Intellectual Property Protection in Canada

There are seven areas of intellectual property law in Canada: patents, copyright, trade-marks, trade-secrets, industrial designs, plant breeders rights, and integrated circuit topography.

A product may be composed of more than one type of intellectual property. For instance a computer product, such as a router, may contain a microprocessor with a registered integrated circuit topography. The operation of the router may be patented while the computer code run on the microprocessor is protected by copyright. The case of the router could be the subject of an industrial design, while the logo imprinted on the cover is a registered trade-mark.

Patents

Patents are granted for new and useful inventions. This includes new products, methods, and new uses for old methods or products. A product derived from a new patented method is also protected.

By virtue of a patent, the patentee is granted the exclusive right, privilege and liberty to work the invention in Canada. Anyone who interferes with that right is liable for infringement of the patent.

A patent may only be granted for one of the statutorily-defined areas of subject matter. Patentable subject matter in Canada is more restricted than what may be patented in the United States.

Canada follows a first-to-file regime with a 20 year patent term measured from the application date, or earliest priority date. The rights afforded by a patent are exhaustively defined in the Patent Act.

Copyright

Copyright protects the expression of ideas, and covers a wide range of original artistic, literary, musical, dramatic and other creative works. Copyright grants the sole right to produce or reproduce the work and for unpublished works, the sole right to publish. Infringement occurs when anyone does, without consent, anything that by the Copyright Act, only the owner may authorize or do.

Copyright automatically arises once an eligible work is made or once a performance or broadcast signal occurs. It is not necessary to secure copyright registration, although registration may be useful in enforcing rights.

The term of copyright is generally the life of the author plus 50 years. Where the initial owner of a photograph is a corporation, the term is the remainder of the year of the making plus 50 years.

In addition to copyright, the author of a work is granted moral rights. Under the Copyright Act, the author of a work has a right to the integrity of their work and to be associated with their work by name, unless they choose otherwise. Moral rights are infringed when anyone commits any act or omission that is to the prejudice of the honour or reputation of the author.

Trade-marks

A trade-mark is a mark or sign that is distinctive and distinguishes the source of goods or services of one source from those of another. A word, name, design, logo, shape of a product or its packaging can be a trade-mark. The key to trade-mark protection is use of the mark in the marketplace to distinguish the source of a product or service from those of others.

A trade-mark may be registered to protect the right of the owner to use the mark in association with the goods and services listed in the registration. Registration gives the added protection that the mark may be enforced throughout Canada, and not just where the mark is best known. Registration is valid for 15 years, and may be repeatedly renewed for additional 15 year terms for as long as the mark is in use.

Common law trade-mark protection is available where a mark has been used and actually distinguishes a product or service by identifying its source in the marketplace. This protection is limited to the specific geographic region in which the mark is known.

Trade Secrets

A trade secret is commercially valuable information, such as a formula, pattern, compilation, program, device, method, technique or process, that is proprietary and kept secret by one party (e.g. the recipe for Coca-Cola).

There is no statutory basis for trade secrets law. The common law of trade secrets recognizes that the owner of a trade secret is entitled to damages if a third party obtains a secret by improper means or through a breach of confidence.

The owner of a trade secret does not have exclusive rights to use the information. A third party may independently discover the secret and work it without penalty, provided they did not obtain the secret through illegal means from the owner.

Trade secret protection lasts as long as the secret is kept confidential and requires no formal registration with the government. The protection ends once the secret reaches the public domain either through inadvertent or accidental disclosure by the secret holder or by the discovery of others.

Industrial Designs

An industrial design protects the shape, configuration, pattern or ornamentation that gives aesthetic appeal to finished articles. For example, an industrial design can be registered for the shape of a bottle, the sole of a running shoe or the form of a bottle.

Industrial designs overlap the subject matter protected by copyright, however the Copyright Act specifically excludes protection for the design of articles produced in quantities of 50 or more. Thus, the failure to obtain industrial design protection can result in no protection being available for the design. An application for an industrial design must be made within 12 months of the design being made public, and can protect the design for a term of up to 10 years.

Plant Breeders’ Rights

The Plant Breeders’ Rights Act allows plant breeders to protect new varieties of plants for up to eighteen years. All plant varieties can be protected, but algae, bacteria and fungi are specifically excluded.

A rights holder has exclusive rights over the use of the variety, and will be able to protect the new variety from exploitation by others. A person who undertakes any of the exclusive rights without authorization of the holder will infringe the holder's rights.

A variety will be protected if it is new, distinct, uniform and stable. A variety cannot have been sold in Canada prior to submitting an application for protection.

The Plant Breeders Rights Office examines applications to determine whether applicants are entitled to protection for their new varieties.

Integrated Circuit Topography

The Integrated Circuit Topography Act protects the original design of a registered topography, whether it has been embodied in an integrated circuit product or not. A topography will be original if it is developed through intellectual effort, and is not produced by mere reproduction of all or a substantial part of another topography.

Owners of registered topographies have the right to exclude others from reproducing the same topography or any substantial part of it for up to ten years from the year the application was filed. The application must be made within 2 years of commercial use of the topography.

This is a general overview of the various types of intellectual property protection. Please contact a qualified intellectual property practitioner to obtain legal advice.

Etienne de Villiers and Sangeetha Punniyamoorthy are barristers and solicitors with the firm Dimock Stratton LLP.