Patents, trade marks, copyright and designs in Canada: overview

A guide to intellectual property law in Canada. The Main IPRs Q&A gives an overview of the protection and enforcement of the following IPRs: patents, trade marks, registered designs, unregistered designs, copyright and confidential information.

To compare answers across multiple jurisdictions, visit the Patents, trade marks, copyright and designs: Country Q&A tool.

This Q&A is part of the global guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-guide.

Contents

Patents

1. What are the legal requirements to obtain a patent?

An invention must be:

  • Novel.

  • Non-obvious.

  • Useful.

  • Directed to patentable subject matter.

 
2. What categories are excluded from patent protection?

The following are excluded from patent protection:

  • Mere scientific principles and abstract theorems.

  • Methods of medical treatment.

  • Higher life forms.

  • Matters relating to the exercise of professional skill and judgment.

 
3. Which authority registers patents? Does its website provide guidance on the application procedure?

The Canadian Intellectual Property Office (CIPO) registers patents. Guidance is provided at: www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr03652.html?Open&wt_src=cipo-patent-main&wt_cxt=apply#part2.1.

 
4. On what grounds and when can third parties oppose a patent application?

No formal opposition procedure exists. Protest letters can be sent by third parties during prosecution enclosing prior art.

 
5. When does patent protection start and how long does it last?

Patent protection starts on the date the patent is issued, and lasts until the 20th anniversary of the filing date. No extension is available.

 
6. On what grounds can a patent infringement action be brought?

A patent infringement action can be brought in Canada for:

  • Any act that interferes with the exclusive right of making, constructing or using the invention and selling it to others.

  • Importation of products made according to processes or made from intermediate compounds that are patented in Canada.

  • Inducing others to infringe patents.

 
7. Which courts deal with patent infringement actions?

Most patent infringement actions are heard by the Federal Court. Provincial superior courts also can hear patent infringement actions.

 
8. What are the defences to patent infringement actions?

Defences to patent infringement include:

  • Invalidity of patent asserted.

  • Non-infringement.

  • License.

  • Experimental uses.

  • Use of goods acquired prior to the existence of patent rights.

  • Limitation periods.

  • Absence of plaintiff's standing to bring the action.

 
9. What are the remedies in patent infringement actions?

Remedies include:

  • Preliminary and permanent injunctions.

  • Delivery-up or destruction.

  • Reasonable compensation for damages sustained between publication and issuance of the patent.

  • Compensatory or punitive damages.

  • Accounting of profits.

  • Awards for legal costs.

 
10. Is there a fast-track and/or a small-claims procedure for patent infringement actions?

Actions before the Federal Court or some provincial superior courts can be heard by summary trial in some circumstances.

 

Trade marks

11. What are the legal requirements to obtain a trade mark?

Trade mark rights arise with the use of the mark in Canada. Applying to register a proposed trade mark also grants certain additional rights to the applicant.

 
12. Is it necessary or advisable to register trade marks?

It is not necessary to register trade marks. Unregistered trade marks can be enforced by an action for passing off.

It is advisable though to register trade marks. Trade mark registrations are national in scope and registration permits enforcement without the need to evidence reputation or goodwill in the mark.

 
13. Which authority registers trade marks? Does its website provide guidance on the application procedure?

The Canadian Intellectual Property Office (CIPO) registers trade marks. Guidance is available on its website (www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr02360.html).

 
14. On what grounds can the regulatory authority refuse to register a trade mark?

Common grounds for refusing registration of a trade mark are that the mark is:

  • Primarily merely a name or surname.

  • Clearly descriptive or deceptively misdescriptive (in English or French) of the character or quality of the goods or services, or is the name (in any language) of the goods or services.

  • Confusing with a registered trade mark or a prior co-pending trade mark.

 
15. On what grounds and when can third parties oppose a trade mark application?

Applications can be opposed within two months of advertisement on the following grounds:

  • The application does not conform to the formal requirements of the Trade-marks Act.

  • The trade mark is not registrable.

  • The applicant is not entitled to register the trade mark.

  • The trade mark is not distinctive.

 
16. When does trade mark protection start and how long does it last?

Protection starts at registration and continues for an initial term of 15 years. Registrations can be renewed for additional 15 year terms. Upcoming legislative changes will reduce the registration and renewal terms to ten years.

 
17. On what grounds can a trade mark infringement action be brought?

A trade mark infringement action can be brought on the following grounds:

  • Unauthorised use of the trade mark in association with the goods or services.

  • Selling, distributing or advertising goods or services in association with a confusing trade mark.

  • Manufacturing, possessing, importing or exporting goods in association with a confusing trade mark.

  • Depreciating the goodwill of a registered trade mark.

 
18. Which courts deal with trade mark infringement actions?

Trade mark infringement actions are frequently heard by the Federal Court. Provincial superior courts also can hear trade mark infringement actions.

 
19. What are the defences to trade mark infringement actions?

Defences include:

  • Invalidity of the asserted registration.

  • Absence of reputation or goodwill in the asserted unregistered trade mark.

  • Absence of a likelihood of confusion with the plaintiff's mark(s).

  • Registration by the defendant of the allegedly infringing mark.

 
20. What are the remedies in trade mark infringement actions?

The remedies pre-trial include:

  • Administrative seizure by border officials.

  • Orders for search and seizure of infringing copies.

  • Preliminary injunctions.

The remedies post-trial include:

  • Permanent injunctions.

  • Delivery up or destruction.

  • Compensatory and punitive damages.

  • Accounting of profits arising from infringement.

  • Awards for legal costs.

 
21. Is there a fast-track and/or a small-claims procedure for trade mark infringement actions?

Trade mark actions before the Federal Court or some provincial superior courts can be heard by summary trial in some circumstances.

Trade mark claims can also be brought in Federal Court by application, which is an expedited procedure that does not require discovery or live witnesses.

 

Copyright

22. What are the legal requirements to obtain copyright protection?

Registration is not required for copyright protection. To be protected:

  • The author must create a literary, dramatic, musical or artistic work.

  • The work must be original.

  • The author must be a citizen of, or ordinarily resident in, Canada or another treaty country on the date of creation of the work.

Copyright can also exist in relation to a work, such as:

  • Performers' performances.

  • Sound recordings.

  • Communication signals.

 
23. Can copyright be registered?

Copyright can be registered with Canadian Intellectual Property Office (CIPO). Guidance is given at its website (www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr02281.html?Open&wt_src=cipo-cpyrght-main&wt_cxt=learn#part1.7).

 
24. When does copyright protection start and how long does it last?

Copyright protection starts on the creation of the work and usually lasts for 50 years after the author's death.

 
25. On what grounds can a copyright infringement action be brought?

Infringement actions can be brought for any unauthorised exercise of the copyright owner's exclusive rights, including:

  • Reproduction (in whole or substantial part).

  • Translation.

  • Performance of the work.

 
26. Which courts deal with copyright infringement actions?

Copyright infringement actions can be brought in the Federal Court or provincial superior courts.

 
27. What are the defences to copyright infringement actions?

Full defences include:

  • Invalidity of copyright.

  • Consent or licence.

  • "Fair dealing", including research, private study, criticism, review, news reporting, education, parody and satire.

  • Incidental inclusion of one work within another.

  • Specific statutory exceptions, including:

    • non-commercial user-generated content;

    • certain forms of private copying;

    • certain non-commercial activities of certain public institutions, religious organisations and charitable bodies,

    • safe-harbour provisions for certain activities of broadcasters, internet service providers and search engines.

  • Limitation periods.

  • Absence of the claimant's standing to bring the action.

Partial defences include:

  • Innocent infringement of an unregistered copyright without prior notice.

  • Caps on statutory damages for non-commercial activities.

 
28. What are the remedies in copyright infringement actions?

Pre-trial remedies include:

  • Administrative seizure by border officials.

  • Orders for search and seizure of infringing copies.

  • Preliminary injunctions.

Post-trial remedies include:

  • Permanent injunctions.

  • Delivery up or destruction.

  • Compensatory and punitive damages.

  • Accounting of profits arising from infringement.

  • Statutory damages.

  • Awards for legal costs.

 
29. Is there a fast-track and/or a small-claims procedure for copyright infringement actions?

Copyright actions before the Federal Court or some provincial superior courts can be heard by summary trial in some circumstances.

Copyright claims can also be brought in Federal Court by application, which is an expedited procedure that does not require discovery or live witnesses.

 

Registered designs

30. What are the legal conditions to obtain a registered design right?

A design must be substantially original in order to be entitled to registration.

 
31. Which authority registers designs?

The Canadian Intellectual Property Office (CIPO) registers industrial designs. Guidance is provided on its website (www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr02300.html?Open&wt_src=cipo-id-main&wt_cxt=learn).

 
32. On what grounds and when can third parties oppose a registered design application?

Pending applications cannot be opposed.

 
33. When does registered design protection start and how long does it last?

Protection begins at the date of registration and lasts up to ten years.

 
34. On what grounds can a registered design infringement action be brought?

A registered design infringement action can be brought where there is the making, importing, selling, or renting of any article for which the design is registered and to which the design has been applied.

 
35. Which courts deal with registered design infringement actions?

The Federal Court and provincial superior courts can hear design infringement actions.

 
36. What are the defences to registered design infringement actions?

Defences include:

  • Non-infringement.

  • Invalidity of the asserted registration.

  • Innocent infringement without prior notice.

  • Licence or consent.

  • Absence of claimant's standing to bring the action.

  • Limitation periods.

 
37. What are the remedies in registered design infringement actions?

The remedies include:

  • Injunctions.

  • Recovery of compensatory damages or profits.

  • Punitive damages.

  • Delivery up.

 
38. Is there a fast-track and/or a small-claims procedure for registered design infringement actions?

Actions before the Federal Court or some provincial superior courts can be heard by summary trial in some circumstances.

 

Unregistered designs

39. What are the legal conditions for unregistered design rights to arise?

Unregistered designs are not protected per se, however, there may be limited protection under trade mark and copyright law. Copyright can subsist in the design of an article produced in quantities of 50 or less. Copyright can also subsist in certain kinds of articles produced in quantities greater than 50, provided that certain specific statutory exceptions are met.

 
40. When does unregistered design protection start and how long does it last?

Not applicable.

 
41. On what grounds can an unregistered design infringement action be brought?

Not applicable.

 
42. What are the defences to unregistered design infringement actions?

Not applicable.

 
43. What are the remedies in unregistered design infringement actions?

Not applicable.

 

Confidential information

44. What are the legal conditions for rights in confidential information to arise?

To be protectable, the information must:

  • Be confidential in nature.

  • Have been communicated in circumstances of confidence.

  • Be misused by the party to whom it was communicated.

 
45. On what grounds can an action for unauthorised use of confidential information be brought?

The grounds for an action for unauthorised use of confidential information include:

  • Breach of confidence.

  • Breach of an express or implied provision of a contract.

  • Breach of fiduciary duty.

  • Unjust enrichment.

 
46. Which courts deal with actions for unauthorised use of confidential information?

An action for improper use or disclosure of a trade secret or confidential information must be brought in the provincial courts.

 
47. What are the defences to actions for unauthorised use of confidential information?

The defences include:

  • The information was not confidential.

  • No duty of confidence was owed.

  • Information was not misappropriated.

  • Disclosure was in the public interest.

  • Defendant was an innocent recipient.

  • Limitation periods, laches, and acquiescence.

 
48. What are the remedies in actions for unauthorised use of confidential information?

The remedies include:

  • Preliminary and permanent injunctions.

  • Constructive trusts.

  • Delivery up or destruction of materials.

  • Anton Pillar orders.

  • Compensatory and punitive damages.

  • Accounting of profits.

 
49. Is there a fast-track and/or a small-claims procedure for actions for unauthorised use of confidential information?

Small claims procedures exist in most provincial courts. However, remedies are typically capped (for example, less than US$25,000).

*The authors wish to acknowledge the invaluable contributions to this article of Erika Murray and Yaroslav Riabinin, both students-at-law.

 

Online resources

The Canadian Intellectual Property Office

W www.cipo.gc.ca

Main areas of responsibility. Patents, trademarks, copyright and industrial designs.

Guidance on application procedure. See www.cipo.gc.ca.



Contributor profiles

Janet M Fuhrer, Partner

Ridout & Maybee LLP

T 613-236-8804
F 613-236-2485
E jfuhrer@ridoutmaybee.com
W www.ridoutmaybee.com

Professional qualifications. Province of Ontario, Canada, Barrister & Solicitor, 1987; Canada, registered trade mark agent, 1987; Law Society of Upper Canada, Certified Specialist (Intellectual Property Law: Trade-marks/Copyright), 2004

Areas of practice. Trade marks; copyright; trade secrets; licensing and IP transactions; litigation; mediation and arbitration; information technology; advertising and marketing

Non-professional qualifications. LLB, Queen's University, 1985; LLM (e-Business), York University, Osgoode Hall Law School, 2003

Professional associations/memberships. Intellectual Property Institute of Canada (IPIC), Past President and Fellow; Canadian Bar Association (CBA), First Vice-President, National Sections Council Executive, Past Chair; Professional Development Committee, Past Chair, First Vice-President; Ontario Bar Association (OBA), Strategic Planning Committee, Past Chair; International Trade Mark Association (INTA); Trade marks Agents Examination Board, Past Chair

Publications.

  • Trade mark Co-existence Agreements: To Co-exist or Not - A Canadian Perspective – Paper. Texas State Bar 25th Annual Intellectual Property Law Course, 2012, Houston, TX.
  • IP Goes Digital - How the Internet Has Changed the Way We Look at IP –Panelist, The Law Society of Upper Canada 16th Annual Intellectual Property Law Year in Review, 2012, Ottawa, ON.

Jaimie Bordman, Associate

Ridout & Maybee LLP

T 613 288 8023
F 613 236 2485
E jbordman@ridoutmaybee.com
F www.ridoutmaybee.com

Professional qualification. Barrister and Solicitor, Province of Ontario, Canada, 2010; Attorney at law, State of New York, US, 2010; registered trade mark agent, Canada, 2011

Areas of practice. Patents; trade marks; litigation; licensing and IP transactions; electrical and high tech; information technology

Non-professional qualifications. B.Eng. (Engineering Physics), Carleton University, Canada, 2005; LLB, University of Windsor, Canada, 2009; JD, University of Detroit Mercy, US, 2009

Professional associations/memberships. Canadian Bar Association (CBA), member; Ontario Bar Association (OBA), member; New York State Bar Association (NYSBA), member; Intellectual Property Institute of Canada (IPIC), affiliate

Andrew Montague, Associate

Ridout & Maybee LLP

T 613 288 8007
F 613 236 2485
E amontague@ridoutmaybee.com
W www.ridoutmaybee.com

Professional qualifications. Province of Ontario, Barrister & Solicitor, 2011; registered trade mark agent, Canada, 2012; registered patent agent, Canada, 2014

Areas of practice. Patents; trade marks; litigation; licensing and IP transactions; biotechnology, chemical and pharmaceutical

Non-professional qualifications. BSc, (Honours Molecular Biology & Genetics), University of Guelph, Canada, 2003; MSc (Plant Agriculture), University of Guelph, Canada, 2006; LLB, University of Ottawa, Canada, 2010

Professional associations/memberships. Canadian Bar Association (CBA), Member; Intellectual Property Institute of Canada (IPIC), Affiliate; IPIC, Young Practitioners Committee, Member; IPIC, Biotechnology Patents Committee, Member; Member of Editorial Board of CLB's Canadian Patent Reporter (CPR)

Publications. Montague., Ziauddin A, Lee R., Ainley W M, and Strommer J (2007) "High efficiency phosphinothricin-based selection for alfalfa transformation", Plant Cell Tissue and Organ Culture 91:29-36.

Roy Yang, Associate

Ridout & Maybee LLP

T 613 236 1995 x 153
F 613 236 2485
E ryang@ridoutmaybee.com
W www.ridoutmaybee.com

Professional qualifications. Province of Ontario, Canada, Barrister & Solicitor, 2013; Registered trade mark agent, 2015

Areas of practice. Patents; trade marks; licensing and IP transactions; electrical and high tech; information technology

Non-professional qualifications. BSc (Electrical Engineering), Beijing Jiaotong University, 1996; MBA (Strategic management), Schulich School of Business, York University, 2010; JD, University of Ottawa, Canada, 2011

Languages. Mandarin, English

Professional associations/memberships. Intellectual Property Institute of Canada (IPIC), affiliate; International Trade Mark Association (INTA)

Kenneth Ma, Associate

Ridout & Maybee LLP

T 613 288 8014
F 613 236 2485
E kma@ridoutmaybee.com
W www.ridoutmaybee.com

Professional qualifications. Province of Ontario, Canada, Barrister & Solicitor, 2014.

Areas of practice. Patents; trade marks; licensing and IP transactions; litigation biotechnology, chemical and pharmaceutical; clean tech group

Non-professional qualifications. PhD (Cellular and Molecular Medicine), University of Ottawa, Canada, 2005; BSc, McGill University, 1997; JD, University of Ottawa, Canada, 2013

Languages. English, Cantonese

Professional associations/memberships. Intellectual Property Institute of Canada (IPIC), 2014; Law Society of Upper Canada, 2014; Canadian Bar Association (CBA), member

Publications

  • Ma, Kenneth K-Y, Banas, Krystyna, and de Bold, Adolfo J, "Determinants of Inducible Brain Natriuretic Peptide Promoter Activity", Regulatory Peptides, 2005 Jun 30; 128(3):169-76.
  • Ma, Kenneth K-Y, and de Bold, Adolfo J, "Atrial Natriuretic Factor and Family of Natriuretic Peptides. Encyclopedia of Endocrine Diseases", ed Luciano Martini. Academic Press, March 2004.

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