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Strong branding best defence against imitators for unpatentable products

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Strong branding is the best defence against copycat products when patenting isn’t an option, says Toronto intellectual property lawyer John Simpson.

While it may be tempting for manufacturers to claim patentable features as a marketing ploy, Simpson, principal of IP and new media law boutique Shift Law, tells that the tactic comes with legal risks.

“False patent claims have long been a gimmick used to convey technological superiority in a product that is not actually patentable or the subject of any patent. In the U.S., patent law specifically prohibits this. In Canada, it’s a matter of false advertising under the Competition Act,” he explains.

For companies that make products that are innovative and popular but not patentable, “strong branding is your only defence against imitators,” Simpson says.

“You need to condition consumers to associate the product with only one brand name, and to protect your trademark rights as much as possible. This will put imitators who will have to give their products a different name at a commercial disadvantage,” he adds.

“It’s also a good idea to incorporate design features into your product that identify you as a trade source and to register those features as trademarks.”

In a recent story, CBC News reported that a Saskatchewan moulded clog shoe company is suing a large global competitor, arguing that it obtained an unfair competitive advantage by claiming its shoes were made with a special patented resin.

According to the story, the Canadian company claims the resin was never actually patented, and it wants punitive damages for losses it says it incurred as a result of the allegedly misleading claims.

The larger U.S.-based company responded by launching a claim of its own, alleging that one of its Canadian competitor's products was an “imitation” of its own patented design.

None of the allegations in either claim has been proven in court.

“It seems to me that the Canadian company has the stronger case here if only because it has an actionable claim under the Competition Act,” says Simpson, who is not involved in either suit and comments generally.

“The American company’s claim seems to be based on vague allegations of selling an ‘imitation product’ which is not, in itself, an actionable claim,” he explains. “In Canada, it would have to prove that it owns trademark rights in a ‘distinguishing guise,’ or features of their shoe design that are not functional or purely aesthetic but are rather used to identify a trade source.”

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