A federally recognized indigenous tribe, the Seminole Tribe of Florida has succeeded in registering their guitar-shaped hotel building as a trademark due its unique design, after initially being labelled as non-distinctive. The tribe is also involved in the Hard Rock Cafe franchise.
The Tribe opened its first Guitar Hotel in 2019 in Los Angeles as part of the Seminole Hard Rock Hotel & Casino Hollywood—which it described at the time as the world’s first and only hotel of its kind.
This case illustrates how unpredictable (and maybe slightly inconsequential) the idea of three-dimensional (3D) trademark protection can turn out, given that the same shape can be considered not distinct, considered unique.
Does 3D trademark protection exist in Canada?
Companies that have sold products with unique shapes or unique product packaging in Canada over the past few years can apply for three-dimensional trademark protection. The Trademark Office considers a mark to be “distinctive” when it has come to be recognized as a trademark that distinguishes the goods and services of the brand owner from those of others.
However, A 3D trademark is registrable only if it is in use in Canada and has become distinctive as of the date of filing the trademark application. It means that before thinking of registering anything, it is important to first begin using the product in Canada to figure out if the shape is distinctive at all, given that Canada has immense creative output due to its multicultural composition. It is entirely likely that a shape that is unique in the USA or Europe is not unique in Canada.
The Trademarks Office requires that the brand owner submit evidence that it has acquired distinctiveness in the mark. You not only must be able to prove that your design is distinctive, but also where in Canada it is distinctive. If the 3D trademark is not distinctive throughout Canada, the registration will be restricted to the defined territorial area in Canada in which it has demonstrated distinctiveness. To secure the registration, the evidence required is extensive, including sales and advertising figures broken down per Canadian province and will include in-depth financial and trade information without any guarantee that the mark will be accepted.
If the brand owner has not yet extensively used the mark in Canada, it can rely on other rights to prevent others from using confusing marks, including industrial design protection, common law rights and copyright in the design. Obtaining trademark, industrial design and copyright protection serves to offer overlapping of rights to brand holders on multiple legal grounds on which to enforce their rights.