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Putting Teeth into Canadian Copyright
Protection and Preventing Counterfeiting: A Strategy to
Prevent Reverse Engineering of a Shape or Design in Canada
Scott
Miller
The purpose of this article is to demonstrate an effective
strategy to overcome the right holder’s limitation in the
Copyright Act1
which permits the reverse engineering of a design applied to a
useful article2
without it being an infringement of copyright.
Pursuant to section 64(2) of the Copyright Act, it is not an
infringement of copyright to reproduce (copy) a design applied
to a useful article for which more than 50 articles have been
produced. There are a number of exceptions to section 64(2) of
the Copyright Act of which one is whether the artistic work is
used as or for a trade-mark.
The copyright holder must ask an important question: Is the
shape/design of the article a trademark? The question poses a
significant problem because under the Trade-Marks Act3 , a
trade-mark which is a shape, defined as a distinguishing
guise, is only registrable if the distinguishing guise has
become distinctive at the date of filing for its registration.
Moreover, at common law, trade-mark rights only exist if the
trade-mark is distinctive of a single source.
The inquiry must then turn to how to ensure the design applied
to a useful article (a shape) can be sufficiently distinctive
to attract trade-mark protection and therefore take advantage
of the copyright exception which would preclude the
reproduction of the copyright holder’s shape of a product.
The answer lies in the Industrial Design Act4 .
An industrial design is a feature of shape, configuration,
pattern or ornament and any combination of those features
that, in a finished article, appeal to and are judged solely
by the eye. A shape is capable of being both an industrial
design and a distinguishing guise trade-mark if the
distinguishing guise is distinctive of a single source. The
basis of the right to an industrial design is founded in
originality. There is no requirement of previous use to
register an industrial design.
The exclusive right for an industrial design is ten years
beginning on the date of registration of the design. Relying
on the exclusive monopoly to the shape/design of an industrial
design, the right holder could wait until it felt there was
sufficient distinctiveness build up in the shape/design to
assert trade-mark rights in the shape either at common law or
by filing for a distinguishing guise trade-mark under the
Trade-Marks Act. A significant precaution which must be
strictly observed for this strategy to work is that the
industrial design must be filed within one year after
publication of the design anywhere in the world or else it
becomes ineligible for registration in Canada.
If the above strategy is followed, the result is a
multi-pronged approach to intellectual property protection in
Canada which will allow the right holder to assert copyright
infringement for the reverse engineering of a product itself.
It has been my experience that the enforcement of a copyright
registration is typically the cheapest and easiest form of
intellectual property enforcement. Copyright should and can be
used as an effective tool against anti-counterfeiting.
Industrial Design Act,
R.S.C, 1985, c. I-9
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