|
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.
|
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.
|
|
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.
|
The Canadian Bar Association
|
|
I am pleased to advise that I have been appointed to chair the Association's Trade Marks committee. A Bill containing numerous amendments to the Trade-marks Act is currently before Parliament and additional amendments will be presented in order for Canada to comply with the new trade agreement with the European Union. As a result this committee will be busy.
|
|
The GSNH Intellectual Property e-newsletter
|
The most recent edition of the e-newsletter was published on November 27, 2013. You can review it by clicking here.
If you would like to subscribe to the e-newsletter you can email your request with the subject line "IP e-newsletter subscription request."
|
Seasons Greetings from GSNH LLP
|
|
Click here to view your Season's Greetings video e-card from GSNH LLP!
|
John S. McKeown
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, ON, M5G 1V2
mckeown@gsnh.com
Direct Line: (416) 597-3371
Fax: (416) 597-3370
www.gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.
|
