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fast facts

• Trade-marks can be registered for 15 years and can be renewed

• Trade-name registration does not entitle the registrant to exclusive right to the name

• Patents provide exclusive use for 20 years from the filing date

• In Canada, the author of a work made in the course of employment is the employee, not the employer

• “Moral rights” in copyright must be expressly waived by the author in Canada and cannot be assigned

protection of intellectual property in Canada trade-marks and trade-names A trade-mark is a word, design, combination of a word and design, sound, distinguishing guise or slogan used by a business to distinguish its goods or services from those of others. Although the rights in a trade-mark automatically arise when the trade-mark is in use, the owner can also register the mark with the Canadian Trade- Marks Office to obtain the exclusive right to use the trade-mark across Canada for 15 years, which can be renewed indefinitely. Without registration, the trade-mark is only protected in the specific geographic area where the trade-mark has actually been used and has developed reputation or goodwill.

A trade-name is the name under which a business operates. Although businesses can register their trade-name provincially, registrants do not receive any exclusive rights in the name.

However, all applications must actually be filed in Canada within one year of the subject matter of the invention becoming available to the public. patents A patent protects a new, non-obvious and useful art, process, machine, manufacture orcomposition of matter, or any improvement thereon. In exchange for fully disclosing theinvention to the public, the patentee is granted the exclusive right to make, use and sellthe invention for 20 years from the date of filing the patent application at the CanadianPatent Office once a patent is issued, subject to the payment of maintenance fees.

A patent application is published 18 months after filing. Examination must be requestedwithin five years after filing and the examination period typically lasts for two to three

we’ve got you covered in Canada

years. Upon filing an application and claiming priority from an application filed up to one year before in a member country of the Paris Convention, the filing date in Canada is deemed the filing date in the Convention country. Canada has entered into Patent Prosecution Highway agreements with a number of other countries, enabling examination of an application to be accelerated based on examination of the application in the other country.During the term of the patent, a patentee can bring a court proceeding against any person that interferes with the full enjoyment of the patentee’s exclusive right to the invention without his or her consent.

copyrightCopyright protects owners and authors of various forms of original works including literature, drama, art and music. Copyright only protects the form through which an idea is expressed, not the idea itself. Creators of works also have moral rights, which are the rights to the integrity of the work and the right to be associated with the work as the author or remain anonymous.

Copyright arises automatically when a work is created, however, registering a copyright with the Canadian Copyright Office entails significant benefits. If a dispute arises, registration creates the presumption that the copyright is valid and clearly identifies the owner. Registration also broadens the remedies available and facilitates assignments and licences.

The term of copyright protection varies, however, most works have a copyright term of 50 years after the author’s death. Owners and authors can enforce their rights in court against infringers and can obtain injunctions, damages and orders to destroy the infringing work.

trade secrets and industrial designA trade secret is a particular kind of confidential information and includes recipes, processes, collections of strategic business information and technologies. Trade secret protection arises when the secret is created and as long as the secret is kept confidential, the owner continues to have rights in the secret. There is no registration system for trade secrets in Canada.

Trade secrets can be protected by (i) misuse of confidential information or breach of confidence actions, (ii) company internal policies and (iii) company contracts with employees and third parties. The typical remedy when a trade secret is made public is an injunction combined with damages.

Industrial design protects the aesthetic design of a finished article. The design must exist for aesthetic purposes and cannot solely be functional to the item. Registration of the design with the Canadian Intellectual Property Office is required to receive protection. Applications must be filed within one year of the first publication of the design and registration grants the owner a 10 year exclusive right to use the design, subject to the payment of maintenance fees.

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Integrated Circuit Typography ActThe Integrated Circuit Typography Act provides exclusive rights in the design or typography of three-dimensional integrated circuits used to perform electronic functions and the like.

The foregoing provides only an overview and does not constitute legal advice. Readers are cautioned against making any decisions based on this material alone. Rather, specific legal advice should be obtained. For more information contact your regular McMillan advisor or go to http://www.mcmillan.ca.

Copyright © 2013 McMillan LLP