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08 January 2001
A trademark distinguishes the source of goods and services. It can be any word or composite word, name, symbol, design, slogan, get-up or device (or a combination of these) which is adopted or used by either a manufacturer or a merchant for the purpose of identifying it as the origin of the goods or services and distinguishing them from those manufactured, sold or provided by others.
Reasons for registration
A trademark owner will wish to ensure that trademarks used by others will not lead to confusion on the part of the public with respect to the source of the goods or services. In order to protect the exclusive right to a trademark throughout Canada, the proprietor may register it pursuant to the Trademarks Act (TA), although rights in a trademark arise and may be enforced without registration. Although not essential, it makes good business sense to register a trademark for the following reasons:
Registration process and maintenance
To obtain the benefits of a registered trademark in Canada, an application must be filed with the Canadian Trademarks Office. Registered trademark agents are entitled to sign the application on behalf of the applicant and no power-of-attorney forms are necessary.
The TA limits or prohibits the registration of certain marks (eg, marks that are so similar to those already in use or registered they are likely to cause confusion). If the Trademarks Office finds that a trademark is allowed, it is then advertised and may be opposed. Consultation with a specialist in this area is essential in order to prevent an expensive and futile attempt to register a trademark that cannot be registered.
The TA requires that registrations must be renewed every 15 years. If the registration is not renewed, it is cancelled and trademark rights are lost. Trademark rights can also be lost by non-use or abandonment, by allowing others to use confusingly similar trademarks, or by improper licensing.
Remedies for infringement
Once registered, the owner of the trademark has the exclusive right to use that mark throughout Canada for the goods or services for which it is registered. The owner may institute court proceedings against anyone who infringes this right or uses a confusingly similar trademark. The owner may obtain the following relief:
As mentioned, an unregistered mark can be enforced by an order for passing off.
A patent will be granted in respect of any new and useful invention that is not obvious. Specifically, the Patents Act (PA) provides that a 'patentable invention' is "any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement [therein]". It is not possible to obtain a patent for an aggregation of known elements that do not work together in a new way that is not obvious. Nor will a patent be granted for an invention that is an illicit object, scientific principle or abstract theorem.
Reasons for obtaining patents
Subject to certain conditions, a patent provides the patentee with the exclusive right throughout Canada to manufacture, use or sell the invention for 20 years from the date of filing the patent application. In addition, by granting a licence permitting another individual to use, manufacture or sell the invention, a patentee may gain market access more readily while earning royalties from the licensee.
The first person to fully disclose an invention in a patent application has the right to obtain a patent. A patent agent will draft the patent application for an invention. This is then filed in the Canadian Patent Office to be examined by the Commissioner of Patents or his examiners. It is essential that the invention is properly disclosed and specifically claimed. If it is insufficiently disclosed, the patent application may be denied or an issued patent may be later challenged in court by a competitor. If a claim is too broad, the applicant takes the risk that his/her invention will be considered too similar to a previous product or process and his claim will be declared invalid. If a claim is too narrow, the applicant reduces the scope of his/her legitimate monopoly.
A separate patent must be obtained in each country in which protection from infringement is sought. If a patent application is filed in Canada within one year of filing an application for the same invention in a country adhering to the Paris Convention, the effective filing date in Canada is the date of filing in the convention country. If the inventor (or someone who obtained knowledge of the invention from the inventor) discloses the subject matter of the invention in a manner that makes the subject matter available to the public more than a year before the Canadian filing date, a valid Canadian patent cannot be obtained.
Remedies for infringement
An infringement of a patent occurs whenever an act interferes with the full enjoyment of the monopoly granted to the patentee without the patentee's consent during the term of the patent. The patentee may bring a court action against an infringing party and may obtain relief comparable to that discussed above with regard to trademarks.
A trade secret (also called 'confidential information') may relate to the following:
All trade secrets are the product of work and involve the expenditure of time and money. Trade secret protection arises upon creation and, as long as it is kept confidential, there is no limit to its duration. Unlike a patent, no system for registration of trade secrets exists in Canada and an owner's remedies are restricted to those available at common law (or in Quebec, the similar right under the Quebec Civil Code). The characteristic of 'secrecy' is essential to an owner's continued rights in the secret.
In recent years, the protection of trade secrets has become more important because of the short-lived nature of new technology and because of the increasing mobility of employees.
Protecting trade secrets
Trade secrets are protected by an action for misuse of confidential information. To establish such a claim, the following must be shown:
Canadian courts have implied an obligation of good faith into the employer-employee relationship and have prevented former employees from using their employers' trade secrets after the employment relationship has terminated. Persons who occupy positions of trust (eg, directors of corporations) owe even higher duties of allegiance to the companies they represent. These duties, called fiduciary duties, include the obligation not to utilize corporate opportunities or other confidential information gained in a fiduciary capacity.
Protection of a company's trade secrets and confidential information occurs through a combination of effective internal policies to preserve the confidential aspect of information and contracts with employees and third parties that characterize certain information as trade secrets and specify the obligations that bind them. These contractual terms and internal policies should be developed with the assistance of a lawyer in order to ensure that trade secrets will be adequately protected and to ensure that contracts entered into with employees and third parties will be enforceable.
Remedies for infringement
Once a trade secret is made public, its value is significantly diminished or eliminated. Therefore, the usual remedy is an injunction restraining another party from using or speaking about the trade secret, combined with damages. If loss of secrecy is threatened, effective steps to protect the asset must be taken promptly.
Copyright arises automatically with the creation of a work by a resident of Canada or a convention country (and in some cases, by publication in Canada or a convention country). Copyright attaches to any original literary, dramatic, musical or artistic work including books, manuals, brochures, paintings, drawings, maps and computer programs. Copyright does not protect the ideas in these works but it does protect the form in which the ideas are expressed.
Ownership and duration
Except for works created by employees in the course of their employ and for commissions, engraving, portraits or photographs, the author is the first owner of copyright. The owner may assign the copyright in whole or in part.
The duration of protection varies with the type of work. For written works, copyright protection lasts for 50 years following the death of the author. For sound recordings and photographs, the protection lasts for 50 years after the time the original plate or negative was made.
Reasons for registration
Registration of copyright is optional as copyright arises automatically with the creation of a qualifying work. If, however, a copyright is registered with the Canadian Copyright Office in the prescribed form, enforcement in court is facilitated. If a dispute over the validity of a copyright arises, registration provides presumptions that the copyright is valid and that the person who registered it is the owner. Registration also broadens the available remedies and facilitates assignments and licences.
If the work has commercial importance, it is worth consulting an experienced legal practitioner with regard to registration issues. In particular, some works that may qualify for copyright protection in foreign jurisdictions may only receive protection in Canada if they are registered under the Industrial Design Act. If such a work is published more than a year before an industrial design application is filed, no protection can be obtained in Canada.
The author of a work has statutory 'moral rights', that is, the rights to the integrity of the work and the right, where reasonable, to be associated with the work as the author. Moral rights cannot be assigned but may be waived.
Remedies for infringement
Copyright gives the owner the sole right to produce, reproduce, perform or publish the work or a substantial part of it. The owner may institute court proceedings against anyone who infringes these rights and may obtain relief comparable to that discussed above concerning trademarks. There are also provisions in the Copyright Act that declare certain acts of copyright infringement to be quasi-criminal in nature.
A registered industrial design (called a 'design patent' in the United States) provides protection for the ornamentation of any article of manufacture. It relates to matters of appearance, not function. That is, the feature must exist because of design considerations, not functional considerations.
Reasons of registration
Any manufacturer who has an eye-catching design for a product that is easily replicated should consider registering the design. As well, any company thinking of spending a large sum on tooling for a new product should check to make sure there are no registered designs which are likely to force them off the market.
Industrial designs cannot be protected under the Copyright Act, and therefore the only protection available results from industrial design registration. Consultation with a specialist in this area is essential to ensure that intellectual property is protected by virtue of being registered under the proper act.
The proprietor of a design who is applying for registration must deposit with the Industrial Design Section of the Patent Office a drawing and a declaration that the design is not in use by any other person. The Commissioner of Patents will then register the design if, after examination, a previously registered design is not revealed. A certificate of registration will then be sent to the applicant. Subsequently, it is recommended that each article to which the design is applied, or the labels or packages of such articles, be marked with the symbol together with the name of the owner of the design. Without such a marking, the owner's remedies for infringement may be restricted to an injunction. A mark also enables anyone wishing to negotiate a licence to know with whom to deal.
An application for registration of the design must be filed within one year of the first publication of the design in Canada or elsewhere. If the design is not registered, it is not protected.
Remedies for infringement
Registration of an industrial design provides the registered proprietor with the exclusive right to apply that design to an article for the purpose of sale for 10 years, subject to the payment of maintenance fees. The proprietor of a registered industrial design may bring an action against anyone who applies or imitates the design without the consent of the proprietor. In such an action, the proprietor may obtain relief comparable to that discussed above concerning patents and trademarks.
In June 1990 the Integrated Circuit Topography Act became law, but is not yet in force. This act provides exclusive rights in the design or topography of integrated circuits (ie, semiconductor chips), but represents several significant departures from US law in this area. For example, despite certain exceptions to exclusivity rights under US law, it is clear that in Canada a person may not 'reverse engineer' a registered topography for commercial purposes.
For further information on this topic please contact Peter EJ Wells at Lang Michener by telephone (+1 416 360 8600) or by fax (+1 416 365 1719) or by email (firstname.lastname@example.org).
The materials contained on this web site are for general information purposes only and are subject to the disclaimer.
The materials contained on this website are for general information purposes only and are subject to the disclaimer.
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