Doing Business in Canada: Intellectual Property Law

by Bennett Jones LLP
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Intellectual property (IP) portfolios are valuable assets that must be properly acquired, advantageously exploited and thoroughly protected in all commercially significant jurisdictions. Companies considering doing business in Canada need to be aware of several key differences between Canadian IP laws and those of other countries. Some of those differences are discussed below.

Copyright

Copyright subsists in original literary, musical or dramatic works that are the product of skill and judgment, and fixed in a tangible form. Registration is not required to create the right although it does create beneficial rebuttable presumptions. A sample of the work is not filed with the registration application. Marking the work with a copyright notice, although not required, is typically done. This creates benefits under certain international treaties and beneficial presumptions as to ownership.

The copyright owner has the sole right to produce, reproduce, perform or publish any translation of the work.

The author of a work owns moral rights, including a right of integrity (involving mutilation or distortion of the work) and a right of association (to have the author’s name associated with the work or remain anonymous). Moral rights may not be assigned, only waived.

Copyright Infringement

Infringement of copyright occurs when anything is done (e.g., reproduction, in whole or substantial part, of the work) that is reserved exclusively to the copyright owner without the owner’s consent. A copyright registration is not necessary to commence an action for infringement in Canada.

In interpreting Canadian copyright law, Canadian courts aim to strike a balance between the rights of owners of copyright works (including an economic reward for its creation) and the rights of users.

Assignments and Licenses of Copyright

Copyrights are assignable but assignments must satisfy certain formalities. A copyright owner may license rights under copyright to another although licenses should be in writing.

Patents

In Canada, patents are granted only to the original inventor or that person’s legal representatives on a first-to-file basis, not on a first-to-invent basis. Generally, all inventive subject matter may be patentable and while lower life forms are patentable, methods of medical treatment and higher life forms are not patentable.

As Canada is a signatory to the Paris Convention and Patent Co-operation Treaty, applications may be filed on the basis of foreign applications (claiming priority).

Advanced Examination

An applicant may accelerate the examination of a patent application in Canada by paying the required fee and filing a statement that failure to advance the application is likely to prejudice the applicant’s rights.

Filing of Prior Art and Claim Amendments

If the Patent Examiner so requests, an applicant for a Canadian patent must identify the prior art cited in corresponding patent applications in other jurisdictions. An applicant may voluntarily do so to ensure that the prior art is entered on the record.

Claim amendments may be filed without affecting the scope of issued claims. The prosecution history of a patent application cannot be used to construe patent claims in Canadian litigation.

New Matter, New Application

If an applicant wishes to introduce new matter into a pending patent application, the applicant must file a new patent application. An applicant may not file a continuation-in-part patent application.

Assignments and Licenses of Patent Rights

Patents are assignable but must satisfy certain formalities. A patent owner may license rights under the patent to another. There are no marking requirements on patented goods.

Trademarks

Trademark applications may be filed in Canada on the basis of actual use in commerce or proposed use. Canada does not have a class system. For one filing fee, an applicant may file an application covering different wares/services, provided it has a bona fide intention to use the trademark in association with those wares/services.

Applications may be filed on the basis of foreign applications (claiming priority under the Paris Convention) and registration and use abroad. Canada has not adopted the Madrid Protocol.

Enforcement of Trademark Rights

Trademarks, whether registered or unregistered, may be enforced in Canada’s Federal or Superior Courts. Rights afforded to registered trademarks include the right to exclusive use of the mark across Canada in association with the wares/services and to prevent the depreciation of goodwill associated with the mark.

An improper registration may be expunged. Trademarks must be continually used to provide enforceable rights. In appropriate circumstances, a party may apply to remove a registration for non-use.

Assignments and Licenses of Trademark Rights

Trademarks are assignable with or without associated goodwill but must satisfy certain formalities. A trademark owner may license the use of the trademark to another provided the owner retains control over the character and quality of the wares/services associated with the trademark.

Confidential Information

Canadian law provides remedies for the protection of confidential information provided that there is a relationship requiring confidentiality and the infromation is secret.

Enforcement of Secrecy Obligations

An action may be brought in a Superior Court to enforce confidentiality and non-use obligations. Injunctive relief is a common remedy.

Assignment or License of Confidential Information

Confidential information is not property (at least for criminal law purposes) and care must be taken in transactions involving the transfer or license of such rights.

IP Litigation

Most IP litigation takes place in the Federal Court of Canada, where juries are prohibited. IP litigation also occurs in Canadian Superior Courts; but, as juries in such courts cannot grant injunctions, this effectively eliminates jury trials in Canadian IP cases.

Anti-Competitive Conduct

Canadian legislation prohibits the abuse of IP rights to unduly prevent or lessen competition and provides remedies in the event of anti-competitive acts.

Domain Name and Internet Disputes

Canadian Superior Courts may grant orders for the identification of anonymous posters of infringing content on websites. Claims of domain name and website misuse may be brought before Canadian Superior Courts, which can order the transfer of a domain name or other injunctive relief.

No Treble Damages

A successful IP owner/litigant is entitled to damages caused by the infringing acts or, in some cases, an award of the net profits made by the infringer. A punitive damages award for intentional infringement or other misconduct is rarely made, even in cases of demonstrated deliberate and intentional infringement.

Anton Piller Order

An Anton Piller order is essentially a private search warrant that can authorize the search of businesses, computers, private homes, etc. to locate and preserve relevant evidence. Such an order is difficult to obtain.

Litigation Costs

A successful party in Canada is entitled to an award of costs from the other side. The amount usually covers a small portion of the fees paid to counsel and reimbursement of many out-of-pocket expenses necessarily incurred in the litigation.

Conclusion

Canada’s intellectual property law is well developed. It permits considerable flexibility in transactions involving IP rights and provides protection linked to important international treaties. An independent judiciary provides for enforcement of IP rights where needed.

Bennett Jones’ Intellectual Property Group

For companies bringing new products, services or technology into Canada, Bennett Jones’ Intellectual Property Group efficiently and creatively works to identify, protect and address any intellectual property risks and, where necessary, clear a path to market entry. Our team combines extensive intellectual property expertise with renowned transactional and litigation skills to address the full spectrum of dealings with intellectual property. We are qualified to file and prosecute patent and trademark applications before both Canadian and U.S. offices and file internationally. We appear as counsel before all levels of the Canadian courts and international tribunals.


 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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