Trade-marks can appear almost anywhere. But you have to be able to see them at the point of purchase for the brand to function as a trade-mark under Canadian law. Take this example. A purveyor of fine bathroom tissue tried to registered the floral pattern at left as a trade-mark. It’s the design that’s embossed onto a popular brand of “hygienic paper products” (that’s legalese for toilet paper). A competitor complained, saying the design was confusing with its own registered trade-mark – the floral design at right.
In the recent case of Scott Paper Ltd. v. Georgia-Pacific Consumer Products LP , 2010 FC 478, the court examined the competing trade-mark claims and decided that marks must be seen to develop a reputation and to be distinctive of their owner. In this case Georgia-Pacific’s mark (the one at right) was not visible to consumers through the packaging. Since it was not visible at the point of purchase, it could not function as a trade-mark, regardless of how many times people saw the mark after purchase when they opened the packaging to use the product.
Lessons for business?
- There are many design elements that can function as a trade-mark to distinguish you from competitors… from the brand displayed on the package to designs embedded into the product itself.
- When reviewing trade-marks in your business, ensure that your packaging strategy dovetails with your brand strategy. In this case, the packaging may have changed over time to “hide” the trade-mark.
- Get advice on your brand-protection strategies and watch your competitors – in this case, the complaint failed and Scott Paper’s design (the one at left) was allowed to proceed to registration. However, this case also illustrates that Georgia-Pacific was vigilant about brand protection in a competitive business.
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