Quick, which is Apple’s iPhone and which one is the Samsung Galaxy phone?In a recent lawsuit Apple Inc. v. Samsung Electronics Co. Ltd., (11-1846 U.S. District Court, ND Cal.) Apple complains that Samsung’s line of Galaxy phones and tablets infringes the “look-and-feel” of the Apple iPhone and iPad. Besides patent and trade-mark infringement, this is an interesting trade-dress infringement claim, which alleges that Apple owns rights in the way their phones and tablets appear – the screen layout, product design elements, user interface, the appearance of icons and packaging. Can this kind of intellectual property be protected?

In Canada, the law will protect “trade dress” that distinguishes the product – such as colour schemes, signage, the layout of packaging and product design.  Industrial design law can also protect the ornamental (non-functional) elements of a product including product shape and size. In Eli Lilly and Co. v. Novopharm Ltd., [2001] 2 F.C. 502, a drug-maker complained that the distinctive shape, size and colour of its drug (in this case, Prozac) was being unfairly copied by generic competitors. This leads to a claim for “passing off” – where the knock-off product is passed off as the genuine original by copying the distinctive trade-dress of the original.

The three necessary components of a passing-off action are:

1. the distinctive trade-dress must have a reputation in the mind of consumers;
2. misrepresentation and deception that leads consumers to believe that the knock-offs are actually the genuine original; and
3. actual or potential damage to the original brand owner.

Apple’s recent lawsuit is one more battleground in the fierce war for consumers in the highly competitive mobile computing marketplace.

Calgary – 07:00 MDT