Protecting product design: Daniel Anthony and Olivier Jean-Lévesque for World Trademark Review

In a recent article for World Trademark Review (WTR), Principal Daniel Anthony and Associate Olivier Jean-Lévesque highlighted two Canadian court decisions on how the collaborative role of copyright, industrial design and trademark can be leveraged to protect product design.

In French v The Royal Canadian Legion (2024 FCA 63), the case involved a plush toy designer suing a licensee for infringement of his copyright and moral rights. The court ruled against the designer, stating that there's no copyright infringement when the design is applied to a "useful article" produced in quantities over 50. Instead, industrial design or trademark should have been asserted, if applicable.

In Keezio Group LLC v The Shrunks’ Family Toy Company Inc (2024 BCSC 64), The BC Supreme Court found an IP rightsholder liable for damages due to the filing of groundless trademark and copyright complaints with Amazon. It was held that copyright infringement can not be asserted in the shape of an object (inflatable bed) made in quantities over 50. Instead, industrial design (had it been registered) could have been asserted.

When it comes to protecting the shape of goods, the authors noted, “Rights holders in product designs should be aware of Canada’s somewhat unique approach to product design protection in order to best take advantage of available rights.”