mode of wrapping or packaging goods the appearance of which is used by a person for the purpose of distinguishing or so as to distinguish goods or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others;

It is to be noted that the words following paragraph (b), i.e. "the appearance of which … by others", apply to both paragraph (a) and paragraph (b). (See Brewers Association v. Registrar, (1979) 42 C.P.R. (2d) 93.)

An application for a distinguishing guise need not be limited to either only a shaping of goods or their containers on the one hand, or to only a mode of wrapping or packaging goods on the other hand. The Office considers that a distinguishing guise may include a combination of the elements described in both (a) and (b) of the definition. (See Smith, Kline & French v. Registrar (1987), 14 C.P.R. (3d) 432 at 435.)

Where a trademark contains both elements that fall within the definition of a distinguishing guise and elements that do not fall within the definition of a distinguishing guise (e.g. the combination of the shaping of a ware together with reading matter or colour appearing on the ware), the special provisions in the Act concerning distinguishing guises (i.e. sections 13 and 32) are still considered to apply (See Registrar v. Brewers Association (1982), 62 C.P.R. (2d)145.)

Colour

Trademarks that contain colour as an element are considered to be distinguishing guises if the colour forms part of a mode of wrapping or packaging goods the appearance of which is used for the purpose of distinguishing or so as to distinguish one person's goods or services from those of others. Further, as discussed above, where a trademark consists of the combination of colour and the shaping of a ware or container, the special provisions in the Act concerning distinguishing guises are still considered to apply.

The following in particular are not considered to constitute a distinguishing guise and are registrable as ordinary trademarks (unless they form part of a mode of wrapping or packaging goods):

Applications for trademarks that are not distinguishing guises, that are not two dimensional and that consist of or include one or more colours applied to the surface of a three-dimensional object must contain i) a drawing or drawings showing the visible features of that object in dotted outline, and ii) a description indicating that the trademark consists of the particular colour or colours only insofar as they are applied to the particular object shown in the drawing. The description and the drawings must of themselves clearly define what the trademark consists of and, although the Trademarks Office may request that specimens be furnished, the description should not itself refer to specimens since specimens are not an integral part of an application (See Novopharm v. Bayer (1999), 3 C.P.R. (4th) 305). An example of an acceptable description is: "The trademark consists of the colour purple applied to the whole of the visible surface of the particular tablet shown in the drawing."

Goods

The Office interprets the word "goods", in the definition of distinguishing guise, as meaning any articles that would normally be the subject of trade, i.e., sold, leased or otherwise distributed in the marketplace. In accordance with this interpretation, the word "goods" would not, for example, include fanciful three-dimensional objects that are created for the purpose of distinguishing goods or services but that are not articles that would normally be the subject of trade. The shaping of such a fanciful three-dimensional object would thus not fall within the definition of a distinguishing guise and may be registrable as an ordinary trademark.

Shaping of goods or their containers

Since in the definition of distinguishing guise in section 2 of the Act, the words "the appearance of which … by others" apply to paragraph (a), it is clear that a guise consisting of a shaping of goods or their containers can be used for the purpose of distinguishing either goods or services or both. However, taking into account the over-all scheme of the Act and in particular the underlying objectives of the provisions on guises, the Office considers that not every mark consisting of the shaping of goods or their containers is required to be treated as a guise.

Based upon section 13 of the Act, the key objectives of the distinguishing guise provisions appear to be to prevent the registration of a mark from interfering with the use of any utilitarian feature and from unreasonably interfering with the development of any art or industry. In order to give effect to these objectives without imposing an undue burden on all applicants for shape marks, the Office view is that whether or not a mark consisting of a shaping of goods or their containers must be treated as a guise depends upon the nature of the relationship between, on the one hand, the goods or their containers, the shaping of which constitutes the mark, and, on the other hand, the goods or services covered by the statement of goods or services in the application.

The Office position is that where an applicant wishes to register, in association with services, a three-dimensional mark consisting of a shaping of goods or their containers, the application is required to be for a distinguishing guise only if the goods or the containers are inherently related to the services. Otherwise, the application may be made for registration as an ordinary trademark. Under this approach, an application for the registration of the shaping of food containers for use in association with fast food restaurant services would need to be filed for registration as a guise but an application for the shape of a parachute for use in association with restaurant services could be filed for registration as an ordinary trademark.

Where an applicant wishes to register, in association with goods, a three-dimensional mark consisting of a shaping of goods or their containers, the Office position is that if the goods, the shaping of which or of their containers constitutes the three-dimensional mark, are covered by, or are closely related to, the goods that are included in the statement of goods in the application, the application must be for a distinguishing guise. Otherwise, the application may be made for registration as an ordinary trademark.

A "shaping of goods or their containers" is considered to include both a shaping of the entirety of a ware or its container, or a shaping of a part of a ware or its container. To interpret the definition of distinguishing guise as being limited to shapings of the entirety of a ware or its container is not considered to be consistent with the underlying purpose of the special provisions in the Act governing distinguishing guises. Such an interpretation would allow an applicant to easily circumvent the limitations in section 13 of the Act since applicants could then delete some minor detail from the overall shaping and obtain protection for that as an ordinary trademark.

Three-dimensional forms that are not an integral part of a ware or its container and that are attached to a ware or its container for the purpose of distinguishing goods or services are not considered to be a part of the ware or its container for the purposes of the definition of a "distinguishing guise". Whether a three-dimensional form is or is not an integral part of the ware or its container is necessarily a question of fact that depends on all the circumstances of each case. By way of example, the Office would normally consider a hood ornament not be an integral part of an automobile and thus the three-dimensional form of a hood ornament could be registered as an ordinary trademark for use in association with automobiles. On the other hand, the front grill or the taillight of an automobile would be considered to be an integral part of an automobile and thus the three-dimensional form of a front grill or taillight could, if the statement of goods in the application covered automobiles, only be registered as a distinguishing guise.

Mode of wrapping or packaging goods

When a guise consists of a mode of wrapping or packaging, the appearance of the mode is considered to include all the visual features of the mode shown in the drawing or drawings submitted as part of the application for registration, with the exception of any features that have been identified as not forming part of the guise. Thus any reading matter shown in the drawing(s) would form part of the guise unless the reading matter had been expressly excluded.

Bearing in mind the definition of "package" in section 2 of the Act, the Office considers that a mode of packaging goods would include containers or holders and that the appearance of such a mode of packaging, that would be protectable as a distinguishing guise, could include the combination of the shape of a container and other visual features such as reading matter appearing on the container. (See Smith, Kline & French v. Registrar (1987), 14 C.P.R. (3d) 432 at 435.)

Evidence of acquired distinctiveness

Paragraph 13(1)(a) of the Act provides that a distinguishing guise is registrable only if it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration. To be distinctive, the guise must have come to mean to purchasers that the goods or services sold in association with the guise come from one source, i.e. the guise must function in the marketplace to distinguish the goods or services of one person from those of others. To satisfy the test of distinctiveness it is not sufficient that a trademark be merely distinctive in channels of trade as, for example, to the manufacturer or wholesaler, but it must be distinctive to all who are probable purchasers including the ultimate consumer. (See Parke Davis v. Empire Laboratories (1963), 41 C.P.R. 121 at 145 and Calumet Manufacturing v. Mennen (1991), 40 C.P.R. (3d) 76 at 89 and 90.)

Subsection 32(2) of the Act requires the Registrar, having regard to the evidence adduced, to restrict the registration to the goods or services in association with which the distinguishing guise has been so used as to have become distinctive. The onus on the applicant to establish that a distinguishing guise has become distinctive in respect of a particular ware or service is a heavy onus and that onus is particularly severe where the guise is inherently weak such as where the guise has a significant ornamental or utilitarian function. (See Calumet Manufacturing v. Mennen (1989), 27 C.P.R. (3d) 467 at 472 and Parke Davis v. Empire Laboratories (1963), 41 C.P.R. 121 at 145.)

What evidence will be sufficient to establish acquired distinctiveness will depend very much on the circumstances of each case. It will not normally be sufficient to merely provide evidence of sales and advertising of the goods in Canada. For a distinguishing guise which has a high degree of inherent distinctiveness, it could be sufficient to provide evidence of very significant sales and advertising (which should include specimens of how the guise has been actually used and advertised) together with evidence that no other trader is using the same or a similar mark in Canada. For a distinguishing guise which is inherently weak (e.g. if it has a significant ornamental or utilitarian function), it will normally be necessary to provide more direct evidence that purchasers in the marketplace have come to recognize the guise as distinguishing the goods or services of its owner from those of others; for this purpose survey evidence or affidavits from actual purchasers may be necessary. In order to establish acquired distinctiveness, the evidence submitted need not show that 100% of potential purchasers recognize the guise as serving to distinguish; however, in general the evidence would have to be sufficient for it to be concluded that a high proportion of potential purchasers recognize the guise as serving to distinguish.

Subsection 32(2) of the Act requires the Registrar, having regard to the evidence adduced, to restrict the registration to the defined territorial area in Canada in which the distinguishing guise is shown to have become distinctive. Accordingly, evidence submitted to establish acquired distinctiveness must make clear in what territorial areas in Canada the distinguishing guise has become distinctive.

Functionality

Where an application is filed for the registration of a three-dimensional mark, whether as a distinguishing guise or as an ordinary trademark, the Office will assess whether the mark is primarily functional from either an ornamental or a utilitarian point of view. If it is, and if such functionality relates primarily or essentially to the goods or services covered by the application, the mark will not be registrable. (See Remington Rand v. Philips (1995), 64 C.P.R. (3d) 467.)

The Office will also take into account paragraph 13(1)(b) of the Act which provides that a distinguishing guise is registrable only if the exclusive use by the applicant of the distinguishing guise in association with the goods or services with which it has been used is not likely unreasonably to limit the development of any art or industry.

Date modified: