Putting Teeth into Canadian Copyright Protection and Preventing Counterfeiting

A Strategy to Prevent Reverse Engineering of a Shape or Design in Canada

Scott Miller - June 2010

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.

¹ Copyright Act , R.S.C. 1985, c. C-42

² A useful article is defined as an article having a function other than merely serving as a substrate or carrier for artistic or literary work and includes a model of any such article. 

³ Section 13, Trade-Marks Act, R.S.C. 1985, c. T-13

⁴ Industrial Design Act, R.S.C, 1985, c. I-9