The Many Faces of Intellectual Property Protection

Artistic Design by Kool Cats Photography licensed under CC BY 2.0

Artistic Design by Kool Cats Photography licensed under CC BY 2.0

 

 

A single product may embody more than one types of intellectual property right. In such cases, Canadian laws generally try to compartmentalize these different rights to prevent one type of right protection from being used to extend the scope or term of another type of protection.

 

For example, the well known “look” of LEGO bricks, namely, studs on top of the brick and tubes under it, was considered by the courts as a purely functional feature, and therefore could not be used as trade-mark to prolong the already‑expired patent rights for the LEGO bricks:

 

The doctrine of functionality appears to be a logical principle of trade-marks law.  It reflects the purpose of a trade-mark, which is the protection of the distinctiveness of the product, not of a monopoly on the product … In the law of intellectual property, it prevents abuses of monopoly positions in respect of products and processes.  Once, for example, patents have expired, it discourages attempts to bring them back in another guise.

 

Similarly, copyright protection for a design work is generally limited to its pure artistic aspect. Copyright may become unenforceable if a design is lawfully applied to more than 50 reproductions of an article that has a utilitarian function other than merely serving as a substrate or carrier for the design.

 

However, the Copyright Act also provides that such “more than fifty” limitation in copyright protection does not apply in some circumstances including:

  • Graphics displayed on the face of an article.
  • Trade-mark designs or labels.
  • Textile designs.
  • Architectural designs for building or model of building.
  • Designs employed in real or fictitious merchandising characters, events or places.

 

To maximize intellectual property protection, a design that can be applied to mass production of utilitarian articles should be registered under the Industrial Designs Act.