Industrial Designs

7. Other Considerations

(a) Industrial Designs Compared to Trade-Marks

Industrial designs are somewhat similar to a particular type of trade-mark known as a "distinguishing guise". This is a type of trade-mark which is registered in respect of the shape of an article. A good example of a distinguishing guise is the shape of a COCA-COLA® bottle. The shape of this bottle is an easily recognizable shape applied to a functional article, and has become recognized as a trade-mark of the owner of the guise. If your design becomes particularly well recognized for its features of shape, and these features of shape are consistently applied to all of your products, then such feature(s) may be registerable under the Trade-marks Act as a distinguishing guise. This is a method of obtaining perpetual protection for a well known recognized feature of shape.

There is no statutory distinction made between distinguishing guises (trade-marks) and industrial designs. Thus, arguably, where circumstances warrant, trade-mark protection of a particular shape as a distinguishing guise may be an alternative to industrial design protection, or may be obtained contemporaneously therewith. As with industrial designs, the features protected as a distinguishing guise cannot be purely functional. Trade-mark protection for distinguishing guises is perpetual, but it is necessary to show that the subject matter of the distinguishing guise has become recognized as a guise associated with the owner thereof. The establishment of this type of owner reputation in relation to the subject distinguishing guise is accomplished before the Trade-marks Office by the filing of affidavit evidence, usually several years after the design is made available to the public, in order to show that the design has gained recognition as a distinguishing guise of the owner. Thus, as a practical matter, an application for a registration of a distinguishing guise under the Trade-Marks Act could be used to prolong protection for an aging or expired industrial design, once the subject design has gained a reputation in the marketplace. Alternatively, if you have a design which has been on sale in the marketplace for longer than one year, such that it is no longer eligible for industrial design protection, you may want to consider filing an application for a distinguishing guise, providing that you can show a sufficient public reputation of ownership in respect of the guise.