Evolving Law of Trade Dress in a Digital World
In an increasingly crowded market, businesses are investing heavily into unique customer experiences to boost brand identity and loyalty. As expected, there is a growing need to protect the design and other distinguishing elements incorporated into the products, packaging as well as off and online customer experiences. Collectively, these features are known as the trade-dress or the look and feel of the brand. The recent crack-down on 22 counterfeit Apple stores illustrates the importance of trade-dress protection.
This article provides an overview of the law on trade-dress in Canada and surveys the movement in the US to protect the trade dress of websites, apps and other digital properties.
PROTECTING TRADE-DRESS IN CANADA
In Canada, trade-dress can be protected by registration under the Trade-marks Act (“Act”) as a “distinguishing guise”, which is defined in the Act as the packaging, containers or wrapping of “wares”. Unlike regular trade-marks, trade dress can only be registered as a distinguishing guise if it has become “distinctive” or recognizable to the public as associated with a brand or product.
Unregistered trade-dress established by ordinary commercial use can still be protected under s. 7 of the Act, which codifies the common law tort of passing-off. Broadly, s. 7 requires the plaintiff to show that the trade-dress is publicly associated with a certain brand or product in Canada as well as deception of the public.
In a recent decision, the Federal Court ordered a restaurant to remove a mural painting that infringed the trade dress of a competing restaurant. The Court reasoned that the mural embodied the thematic concept of the plaintiff’s franchise restaurants and the mural was a prominent design feature in every restaurant location.
A significant limitation on the use trade-dress is regarding functional features. In Kirkbi AG v Ritvik Holdings, the Supreme Court of Canada held that the feature of LEGO bricks that allows them to snap together could not be protected as trade-dress because it is primarily a functional characteristic.
The principle from Kirkbi applies to commercial spaces as well. For example, the US Patents and Trademarks Office required Apple to remove recessed lighting, seating and shelving from its trade-dress application for its retail stores. 
TRADE-DRESS FOR WEBSITES AND OTHER DIGITAL PROPERTIES
There is considerably more trade-dress litigation in the US than in Canada, particularly regarding the look and feel of websites.
Most recently, the Louisiana District Court joined other US jurisdictions in affirming the viability of protecting the trade-dress of websites. In that case, the plaintiff claimed that the defendant copied its colours, orientation, font, list of curated external hyperlinks and content from its website.
In the US, trade-dress claims are brought under the Lanham Act and must allege that:
- The trade-dress is distinctive and identifies the source of the product;
- There is a likelihood of confusion between the parties’ goods or services; and,
- The trade-dress is not functional.
In a recent New York case, a trade-dress claim was dismissed because the plaintiff did not persuade the Court that the elements on its website amounted to a distinctive look and feel that a viewer would associate with its business. The Court noted that simply cataloguing a website’s features is insufficient to establish a trade-dress. Plaintiffs must plausibly describe how the elements come together to synthesize the brand’s look and feel.
While the law is still early in development in the US, it is clear that US courts are prepared to enforce the trade-dress of websites with a distinctive “look and feel” associated with its brand or product.
As sales and consumer interaction shifts online and into mobile applications, businesses should be more vigilant about protecting their brand identities and trade-dress.
 1429539 Ontario Limited v Café Mirage Inc., 2011 FC 1290.
 Office Action Outgoing for U.S. Trademark Application, Serial No. 85,036,990 (Aug. 23, 2011).
 Express Lien Inc. v National Ass’n of Credit Management Inc., 2013 WL 4517944 (ED La August 23, 2013).
 Parker Waichman LLP v Gilman Law LLP et al., (EDNY, Jul. 24, 2013).