IP Overview of Canada

By Blake, Cassels & Graydon LLP.,[Comprehensive Reports]

With only a few exceptions, federal law governs intellectual property in Canada. Federal statute law regulates patents, trade-marks, copyright and moral rights, industrial designs, topography rights and plant breeders rights.


The only provincially regulated aspects of intellectual personality rights and confidential information, and the statutes in some provinces governing personality rights.
Provincial law also governs trade names and contracts related to intellectual property, such as transfers, licences and security interests.


Patent

Patents are granted for inventions that satisfy the criteria prescribed by the Patent Act. The patentee may exclude others from making, using or selling an invention protected by a patent.
A patent may be obtained for an invention that falls within the categories of an art, process, machine, manufacture or composition of matter or an improvement to any of the foregoing. To be patentable, an invention must satisfy the criteria of novelty, usefulness and inventiveness. The novelty of an invention is assessed with reference to certain statutory criteria. In the event of competing applications, only the person whose application has the earliest effective filing date may be entitled to a patent. However, only an inventor or a person who derives rights from the inventor is entitled to a patent. An invention made by an employee within the scope of employment is the property of his or her employer. Utility is determined by whether the invention has a useful purpose and is capable of operation. Inventiveness means that the invention is not obvious to a person having ordinary skill in the art to which the invention relates.


Only the inventor (or a person deriving rights from the inventor such as the inventor’s employer or assignee) is entitled to a patent provided he/she is the first to file for the invention.  An invention will not be patentable if it is made available through disclosure by publication, sale or otherwise in any country prior to the filing date of the application, unless the disclosure is made by the inventor or someone who derives knowledge from the inventor and an application is filed within one year of such a disclosure.


Canada is a signatory to the Paris Convention and the General Agreement on Tariffs and Trade establishing the World Trade Organization. Thus, in determining priority of filing, an applicant can rely on the filing date of its first application for a patent for the same invention in another country which is also a signatory to either of these treaties (“priority date”) if the Canadian application is filed within one year of the priority date. Canada is also a signatory to the North American Free Trade Agreement, the Budapest Treaty and the Patent Co-operation Treaty (PCT). An international PCT application may designate Canada, entitling the applicant to enter the national phase in Canada.


As in many other jurisdictions, claims determine the scope of protection in a patent.  Construction of the claims, if the patent is litigated, is a legal function performed in a purposive manner by a judge having reference to the entire patent but not its prosecution history and as the claims would be understood by a person skilled in the art. The patent must also contain a description of the invention so as to enable a person skilled in the art to practice the invention after the patent’s term has expired (20 years from filing date). 


The Canadian Intellectual Property Office (CIPO) is charged with examination of a patent application, something that must be requested within five years of filing.  Objections to applications taken by CIPO are known as office actions and must be answered before the application can move forward. Failure to do so can result in abandonment that must be addressed within a one-year window in order for the application to be reinstated. Applications are published or “laid open for public inspection” 18 months after the earlier of the filing or priority date.  Annual maintenance fees must be paid to keep patent applications pending and those issued in force.


Trade-Mark

A trade-mark is a word, symbol, sound or shape used to distinguish a person’s goods or services from those of others. Trade-mark rights can be acquired through use of the mark in Canada in association with goods, services or both, or by registration. Although a trade-mark need not to be registered to be protected, registration will usually ensure protection throughout Canada and facilitate enforcement of trade-mark rights.


A valid trade-mark registration gives the owner exclusive rights to use of the mark throughout Canada. Infringement of that right occurs if there is unauthorized use of that mark or a confusingly similar mark that it would lead to the inference that such use is by someone who is the same person or associated with the owner of that mark.


In the absence of registration, a trade-mark can be protected only in the geographical area in which the owner can establish a reputation or goodwill in association with the mark and the goods and services offered with it. The reservation of a business name or a corporate name, the incorporation of a company or the registration of a domain name will not itself create any trade-mark rights.


Trade-marks are governed by the Trade-marks Act and registrations are issued by the Registrar of Trade-marks for a period of 15 years, renewable for subsequent 15-year terms upon payment of a renewal fee.


A trade-mark is registrable if it is not: (i) primarily merely the name or surname of an individual who is living or has died within the preceding 30 years; (ii) either clearly descriptive or deceptively descriptive in the English or French language of the character or quality of the wares or services in association with which it is used or of the conditions of, or the persons employed in, their production, or of their place of origin; (iii) the name in any language of the wares or services in association with which it is used; (iv) confusing with a registered trade-mark; or (v) a mark of which the adoption is prohibited.


 Although otherwise not registrable, some marks may be registrable if they have been so used in Canada as to have become distinctive or, if registered in a foreign country, are not without distinctive character.


The Trade-marks Act sets out a number of bases onwhich registration may be obtained:  (1) use in Canada by the applicant or a predecessor in title; (2) proposed use (where actual use occurs prior to registration); (3) making a trade-mark known in Canada; and (4) registration in the applicant’s country of origin combined with use in a foreign country that is a signatory to the Paris Convention or is a member of the WTO. (Note that Canada has not adhered to the Nice Agreement, the Trademark Treaty or the Madrid Protocol). 


CIPO examines trade-mark applications and, if a mark is found to be registrable, it will be advertised in the Trade-marks Journal. Within two months of such advertisement, any person may oppose the application, in which case, registrability will depend upon the outcome of the opposition proceedings.


Copyright

Copyright is governed by the Copyright Act. Copyright is the sole right to reproduce, publish, publicly perform, telecommunicate to the public and effect other defined activities in respect of literary, dramatic, artistic and musical works. Copyright also includes rights of performers in their performances, and rights in relation to sound recordings and broadcast signals. Only the form of expression of a work is protected. Copyright does not protect an idea, concept or information.


Canada is a signatory to the Berne Convention, the Universal Copyright Convention and the Rome Convention. Canada is also a signatory to the General Agreement on Tariffs and Trade established by the World Trade Organization. Pursuant to those conventions, Canada recognizes copyright in works and other subject matter created by nationals of other signatories to the conventions. Canada is also a member of the World Intellectual Property Organization (WIPO) Copyright Treaty, the WIPO Performances and Phonograms Treaty and the North American Free Trade Agreement.


Copyright protection subsists in any work capable of being so protected from the moment it is created and fixed in a tangible form, provided that certain conditions relating to the publication and residence or domicile of the author in a convention country are satisfied. No registration of copyright is necessary, although registration is helpful as a means of proof of copyright and its ownership in the event of litigation. Marking of copyright on articles with a copyright notice is not necessary in Canada but is a usual practice.


The author of a work is generally the first owner of copyright in the work. If the author is in the employment of another and the work is made in the course of such employment, the employer is the first owner of copyright. If the author is an independent contractor and there is no written transfer of copyright, copyright is owned by the author. Special rules apply for engravings, photographs, portraits, contributions to periodicals, and works prepared or published by or under the direction or control of the federal government. Other special rules apply for performers performances, sound recordings and communication signals.


Copyright generally lasts for the life of the author plus 50 years.  If copyright is assigned, it runs for the life of the author plus 25 years and then reverts to the author’s estate for the remaining 25 years. In addition to the remedies available to all IP owners, the court may grant statutory damages.


Industrial Design

Industrial design rights under the Industrial Design Act relate to the features of shape, configuration, pattern or other non-functional ornamentation applied to a finished product. To be registrable, a design must be an aesthetic feature.


Application for registration must be filed within a year of the first publication of the design. Persons who have filed design applications in signatory countries of the Paris
Convention or the WTO may be entitled to a priority date if a filing for the same design is made within 6 months of the priority date.


Registration of an industrial design entitles the registrant to restrain the manufacture, importation for trade, sale and rental of any article of which the design is registered including articles with a design not substantially different. A registration must be obtained in the name of the original proprietor; that is, the author or person for whom the design was authored for valuable consideration (such as an employer). The application for registration is examined by CIPO. Registration is granted for five years and may be extended for another five-year period upon payment of a maintenance fee. 


Domain Name

Canada’s country code top level domain registry is dot-ca. To register a dot-ca domain name, the applicant must satisfy one of 18 criteria set out in the Canadian Presence Requirements requiring some nexus to Canada. For example, a foreign corporation owning a Canadian trade-mark registration can register and hold a domain name provided that it consists of or includes the exact words of the registered trademark. The dot-ca registry has a domain name dispute resolution policy modelled closely on the Uniform Dispute Resolution Policy but there are significant differences.


(Source: International IP Law Firms)

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