Steve Madden is in trouble again. Just as it thought it was done with the commotion of its trade dress battle with Altuzarra, it has gotten into trouble with Dr. Martens over Madden’s production of a boot that bears striking similarities to Dr. Martens’ most famous boot. Dr. Martens is alleging that Steve Madden is making unauthorized use of their trade dress.
In the U.S, trade dress is the trademark protection afforded to the overall commercial image of a product that identifies the source of the product or the brand. Consider, for example, the Coca-Cola glass bottles. Without even looking at the label, you are aware of what it is because of its overall commercial image. Dr. Martens is alleging that Steve Madden has copied that which makes their boots distinguishable and identifiable. Dr. Martens is also alleging that Steve Madden has intentionally attempted to deceive the public. In addition, Dr. Martens alleges that Steve Madden’s boots create a likelihood of confusion to the public, but also dilutes and damages the quality of the Dr. Martens trade dress. Dr. Martens is seeking preliminary and permanent injunctive relief, the removal of all advertisements of the product, the accounts of profits attributable to this product.
Is there trade dress protection in Canada? YES! It is protected under the the Trademarks Act and at common law. Trade dress can be registered with the Trademark Office as a “distinguishing guise”. Essentially, the way it looks and is commercially seen.
It is important to know that a distinguishing guise is only registrable in Canada once an applicant shows that the public recognizes that distinguishing guise as the source of the product. The applicant would have to prove the acquired distinctiveness through affidavits, or declarations. If an applicant is unable to prove that the distinguishing guise has obtained distinctiveness across Canada, then the registration may be limited to the areas in which it has achieved distinctiveness.
What if you do not register your distinguishing guise? It may be protected in common law through the tort of passing off. If it can be proven that the entity has obtained public recognition of its trade dress through reputation and goodwill, then the entity may be able to prevent others from using the similar trade dress in order to avoid confusion to the public. If this is possible, why would you register your trade dress at all? Registered trademarks are protected indefinitely, provided that it has not been abandoned. Registration also allows for additional causes of action.
This statutory and common law regime may unduly limit trade and industry. However, the Act and jurisprudence attempt to avoid unreasonable limitations by establishing safeguards like preventing registration of a distinguishing guise that will put an unreasonable limit on the develop or any art or industry. In addition, where a distinguishing guise is purely functional, it will be deemed to go beyond the bounds of trademark protection, regardless of registration. Functional features should be available for all traders (ex. the “SCC held that the shape of LEGO bricks could not form a basis for a passing off action, as the purported trade dress was made up entirely of the technical and functional characteristics of the bricks”).
Canadian law regarding trade dress/distinguishing guise is not as developed as the U.S. However, the law continues to move forward and has provided trade dress protection to sounds and smells.
It does not seems like Steve Madden would be able to get away with its new boots in Canada either.