What is theft of intellectual property in Canada?

Infringement or theft of intellectual property in Canada can be committed in different ways – know more about them in this article
What is theft of intellectual property in Canada?

There are five types of intellectual property (IPs) in Canada: 

  • Patents: new and useful inventions or creations, or new and useful improvements of an existing thing or product 
  • Industrial designs: unique appearance or visual features of a thing or a product, such as its shape, configuration, pattern, ornament, or a combination of these 
  • Trademarks: either an ordinary mark or a certification mark which acts as a brand that distinguishes one product from another 
  • Copyrights: the right to produce or reproduce the original work of another person or entity such as literary, artistic, dramatic or musical works, including computer programs and software 
  • Trade secrets: a collection of information which is vital to the conduct of a business, or which distinguishes a business and gives it an advantage over its competitors 

Does Canada have intellectual property laws? 

Canada has different intellectual property (IP) laws which apply to different forms of intellectual property. These Canadian IP laws define what is considered an IP, what the registration process is, and how the theft of intellectual property is prosecuted.  

These are the IP laws covering specific subject areas: 

  • Patent Act: the law on patents of inventions 
  • Industrial Design Act: the law on industrial designs 
  • Trademarks Act: the law governing trademarks and unfair competition on trademark use 
  • Copyright Act: the law which governs copyrights 

IP registration is done with the Canadian Intellectual Property Office (CIPO) or with other related authorities. 

There is no federal law for trade secrets, but these are still covered under Canada’s common law, contracts law, law on torts and damages, and Quebec’s civil law. Quebec’s civil law makes it important for those living there to contact an intellectual property lawyer in Quebec for assistance. 

What qualifies as theft of intellectual property (IP)?  

Theft of intellectual property (IP), also called infringement, happens when a person or entity – without the proper authorization, consent, or rights – steals, sells, uses, duplicates or reproduces the intellectual property of another person. 

In Canada, theft of intellectual property is defined by the above-mentioned IP laws which outline:  

  • the acts that qualify as theft of intellectual property or infringement;  
  • the appropriate court which shall hear the case; and  
  • the penalties to be imposed on the violators 

Patent Act 

Under the Patent Act, a registered patent will give the patentee (the creator or inventor), including their legal representatives, the exclusive right to make, use, and sell the invention within Canada (Section 42, Patent Act). 

Patent Infringement 

Any violation of the right granted to the patentee is considered a patent infringement under the Act. Canadian common law or case law also describes other ways that patent infringement may be committed: 

  • Direct infringement through making, constructing, using, or selling the patented invention without the patentee's consent (Section 42, Patent Act); 
  • Possession of a patented object especially when some value or commercial circumstances are derived from this possession (Monsanto Canada Inc. v. Schmeiser, [2004] 1 SCR 902 (21 May 2004)); 
  • Use of a patented invention in a process (Pfizer Canada Inc. v. Canada (Health), 2007 FC 898 (5 October 2007)); 
  • Inducement or procurement of patent infringement (Windsurfing International Inc. v. Trilantic Corp., (1986), 8 C.P.R. (3d) 241) which may constitute indirect infringement. 

There are certain exceptions to patent infringement that are recognized by the Patent Act, such as: 

  • third party rights (Section 55.11 (1)); 
  • when the act was done in good faith within or after the period of the patent (Section 55.11 (2) and (3)); 
  • When the act was done as required by the law (Section 55.2 (1)). 

There are different ways of managing theft of intellectual property. Watch this video to learn more: 

To find out more about infringement or IP theft, consult with an intellectual property lawyer in your province or territory. If you live in Calgary, for example, contact a legal IP expert in Alberta.  

Industrial Design Act 

As for the Industrial Design Act, the registration of an industrial design grants the holder or proprietor the exclusive right over the design (Section 9, Industrial Design Act). 

Infringement of Design 

Any person who does not have the license from the industrial design’s proprietor may be held liable for infringement if they commit any of the following acts (Section 11 (1), Industrial Design Act): 

  • making or importing the registered design for the purpose of trade or business;  
  • selling, renting, or offering or exposing for sale or for rent, a product with a registered design; or 
  • making, importing, selling, or renting a registered design in relation to a kit, which consists of different parts which may be assembled to construct a finished product. 

Trademarks Act  

Owners of trademarks and trade names that are registered under the Trademarks Act are granted the exclusive right to use that trademark or trade name on their goods or services throughout Canada (Section 19, Trademarks Act). 

Trademarks Infringement 

Infringement of trademarks or trade names takes place when a person who is not entitled to its use, commits any of the following acts (Section 20, Trademarks Act): 

  • sells (including offering to sell), distributes, or advertises any goods or services, or any label or packaging, which bear the infringed or confusing trademark or trade name; or 
  • manufactures, possesses, imports, or exports (including attempting to export), for the purpose of their sale or distribution, any goods, label, or packaging which bear the infringed or confusing trademark or trade name. 

Copyright Act 

Under the provisions of the Copyright Act, when an owner (creator, author, or artist) of a literary, dramatic, musical or artistic work, grants a copyright to another person, the copyright holder then has the sole right to produce or reproduce such work. 

Copyright Infringement 

There is an infringement of a copyright when another person – who is not the holder of a copyright – copies an original work (Section 2, Copyright Act) or does something that violates the right granted to a copyright holder (Section 27 (1), Copyright Act). 

The law also describes other ways that copyright infringement of the original work may be committed (Section 27 (2), Copyright Act): 

  • selling or renting out 
  • distribution 
  • exposing, offering, or exhibiting in public for the purpose of selling or renting out 
  • possession for the purpose of selling, renting out, or distribution;  
  • importation into Canada for the purpose of selling, renting out, or distribution 

Laws Protecting Trade Secrets 

Violation of the confidentiality of trade secrets may be committed depending on the contract between the owner of the trade secret (usually an employer or a business) and the violator (who may be an employee, or another person entrusted with such trade secret). This contract may be in the form of a non-disclosure agreement, a confidentiality agreement, or a confidentiality clause in an employment contract.  

It is highly important that the different ways of protecting a business’s trade secrets are in place and are properly implemented by the business through proactive means. 

What are the consequences of theft of intellectual property (IP)? 

Common consequences of theft of intellectual property (IP) include civil liabilities, imprisonment, seizure of the stolen IP. Ultimately, this would depend on the IP law that was violated and the gravity of the offense when adjudged to be guilty of infringement. 

Want to know more about theft of intellectual property in Canada? Ask us your questions by dropping your questions below or consult with the top-ranking intellectual property lawyers throughout Canada