Newsletter Article
A Trade-Mark Registration for Trade Dress
Published: 02/02/2012
By John McKeown A recent decision of the Federal Court involved an interesting claim for infringement of a trade-mark registration relating to a three dimensional trade dress representation of the interior of a restaurant.
The Facts
The Trade-Marks
The plaintiff owned a trade-mark registration incorporating the design of the three-dimensional trade dress representation of the interior of its SYMPOSIUM CAFÉ consisting of four components:
- interior walls and columns having the appearance of being made of antique cracked stone;
- a prominent reproduction of the “School of Athens” fresco painted by the renaissance artist Raphael;
- a circular mahogany bar consisting of two levels, the upper level functioning as a display area and the lower level functioning as a counter area; and
- a circular floor tile pattern extending around the circular bar.
This mark was used as the principal trade dress at all of the plaintiff’s restaurants.
A copy of the design from the registration is reproduced below.
The plaintiff also owned additional trade-marks relating to its SYMPOSIUM CAFÉ. The majority of these marks related to the design presentation of the name of the restaurant and various other word marks.
The plaintiff promoted its restaurants as a place where people could meet for food, drink and discussion. In addition to directly operating at a number of locations, the plaintiff franchised its restaurant concept.
The Settlement
In 2001, when the plaintiff was experiencing financial difficulties, a dispute occurred with the first defendant relating to monies borrowed. In 2003, a settlement was concluded which resulted in the transfer to the first defendant of two restaurants located in the city of Toronto.
The first defendant was at liberty to sell those locations either within or outside the existing franchise system. The first defendant sold the restaurants to the second defendant. The sales agreement between the defendants included a covenant which provided that if the second defendant decided not to join the franchise system, it would remove all signage identifying it with the plaintiff’s restaurant concept.
The Claim
The plaintiff invited the second defendant to join the franchised group, but it chose not to and instead adopted CAFÉ MIRAGE as the new name for the two restaurants using the existing premises and fixtures and signage similar in general appearance to that used by the plaintiff.
Issues arose concerning the removal of signage and other related matters and eventually the plaintiff brought proceedings for infringement of its trade-marks and passing off, among other things. At the trial the plaintiff presented evidence which emphasized that its trade dress made its restaurants unique and differenced them from other restaurants. They also presented evidence of some confusion.
Trade-Mark Infringement
The defendants argued that the plaintiff had acquiesced to its use for the trade-marks since they had consented to such use pursuant to the original settlement with the first defendant.
The trial judge agreed that the first defendant was entitled to transfer its rights to the second defendant. However, this did not include the right to use the trade-marks outside the plaintiff’s franchise system and the defence was not made out.
The trial judge found that the prominent feature of the plaintiff’s three-dimensional trade-mark was the “School of Athens” fresco coupled with antique marble wall patterns, circular display counter and tiles with trade-mark names and expressions associated with the plaintiff’s services. While the individual components were not particularly distinctive, the entire trade dress did satisfy the requirement for distinctiveness.
The defendants had maintained the prominent display of “School of Athens” artwork, antique, wall patterns, circular display, counter and floor tiles and had continued to use these elements. In addition, these elements were used in signage and menus.
The judge concluded that since the average restaurant customer in somewhat of a hurry would, on first impression, consider the CAFÉ MIRAGE to be associated with the plaintiff’s restaurants, they would be confused by the defendants’ use of the plaintiff’s trade-marks. As a result, it was found that the defendants were infringing the plaintiff’s trade-marks.
Remedies
The plaintiff was granted an award of damages as well as an injunction. The “School of Athens” fresco was the most dominant and critical component of the plaintiff’s three-dimensional trade-mark. It embodied the plaintiff’s thematic concept of a meeting place for discussion and exchange of ideas and was prominently featured in all the plaintiff’s restaurants. As a result, the defendants were enjoined from displaying the “School of Athens” artwork in any of its restaurants and in any signage, posters, Internet websites or otherwise.
Comment
The idea of obtaining a trade-mark registration for the trade dress of a restaurant is interesting but the defendants did not attack the validity of the registration. This is an issue that will have to be considered on another occasion.
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