Below is an excerpt from John McKeown’s December Mailer where he discusses protecting product shape and appearance by obtaining industrial design registrations.
a) Trade Marks
One of the important advantages of obtaining an industrial design registration is that it can be protected through an action for infringement without showing secondary meaning or goodwill associated with the design. In most actions for trade mark infringement or passing off it is critical to establish the existence of goodwill.
In addition, it is clear that registration as an industrial design does not prevent the subsequent registration of a distinguishing guise under the Trade-marks Act relating to the product to which the design is applied. This means that a brand owner can use an industrial design registration to protect the shape and appearance of a product initially and after goodwill has been established obtain a distinguishing guise registration. Trade mark registrations can be renewed indefinitely but the term of an industrial design registration is 10 years.
b) Copyright
Protection under the Copyright Act does not affect protection under the Industrial Design Act but both Acts limit protection available for useful article features. The boundary between the copyright and industrial design protection can be difficult to determine. In many cases copyright protection is not available.
c) Patents
A patent grants an absolute monopoly during its term and gives to the patentee, for the term of the patent, the exclusive right, privilege and liberty of making, constructing and using the invention and selling it to others to be used. If an article is patentable it may be protected by both a patent and an industrial design so long as the requirements of the those Acts are satisfied.
To read the full Monthly Mailer please click here.