Trademarks: Distinguishing Guise / Non-Conventional

Last week I attended a Trademark information session that covered the basics of Trademarking hosted by Jennifer Marles of Oyen Wiggs Green & Mutala at the Small Business BC office in Vancouver.  She covered various topics within Trademarking, such as; types of Trademarks, what protection is granted with a registered mark, the inherent rights of a non-registered mark, how to search for existing ones and what elements make for a successful Trademark.  As it turns out, IllustratorSteve as a Trademark, wouldn't be a great one.  It has a very narrow scope, as it uses a proper name and describes exactly what we do!  Although, from a business/client relations angle, I think it works just fine.

I found the wide array of the available types of Trademarks quite interesting and more far reaching than I previously thought.  I was very aware of the more traditional Trademarks, such as a word, or combination of words, slogans, a combination of letters and/or numbers, symbols & designs, colours and combination marks.  The less common Trademarks were sound, scent and shape.

We don't get involved with many illustration jobs for trademarks as many of them are registered as simply words, unless they fall under the Distinguishing Guise (CIPO) or Non-Conventional/Non-Traditional (USPTO) category of Trademarks.  Both the Canadian and United States intellectual property offices have a similar definition of this type of Trademark, but I will reference CIPO's information in this post. 

A Distinguishing Guise can be deceptively similar to an Industrial Design as both are based upon visual elements.

The Canadian Intellectual Property Office defines an Industrial Design as the, "visual features of shape, configuration, pattern or ornament (or any combination of these) applied to a manufactured article.".  And, their definition of a Distinguishing Guise is, "the shaping of goods or their containers, or a mode of wrapping or packaging goods which results in a distinctive appearance and thus distinguishes them from others in the marketplace.".  

You might be thinking that a Distinguishing Guise must be a rare thing and not often come across.  There are likely few of these registered, but if it is granted it is in its  nature to be very well known.  In fact, you have likely come across one today, especially if you have made a trip into your grocery store.  The reason of this is that to be registered as a Distinguishing Guise the item being protected must be well known to the public and if seen, be instantly recognized as that particular business's trademark and not of the competition.    

By now you are likely thinking of at least one very famous Distinguishing Guise, the Coca-Cola (tm) bottle.  The shape of this bottle is instantly recognizable as a Coca-Cola (tm) produced item.  

In Canada, an Industrial Design's protection will last 10 years.  At this point, a Distinguishing Guise can become an option.  The nice thing with Trademarks is that they are renewable.  The protection of a Distinguishing Guise will last 15 years, but can be renewed indefinitely.  The challenge in getting this distinction is proving that your design is known well enough in the public realm that it is distinctive in their minds.

A Distinguishing Guise is only one facet of the types of Trademarks available.  We look forward to focusing on some of the others in the near future.  If you have any questions regarding the illustration of your Trademark, Industrial Design or Utility Patent contact Steve at steve@illustratorsteve.com.