Lesson 2: How Copyright Intersects with Other Forms of IP


Where a trademark consists of a word and design or a design alone, the design has the potential to be considered an artistic work under copyright law.

The advantage of using copyright protection is that, unlike trademark infringement, copyright infringement does not require evidence of confusion or use in commerce. It requires you to prove that the artistic work was copied either exactly or in a substantially similar way.

Example: Kraft Canada

tobleroneKraft Canada is the trademark owner in Canada of a number of trademarks for European-produced chocolates. The trademarks consist of words as well as artistic drawings, for example, the drawing of a mountain in the Swiss Alps on the Toblerone chocolate bar package. 

A Canadian importer was buying the same chocolates directly from the European manufacturers and selling them in competition with Kraft Canada. Under Canadian law at the time, it was not clear that Kraft Canada would be successful under trademark law. Instead, Kraft Canada used copyright law to stop the importer. It asserted that the artistic elements of the trademark were artistic works under the Copyright Act and that the importer infringed that copyright by importing a copyrighted work into the country without permission. In this way, Kraft Canada was ultimately able to stop the importer’s activities.

Last modified: Wednesday, 21 October 2020, 1:20 PM