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IP Primer

Intellectual property (IP) refers to creations of the mind, hence the term intellectual property. There are five main types of intellectual property: trademarks, patents, copyrights, industrial designs and trade secrets. This section provides a brief overview of those forms of intellectual property as defined by Canadian law.

Trademarks

A trademark is a key brand indicator. It can consist of a word or words or a logo or a combination of words plus a logo. The purpose of a trademark is to distinguish one business' products and/or services from those of another business.

There are key strategic considerations to take into account when selecting a trademark. It is advisable to avoid a mark that is:

  • Clearly descriptive or misdescriptive of the qualities of the products and/or services associated with a business
  • A geographic name or a surname
  • Identical or confusingly similar to another business' trademark for the same or related products and/or services

In Canada, trademark rights can be the subject of both registered and unregistered (a.k.a. common law) rights. Common law trademark rights are limited to the geographic areas in which the mark has been used and/or made known. In contrast, registered trademark rights give the owner the exclusive right to use the trademark across Canada, regardless of whether the trademark is used only in a limited geographic area in Canada.

Unlike other forms of intellectual property, trademark rights, whether common law or registered rights, are acquired and maintained by use. Abandoning use of a trademark may result in a loss of trademark rights, including registered, absent acceptable excuses for nonuse. Similarly, material changes to a mark may result in a loss of trademark rights.

A Canadian trade-mark registration is valid for 10 years from the date of registration, and may be renewed for subsequent terms of 10 years.

Patents

A patent is the exclusive right, granted by a government, to exclude others from making, using, or selling an invention. Patent rights must be applied for under the Patent Act. A patent may protect a new invention (e.g. a process, machine or chemical) or any new and useful improvement of an existing invention. In order to be patentable, an invention must consist of patentable subject matter. It cannot, for example, be a mere abstract idea or theorem. The definition of patentable subject matter in Canadian law includes chemicals and pharmaceuticals, machinery, and methods of manufacture or production. The definition excludes higher life forms such as mammals, but does include genes and cells even though these components may be constituents of a non-patentable life form. Non-patentable subject matter includes methods of medical treatment.

Once it is established that the suject matter itself is prima facie patentable, the person applying for a patent must also show that the subject matter is:

  • Novel: The invention must be the first of its kind in the world.
  • Useful: A patent cannot be obtained for an invention that does not work or have a useful function.
  • Inventive: The invention must be a development or an improvement that would not have been previously obvious to a person of average skill in the relevant technology.

While one may obtain a patent for an improvement upon an existing invention, it is possible that the existing patent may still be in force. If so, manufacturing or marketing the improvement may constitute patent infringement without the appropriate license agreements.

In Canada, the term of a patent issued from an application filed on or after October 1, 1989 is 20 years from the patent application's filing date. This term is subject, however, to the timely payment of annual maintenance fees required to maintain the patent in good standing.

Copyrights

Copyright is the exclusive right of an author of an original work to copy, publish or perform that work. Copyright arises upon the creation of the work. It is also possible to formally register copyright, which can assist with proving the existence and ownership of those rights, particularly when seeking to enforce that copyright against infringers.

Works that may be eligible for copyright protection include:

  • Architectural works
  • Artwork, such as a photograph or painting
  • Books and articles
  • Computer software
  • Movies.
  • Music, plays or songs, and performances of those works
  • Radio and television broadcasts

In Canada, the term of copyright protection depends on the type of work, whether the author's identity is known, and whether the work was created by one or more authors. For most works, the term of copyright in Canada is calculated as "life + 50", i.e. the lifetime of the author + the end of the calendar year in which the author died + 50 years after the year the author died.

Industrial Designs

An industrial design is defined by Canadian law as "features of shape, configuration, pattern or ornament and any combination of those features that, in a finished article, appeal to and are judged solely by the eye." While part of the article can be functional, the design cannot be wholly or only functional. The shape of the iconic COCA-COLA bottle is an example of a well-known industrial design.

In Canada, an industrial design registration is initially granted for a 5-year term, and many be renewed for a second 5-year term upon payment of the applicable fee.

Trade Secrets

A trade secret is information including but not limited to a formula, pattern, compilation, program, method, technique, or process, or information contained or embodied in a product, device or mechanism which:

  • is, or may be used in a trade or business
  • is not generally known in the trade or business
  • has economic value from not being generally known, and
  • is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

Famous trade secret examples include the KENTUCKY FRIED CHICKEN seasoning recipe and the COCA-COLA formula.

 

Please contact us for further information on any aspect of intellectual property.