World Book. Protection of IP Canada TRADE-MARKS 1.1 INTRODUCTION 1.2 REGISTERED TRADE-MARKS

Transcription

1 World Book 1. TRADE-MARKS 1.1 INTRODUCTION The Act relating to trade-marks and unfair competition (commonly known as the Trade-marks Act) governs trade-mark matters in and, as a federal law, receives application on a national basis. The Canadian Intellectual Property Office (CIPO) is the federal authority in charge of the registration process, as well as for most other types on intellectual property (patents, industrial designs, copyrights, etc.). As is not part of the Madrid Protocol, international filings under Madrid cannot cover and an independent filing is therefore necessary. does not have an official class system, has not adhered to the Nice Convention, the applications thus not referring to the International Classification. A single application can cover an unlimited number of goods and services, for a single governmental fee. Before the registration certificate can be issued however, use of the trade-mark must have started in for each ware and service indicated in the application. The definition of what constitutes use in has been interpreted by the Canadian courts and one should seek advice to ensure enforceability and validity of the trade-mark. 1.2 REGISTERED TRADE-MARKS It is not mandatory to register a trade-mark in, as use of a mark can establish ownership through Common Law but it is important to insist on the fact that a common law trade-mark can offer very restricted protection, particularly if the owner cannot establish use of the trade-mark throughout the entire Canadian territory. As registration costs are low, it is recommended to file for registration and to also proceed first with an availability search. Good search engines are available from private research firms, as the CIPO search engine available on its website is somewhat limited. What constitute possible confusion has been interpreted by local Canadian courts and one should seek legal advice from Canadian lawyers and trademark agents. Registering the trade-mark will provide its owner with exclusive rights across for 15 years. Registrations can be renewed thereafter for periods of 15 years as long as the trade-mark is still in use. A trade-mark must be used by a person for the purpose of distinguishing, or so as to distinguish his wares or services, from those of another person. In order to be registrable, a trade-mark must not be descriptive or deceptively misdescriptive of its related wares or services and must be distinctive. Trade-marks in include words, designs, combination of words and designs, slogans, symbols, sounds, certification marks. Distinguishing guises (shaping of wares or of their containers, and well as distinguishing means of wrapping or packing wares or as to distinguish wares and services from those offered by others) are registrable as trade-marks only in specific cases, as per the conditions of Section 13 of the Law and under Practice Notices issued by CIPO. The registered owner of a Canadian trade-mark registration does not have to prove its ownership in a dispute since it has exclusive use of a mark across pursuant to Section 19 of the Trade-Marks Act.

2 It can also invoke Section 7 (passing-off), Section 20 (infringement), as well as Section 22 (depreciation of goodwill). Moreover, the owner of a Canadian trade-mark registration can request a judicial order before the Federal Court pursuant to Section 55 of the Act. A registered trade-mark may be subject to cancellation for non-use if it is not used for three years, the trade-mark not being subject to cancellation for non-use however during the first three years following its registration. The registration process will normally take between 12 to 18 months, depending on CIPO s backlog of pending applications. The registration process is however subject to a formal examination from CIPO as to possible confusion and registrability, as well as to an opposition process of sixty (60) days following publication UNREGISTERED TRADE-MARKS If a trade-mark is not registered on the Canadian database, it may be inadvertently used by a third party or without the owner s consent. If a trade-mark is registered on the database, it will at least help to prevent infringement before it happens and may also be useful to resolve litigation with third parties. When a trade-mark is not registered in, its user could be involved in a long and expensive legal dispute in order to prove who has the right to use the trade-mark. The owner of a non-registered trademark will only be able to sue under Section 7 of the Act and will have to prove, unlike an owner of a registered trade-mark, that its business has acquired a reputation or goodwill in the trade-mark throughout the entire Canadian territory. Otherwise, the scope of protection could be limited to only a certain territory within. Following a Supreme Court of s decision, the rule of first to file, first to proceed with the registration process at CIPO, now applies. The owners of a unregistered trade-mark, having prior use, now has to formally file an opposition to prevent registration of the confusing trade-mark, provided obviously that he has even been made aware of the filing of such a confusing trade-mark, to be able to oppose within the statutory period. 2. PATENTS 2.1 INTRODUCTION In, patents are ruled by the Patent Act which has been amended a few times since in the recent years. A patent protects inventions, which are new, useful, inventive and not obvious to someone skilled in the art. A patent provides its inventor with the right to prevent third parties from copying, using or making the invention. The protection is granted for a period of 20 years starting from the date of application. A patent cannot be obtained in if the invention was published more than one (1) year before its application with the Canadian Patent Office (CPO). In, the first to file system applies. Even if the inventor can prove that he was the first to produce the invention, he will not have priority on an inventor who filed before him. Patent applications can be filed by the inventor, but preferably with the help of a patent agent, who will draft a patent application comprising generally an abstract, a description of the invention including prior art and designs as well as claims of the invention, which define the boundaries of the patent protection. The patent application will be published 18 months after the date of filing. It will be examined only if it is requested by the applicant, who will then have 5 years starting from the date of filing to submit such a request. An examiner will determine if the invention meets all the requirements concerning novelty,

3 utility and inventiveness. The patent will then be granted for a period of 20 years starting from the filing date, subject to the payment of annual maintenance fees. Specific federal legislation also applies in the case when of an invention is made by a public servant during the scope of his duties or employment or with facilities, equipment or financial aid. The Public Servants Inventions Act grants the inventions and rights with respect thereto to Her Majesty in such a case. As for employees, nothing in the law specifically provides that an invention created during the course of employment by an employee belongs to its employer. It is court decisions that have confirmed such rightful ownership of the employer but an assignment from the actual employee to the employer will need to be produced to the (CPO). It is therefore recommended that employee contracts have specific provisions regarding all intellectual property issues. Please note that labour laws are of provincial jurisdiction, so legal review, from a lawyer of the specific province of employment of the employee, is recommended. 2.2 INDUSTRIAL DESIGNS Governed under the Canadian Industrial Design Act, an industrial design is the visual features of shape, configuration, pattern or ornament (or any combination of these features) applied to a finished article made by hand, tool or machine. To be registrable, the industrial design must have features that appeal to the eye and be original. If a creator s industrial design has been published, an application to obtain a registration must be filed within 12 months following the publication. A registered industrial design gives exclusive rights to its creator for an overall period of 10 years (5 +5). It will then become part of the public domain. The protection conferred by an industrial design in is different to that conferred by copyright and trade-marks because, if an industrial design is not registered, it is not possible to claim ownership or legal protection. The filing of an industrial design is the right protection to seek to cover manufactured goods to which such design applies. The owner may not rely on the protection offered in by the Copyright Act, as it is not intended to cover manufactured goods, as per numerous Canadian court decisions. 2.3 COPYRIGHT In, copyright is protected by the Copyright Act and gives rights to authors of literary, artistic, dramatic and musical works and of computer programs. The protection subsists during the life of the author and lasts for 50 years following his death. A 50 year protection is also calculated as per the other specific cases provided by the Copyright Act (collaborations, nationals of other countries, photographs, etc.). Registration is not mandatory but as it is so inexpensive, one should make sure to file for registration, in order to obtain, within a matter of a few days, a registration certificate which can also be use internationally in the defence of the intellectual property portfolio. Under Section 27 of the Copyright Act, it is an infringement of the copyright for any person, without the consent of the owner, to : (a) (d) sell or rent out; distribute to such an extent as to affect prejudicially the owner of the copyright; by way of trade distribute, expose or offer for sale or rental, or exhibit in public; possess for the purpose of doing anything referred to in paragraphs (a) to ; or

4 (e) import into for the purpose of doing anything referred to in paragraphs (a) to ; a copy of a work, sound recording or fixation of a performer s performance or of a communication signal that the person knows or should have known infringes copyright or would infringe if it had been made in by the person who made it. Specific legislations also apply with regard to the status of the artist, the professional status and conditions of the engagement of performing, recording and filming artists, and the professional status of artists in the visual arts, arts and crafts and literature and their contracts with promoters. The original author retains moral rights as to the integrity of a work, the right to be associated with the work as its author by name or pseudonym, and the right to remain anonymous. Said morals rights cannot be assigned. The author may only waive his oral rights, so specific wording should be used in any contract giving rise to any possible copyright, in order to obtain such renunciation, in addition to assigning the copyright itself. The Copyright Act is the only Canadian intellectual property law that specifically provides that the employer is the owner of work made in the course of employment. The employment contract should nevertheless contain intellectual property provisions, including the renunciation to moral rights under the Copyright law. Assignments and renunciation need to be in writing and signed by both parties, so such a document should always be obtained, particularly in the case of any work subcontracted to independent contractors in who will retain copyright rights on the work on the work INTEGRATED CIRCUIT TOPOGRAPHIES The Integrated Circuit Topography Act refers to computer chips constituting integrated circuit products and grants to the owner the right to reproduce, manufacture and exploit its topography. To obtain protection under the Act, the topography must not reproduce another topography. The Act gives the owner the exclusive right to (Section 3(2) of the Integrated Circuit Topography): (a) reproduce the topography or any substantial part thereof; manufacture an integrated circuit product incorporating the topography or any substantial part thereof; and import or commercially exploit the topography or any substantial part thereof or an integrated circuit product that incorporates the topography or any substantial part thereof. 2.5 PLANT BREEDERS RIGHTS ACT New varieties of plant species can be protected under the Plant Breeders Rights Act. Thus, a person cannot adopt or use a mark resembling a denomination protected under that Act. The Canadian authorities grant rights for these denominations that provide owners with control over their reproductive material. 2.6 INDUSTRIAL SECRETS AND KNOWHOW Protection of industrial secrets and knowhow shall be governed by local laws and in some instances the federal Competition Act. Common law decisions rendered in common law provinces and the Civil Code for the Province of Quebec, provide remedies. But one should always make sure to put in place confidentiality and non-use provisions in any contract that will lead to industrial secret, knowhow and other valuable confidential information being made available to anybody (employees, subcontractors,

5 World Book partners, shareholders, licensees, etc.). NDA agreements are common in and need to be carefully drafted to ensure maximum protection and recognizance by local Canadian courts. 2.7 DOMAIN NAMES With regard to domain names registrations and disputes, CIRA (the Canadian Internet Registration Authority) has specific procedures and policies published on its website ( Availability of a.ca domain name is regulated. The CIRA domain name dispute resolution policy provides for the resolution process, as to obtain cancellation of a domain name infringing on Intellectual property of a third person. 2.8 OTHER STATUTES The use of a registered trade-mark or a confusing trade or brand name may violate other Canadian federal laws, such as: (a) The Textile Labelling Act which prohibits false representations of a textile fibre product; (d) (e) (f) (g) (h) (i) The Consumer Packaging and Labelling Act which prohibits false representations on products labels; The Competition Act which prohibits false representations related to the promotion of a business interest; The Food and Drugs Act which prohibits advertising, labelling or selling of food which causes mistaken impression; The Precious Metals Marking Act which prohibits the use of marks falsely or incorrectly identifying precious metal articles; The Bank Act which prohibits the use of the words bank, banker or banking in the description of a trade-mark without authorisation under the Bank Act; The Agricultural Products Act and the Meat Inspection Act which prohibit the use of grade names and agricultural product legends without authorization under these Acts; The Food and Drugs Act, with Look-alike, Sound-alike (LA/SA) regulation for health products, with specific homologation procedures for trade-marks intended for use with such products, to reduce the risk of medical error; The Olympic and Paralympic Marks Act, for the specific registration of official trade-marks and provisions regarding specific infringement. Local provincial laws may also have effect, including the Civil Code from the Province of Quebec, for example. Authors Micheline Dessureault Lawyer and Trademark agent Director of the Intellectual Property and International Business Law Depts Jean-François Nadon, MBA Lawyer and Trademark agent Joli-Cœur Lacasse, Québec, micheline.dessureault@jolicoeurlacasse.com Jean-francois.nadon@jolicoeurlacasse.com Tel To contact PLG Julienne Laveaux PLG Secretariat PANNONE LAW GROUP E.E.I.G. avenue de Sumatra Brussels Belgium Tel Fax: plg@plg.be Disclaimer The contents of this article are intended to provide guidance only and should not be taken to constitute legal advice on specific problems. PLG cannot accept responsibility for this information or matters affected by subsequent changes in the law. Readers are requested to direct their enquiries to the author(s) of the article Pannone Law Group