Industrial Designs and Other Intellectual Property Rights
This month, we continue our discussion and review of the basic principles concerning protection under the Industrial Designs Act.
a) Trademarks
Registration as an industrial design does not preclude the subsequent registration of a three-dimensional shape mark under the Trademarks Act relating to the product, to which the design is applied. An industrial design registration may be initially obtained, subject to filing it within one year of the disclosure of the design, to protect product shape or appearance but the term of protection is limited to 10 years. After the shape or appearance has become distinctive, a trademark, consisting of a three-dimensional shape, may be registered.
b) Copyright
Protection under the Copyright Act does not affect protection under the Industrial Design Act, but sections 64 and 64.1 of the Copyright Act limit protection available under the Copyright Act for useful article features.
Under section 64, the concept of a “design” is applicable only to finished articles which are useful; the section does not apply to works such as sculptures.
Sections 64 and 64.1 only apply to useful articles which are defined to mean articles, including models, which have a utilitarian function, that is a function other than merely serving as a substrate or carrier for artistic or literary matter.
The Copyright Act provides that where copyright subsists in a design applied to a useful article, or in an artistic work from which the design is derived and, by or under the authority of the person who owns the copyright in Canada or elsewhere:
(a) the article is reproduced in a quantity of more than fifty; or
(b) where the article is a plate, engraving or cast, the article is used for producing more than fifty useful articles,
it is not an infringement of the copyright or the moral rights for anyone
(c) to reproduce the design of the article or a design not differing substantially from the design of the article by:
(i) making the article; or
(ii) making a drawing or other reproduction in any material form of the article; or
(d) to do with an article, drawing or reproduction that is made as described in paragraph (c) anything that the owner of the copyright has the sole right to do with the design or artistic work in which the copyright subsists.
The provision restricts copyright protection for eye-appealing features of useful articles since it provides the actions which would otherwise constitute infringement are not actionable. The section does not preclude protection under the Industrial Design Act.
The following artistic works are exempted from subsection 64(2) and fully protected by copyright, if it is otherwise available and even if the works have been reproduced in quantities in excess of 50:
(a) a graphic or photographic representation that is applied to the face of an article;
(b) a trademark or a representation thereof, or a label;
(c) material that has a woven or knitted pattern or that is suitable for piece goods or surface coverings or for making wearing apparel;
(d) a representation of a real or fictitious being, event or place that is applied to an article as a feature of shape, configuration, pattern or ornament;
(e) articles that are sold as a set, unless more than fifty sets are made; or
(f) such other work or article as may be prescribed by regulation.
The Copyright Act contains further provisions to clarify the protection available concerning useful article features. Section 64.1 provides that the following acts do not constitute infringement of the copyright or moral rights in a work:
(a) applying to a useful article features that are dictated solely by a utilitarian function of the article;
(b) by reference solely to a useful article, making a drawing or other reproduction in any material form of any features that are dictated solely by a utilitarian function of the article;
(c) doing with a useful article having features described in paragraph (a), or with a drawing or reproduction made as described in paragraph (b), anything that the owner of the copyright has the sole right to do with the work; and
(d) using any method or principle of manufacture or construction.
To ensure your rights are fully protected reach out to us for a detailed review of your situation.
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If you have questions, please contact me at jmckeown@LN.Law
John McKeown
Loopstra Nixon LLP.
130 Adelaide St W Suite 2800
Toronto, Ontario,
M5H 3P5
Canada
437 290-5960
This article is of general nature and is not intended to provide specific legal advice as individual situations will differ. Specialist advice should be sought about your specific circumstances. Copyright © John Mckeown, All rights reserved. To unsubscribe to the IP Update please send me an email at jmckeown@Ln.Law
A version of this article originally appeared in the Law360 Canada published by LexisNexis Canada Inc.
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