When obtaining intellectual property protection for a product that, at the outset, is intended to enjoy long-term commercial success, obtaining multiple forms of IP protection for the same subject matter can be of significant advantage. Protection for the shape of functional articles in particular poses an interesting situation whereby one may potentially benefit from rights arising concurrently under copyright, trademark, and industrial design legislation.
When dealing with a functional article embodying an aesthetically-pleasing design, the Industrial Design Act is a good place to begin as industrial design registration can provide up to 10 years of protection. After addressing the useful article from an industrial design perspective, one may also seek to complement the design protection with additional layers of protection under the Copyright Act and the Trademarks Act, which can work hand-in-hand when dealing with the shape of useful articles.
The Copyright Act eliminates overlap with the Industrial Design Act. Where an article is reproduced more than fifty times by its copyright owner, a third party that reproduces the article will not infringe the copyright in its shape. However, the Copyright Act provides certain exceptions to this exclusionary rule, and it presents an attractive avenue of protection where the shape of a useful article may eventually act as a trademark. It should be noted that the shape of a useful article acting as a trademark will likely entail a distinguishing guise, and thus one must satisfy the statutory requirements for recognizing a distinguishing guise (i.e. a trademark).
Since a distinguishing guise must by definition distinguish the wares of one company from another, the shape of a useful article may not qualify as a distinguishing guise at the outset. To acquire distinctiveness, an article should be extensively advertised and promoted. Needless to say, such a campaign necessitates a multidisciplinary approach, focusing not only on a legal standpoint, but also that of marketing/advertising. During this period, promotional and advertising campaigns must aim to accentuate the distinctiveness of the useful article’s shape, but should also be mindful to avoid emphasizing aesthetic and/or functional qualities. Rather, an effective strategy will be mindful of the objective of such a campaign: to create an association in the minds of consumers between the distinctive shape of the article and its source. As such, for instance, a successful marketing campaign may encourage consumers to look for and identify a product simply by its shape.
The foregoing notion may be best understood using the example of the fictional wishbone-shaped computer case. Above all, before contemplating potential marketing strategies, it goes without saying that where a market for the product at issue already exists, the article must possess a unique shape (not dictated by functional considerations) that distinguishes it from all other similar products. The market for computer cases, for instance, presents a potential opportunity, since most cases are available more or less in the shape of a rectangular box.
Assuming one wanted to obtain IP protection for this wishbone-shaped computer case, over time it is possible that three different forms of IP protection may be pursued. First, industrial design protection for the aesthetic look of the case could be sought. An appropriate further strategy could concentrate on stressing the distinctive shape of the case. For example, advertisements may suggest that consumers “Look for the Wishbone”. The objective is that over time, consumers will instinctively associate the shape of the wishbone case with its unique manufacturer, thereby effectively causing the shape to act as an indicator of source (in other words, a trademark). In so doing, registration of the shape of the article as a distinguishing guise would be greatly facilitated.
Only once a useful article acquires distinctiveness, and is thereby recognized as a trademark pursuant to the Trademarks Act, does the Copyright Act enter the scene to protect the artistic quality of the article, irrespective of mass production. In this way, if successfully accomplished, one may benefit from considerable protection stemming from three different IP statutes, each protecting different aspects of the same article. Moreover, such a strategy is especially interesting given that each statute provides for a different term of protection and includes its own set of remedies.