Today’s economy is driven by innovation, and the proper protection of innovation is vital.
This section of Doing Business in Canada provides an overview of Canada’s intellectual property regime in four key areas: copyright, patents, trademarks and the enforcement of intellectual property rights.
Canada is a signatory of the Berne Convention. It has acceded to the principal multilateral treaties seeking to harmonize copyright protection internationally. Accordingly, foreign businesses wishing to do business in Canada will find many similarities between their domestic copyright laws and those governing in Canada.
Nevertheless, Canadian copyright laws do possess certain subtleties that should be noted. In particular, for any work to be exploited in Canada, it is important to ensure that the chain-of-title within Canada has been properly secured in accordance with Canada’s Copyright Act.
It is also noteworthy that a significant copyright reform bill was recently passed by Canada’s Parliament and introduced into law.
a. What can be protected?
Copyright protection extends in Canada to any original literary, dramatic, musical and artistic work, and these terms are given broad definition (e.g., computer programs fall within the concept of “literary” works). Copyright can also subsist in other subject matter, such as sound recordings, broadcast signals and performers’ performances.
b. How is copyright protection obtained?
In Canada, copyright arises automatically upon the creation of an original work. This is defined as one that has not been copied from another source and that is otherwise produced through the exercise of non-mechanical skill and judgment.
c. What rights are conferred?
Copyright in relation to a work means the exclusive right in Canada to reproduce, publish and perform in public the work (or any substantial part thereof). The broad concept of reproduction includes many individual rights depending on the type of work. For example, in the case of a dramatic work, the right of reproduction includes the sole right of converting it into a novel or other non-dramatic work.
Authors of original works also enjoy moral rights that can be asserted to prevent their works from being modified or used to the prejudice of the author’s reputation. An author of an original work enjoys the moral right to be associated with the work and the right to the integrity of the work, meaning that the work cannot be mutilated or used without the author’s permission in association with causes or institutions.
d. How long does copyright protection last?
Generally, copyright protection lasts in Canada for 50 years following the death of the author, though the term of protection may vary depending on the circumstances of creation and publication.
Moral rights in respect of a work subsist for the same term as the copyright in the work.
e. Who is the author of the work?
The term “author” is not defined under the Copyright Act, but it is understood to mean the person or persons from whom the original expression originates. An “author” in Canada must be a person for most works, and this is true even where a work is made pursuant to a contract. The concept of “work made for hire” does not exist in Canada. An employee or contractor will remain the work’s author even if ownership of copyright comes to vest in the employer or contracting party.
f. Must copyright be registered?
Registration of copyright is optional in Canada and is not necessary even to enforce a work in Canadian courts. However, registration does confer certain presumptive benefits in that a registration will be deemed evidence of copyright subsistence and ownership as described in the registration. As well, a defendant will not be permitted to assert a lack of knowledge of copyright subsistence in the case of a registered work, and this increases the monetary remedies available to a plaintiff who establishes infringement.
g. Who first owns the copyright?
Generally, the author of a work is the first owner of copyright. An important exception to this principle applies for works created in the course of an employment relationship, where copyright will be first owned by the employer, unless the parties agree otherwise. Where a work is created by joint authors, the copyright will be owned jointly as determined by the scheme of the Copyright Act. In Canada, works created under the direction or control of a government department are subject to Crown copyright owned by the government and are not works deemed to be in the public domain.
h. How is copyright assigned or licensed?
Copyright can be assigned freely in whole or in part, but no assignment is effective in law unless it is in writing and signed by the copyright owner or its duly authorized agent. The same requirements apply to make an effective exclusive licence. Non-exclusive licences and permissions need not be in writing, although documenting them is highly recommended.
Moral rights of an author cannot be assigned but may be waived. Significantly, assigning the copyright in a work does not in itself necessarily constitute a waiver of the moral rights therein.
i. Fair dealing and other exceptions
Canada’s Copyright Act provides that a number of specific activities do not infringe copyright. Most of these activities are very specific and apply only in particular defined circumstances. In contrast, the concept of “fair dealing” has been defined more broadly as a “user right.”
In Canada, it is not an infringement of copyright to engage in fair dealing with a work for the purposes of research, private study, criticism, review, education, parody, satire or news reporting (although certain requirements to credit the work’s author and source must be met for certain of these purposes). These permitted fair-dealing purposes are exhaustive, and conduct must fall within one of these categories (and also be fair) for fair dealing to apply.
j. Are there copyright collectives in Canada?
Canada has a long history of administering copyright protection through copyright collectives, and a well-defined statutory regime governing such collectives is now codified in the Copyright Act. There are several copyright collectives operating in Canada, and they address many of the copyright rights conferred under the Copyright Act.
k. How does technology fit into the mix?
Recent amendments now in force prohibit the use or sale of technology that circumvents digital locks (also called technological protection measures or TPMs). Other amendments now in force put in place a “notice and notice” regime for Internet service providers (ISPs) and search engines that, if followed, should limit their exposure to infringement claims.
Canada enjoys a vibrant economy and a culture of technological innovation in areas such as communication and Internet-related devices and software, clean and renewable technologies, tools and methods used in the harvesting and processing of natural resources, and agricultural and pharmaceutical products and practices.
Canada is a signatory of the Paris Convention and has acceded to the principal multilateral treaties that seek to harmonize patent protection internationally. Canada also benefits from intellectual property bilateral agreements with a number of G-20 members. Accordingly, foreign businesses pursuing business in Canada will find many similarities between their domestic patent laws and those governing in Canada.
Patents, by their very nature, provide an exclusionary right to an invention by the patent owner. It is natural for companies to capitalize on their research and development expenditures to protect their competitive edge in the Canadian marketplace. However, Canadian patent laws and regulatory practices do possess certain subtleties that should be noted. Accordingly, foreign companies need to be aware of the unique aspects of Canadian patent law and Canadian Intellectual Property Office (CIPO) practice that can significantly influence the scope and costs of obtaining patent protection in Canada.
In particular, care should be taken to ensure that applicable patent protection for any significant company technologies to be exploited in Canada has been properly secured in view of the unique Canadian patent system offerings. These include different examination acceleration programs, factors affecting patent filing ability and patent examination advantages — any of which may be used to maximize Canadian patent coverage.
a. Acceptable subject matter for patent protection
It is important to recognize that most, but not all, technology may be considered patentable in Canada if given careful consideration from a Canadian perspective.
A Canadian patent may be obtained in respect of any new invention, including processes, machines, methods of manufacturing or a composition, or any new and useful improvement to these that is applicable to industry. The key is that there must be at least one new and inventive element to the invention or improvement. That being said, Canadian patents cannot be issued to protect a scientific principle or theorem in the abstract without a practical application.
Developments in Canadian patent law have confirmed that business methods are currently patentable in Canada, which provides for an increased scope of patent protection in computer-related arts concerning some forms of software and business processes.
Claim format and content can make the difference between acceptance or rejection for certain technologies. For example, methods that provide practical therapeutic benefits to subjects are considered “methods of medical treatment” and are not patentable in Canada. These claims may be redrafted to instead claim an allowable “use.” Also, higher life forms — such as mice or other mammals, and plants — are not patentable, but a higher life form may be protected by directing claims to a cell comprising a patentable nucleic acid.
It is important to note that support for the required claim form or content must be found in the patent application description as filed in Canada. Therefore, consideration should be given to the way in which the subject matter of the Canadian patent application is described in order to best capitalize on Canadian patent protection for the invention.
Another important consideration for Canadian patent protection is innovation associated with professional skill (i.e., those personal skills reflecting learned behaviours that can be improved with practice and are prone to refinement through personal experience). A Canadian patent application seeking protection for a deemed professional skill will ultimately be rejected by CIPO. The professional skill distinction can have important ramifications for the patentability of a company’s innovations. Careful consideration and attention must be paid to the description and claim format of the patent application in order to avoid this prohibition.
b. Process to obtain patent protection
The granting of Canadian patents is within the exclusive jurisdiction of the Canadian federal government, under the control of CIPO, and is governed by the Canadian Patent Act and Patent Rules.
Patent protection is requested by filing with CIPO a formally prepared application including background, description, drawings and claims, such that aspects of the invention and its operation are described in sufficient detail for a notional person skilled in the art to carry out the claimed invention. Also included in the filing are the requisite CIPO patent application fees and details concerning the inventor(s) of the invention.
Once filed, the claims of the patent application are examined by an assigned patent examiner for novel, inventive and industrial applicability considerations in view of pertinent technology publicly available before the filing date of the patent application, as well as any format considerations. Once deemed allowable by the patent examiner, the patent is issued after payment of the patent issue fee.
c. Patent rights and term conferred by patent issuance
Enforcement of an issued Canadian patent can be obtained from the Canadian federal courts or the Canadian provincial courts.
A Canadian patent is a monopoly granted by the Canadian government that affords the holder of the Canadian patent an exclusive right to manufacture, sell or use an invention throughout Canada for a period of 20 years from the date of the application in Canada. A patent owner or licensee may bring a court action against someone who infringes on the Canadian monopoly to the invention claimed by the patent.
d. Ownership of a Canadian patent
Generally, the individual inventor that contributed to the invention claimed in the patent is the first owner of the patent. An invention created by joint inventors would be owned jointly by the inventors. An important exception to these principles applies for inventions created in the course of an employment relationship where the owner would be the employer unless the parties agree otherwise.
e. Transferring of patent ownership through assignment or licence
Patents can be assigned freely in whole or in part, but no assignment is effective in law unless it is in writing and signed by the current patent owner or owners. In the case of joint ownership, it is recognized that assignment by one party cannot dilute the existing patent ownership rights of the other party unless there is an agreement by the parties to the contrary. The same requirements apply to make an effective exclusive patent licence. Non-exclusive licences and permissions need not be in writing although documenting them is highly recommended.
f. Cost reduction through deferred or reduced patent fees
Patenting an invention in multiple jurisdictions can significantly escalate the costs to protect the technology. Seeking patent protection in Canada provides an opportunity to defer and reduce these costs relative to other jurisdictions.
In Canada, the examination of a patent application is not automatic upon filing and must be requested by the applicant. Requesting examination of a patent application can be deferred for five years from the Canadian application filing date. During this time, the applicant can further assess the best manner in which the patent application should be pursued without incurring significant costs. An advantage of delaying examination is that examination results from corresponding patent applications in other countries can be influential on the Canadian examination process and expedite prosecution of the Canadian application at reduced cost.
An advantage to help maximize patent coverage for a Canadian patent is that there is no limit to the total number of claims or the number of independent claims included in a patent application. There are also no restrictions on the use of multiple dependent claims (i.e., those claims that reference more than one claim) and no excess claim number or multiple dependent claim surcharges. The only surcharge that may impact the number or content of claims is a nominal excess-page printing fee for those patent applications exceeding 100 pages in length.
Furthermore, Canada has a “small entity” designation that allows businesses employing 50 or fewer employees and universities to pay reduced patent application-filing, examination and annual-maintenance fees.
g. Accelerated examination program for designated green and clean technology patents
Examination of a Canadian patent application based on clean or green technology can be accelerated to reduce the time to obtain patent protection. To apply for accelerated examination, the applicant must file a declaration indicating that the application relates to commercial technology that would help to resolve or mitigate environmental impacts or conserve the natural environment and resources. There is no government fee associated with requesting accelerated examination of green- or clean-technology patent applications. Accordingly, companies involved in clean or green technologies should consider this program to obtain accelerated Canadian patent protection.
h. Accelerated examination programs under patent prosecution highway (PPH) initiatives
Another instance in which Canadian patent protection may be accelerated is where patent protection has already been obtained in other jurisdictions.
Canada co-operates with a number of other partner countries in patent prosecution highway programs to allow an applicant — if at least one patent claim has been found allowable by one partner office in one jurisdiction — to have the corresponding patent application advanced out of turn for examination in the other partner office of the other jurisdiction. This provides for patent results obtained in other countries to be used to streamline examination in the corresponding Canadian patent application or, alternatively, allows for the patent results obtained in the Canadian patent application to be used to streamline examination in the corresponding patent application(s) in the other country or countries.
i. Advanced examination of Canadian patent applications
Accelerated examination of a patent application can also be obtained by the applicant or any other person who alleges that failure to accelerate examination will prejudice the person’s rights. This is typically used in situations where a pending patent application is perceived to be infringed but may be used more broadly by the applicant to expedite the patent examination process in other situations.
The process to accelerate examination of the patent application is relatively straightforward and inexpensive. Advanced examination of Canadian patent applications is granted automatically in response to payment of a modest fee and a request containing a broad affirmation that the failure to advance the application for examination is likely to prejudice that person’s rights. It should be noted that the contents of the Canadian patent application must be open to public inspection (i.e., published by CIPO) in order to request advanced examination, but an applicant can request that the application be open to public inspection along with the advanced examination request where required.
An advantage of the advanced examination request is that there is no need to provide any evidence or details to support the affirmation. Currently, an advanced examination procedure typically results in the issuance of a first examination report within three months of the advanced examination request.
j. Acceptable delays for patent application filing in Canada
Similar to most other countries, Canada is a first-to-file jurisdiction, meaning a patent is issued to the first inventor to file a patent application. Entitlement to a Canadian patent may be determined by a race to file an application with the patent office. To obtain a Canadian patent and avoid later technical challenges to the patent’s validity, it is important that the Canadian patent application is drafted in the correct form with a sufficient and enabling description of the invention. It is also recommended that an applicant not disclose the subject matter of the invention to the public until the Canadian patent application has been filed.
Once the decision has been made to file a patent application, it is recognized that patent systems around the world have strict patent application filing timelines. Failure to meet these filing timelines may result in a loss of right to obtain patent protection in certain jurisdictions.
However, the Canadian patent system offers a few acceptable delays for Canadian patent-application filing, such as a 12-month grace period, 12-month late international Patent Cooperation Treaty (PCT) filing and no on-sale bar.
The 12-month grace period provides the opportunity to file a patent application within 12 months of making an enabling disclosure of the invention to the public by the applicant. Accordingly, the Canadian patent system offers filing flexibility in providing this 12-month grace period, measured from the time of the first public disclosure of the invention to when the formal patent application is filed in Canada. It should be noted that a provisional patent application filed in Canada or elsewhere does not negate the requirement to have the Canadian patent application filed within the 12-month period measured from the first public disclosure.
Concerning international PCT patent applications, an applicant can file in Canada as a national entry of a PCT patent application up to 42 months after the PCT priority date simply by filing a late national entry request and paying a nominal fee. This late national entry provision allows the applicant an additional 12 months after the standard 30-month PCT national phase entry deadline.
In some jurisdictions, such as the United States, a product or service that has been “on sale” for more than 12 months prior to the filing of the patent application may bar obtaining patent protection in that jurisdiction. However, in Canada, early market entry may not bar entitlement to patent the marketed products so long as the sale is not considered an enabling public disclosure of the invention made more than 12 months prior to the filing of the patent application in Canada.
k. Procedural flexibility in obtaining Canadian patent protection
The examination process before the Canadian patent office is relatively flexible compared to other jurisdictions, and this flexibility can help maximize patent scope and minimize prosecution costs.
For example, voluntary amendments to the claims or other parts of the Canadian patent application may be filed at any time in Canada during examination of the patent application. As well, final examination reports, which are rarely encountered, are only issued when it is clear that the examiner and applicant have reached an impasse. This reduced occurrence of final examination reports can allow for ample opportunity to negotiate with the examiner.
Furthermore, when interpreting the patent claims, the courts may not consider any submissions made by the patentee during the prosecution of the application when a patent is subsequently litigated. This is in contrast to other countries, where a patentee may be estopped from taking a position with respect to the scope of the claims when the position is contrary to the one taken during prosecution.
l. Reduced relationship potential between patent applications of opposed parties
Circumstances can arise in which one Canadian patent application can be affected by another Canadian patent application, such as in situations where both applications are directed toward similar subject matter. These patent applications may be owned by the same party or by opposing parties.
In Canada, there is limited opportunity for one party to oppose the granting of a patent to another party as there is no Canadian interference or opposition procedure to challenge a competitor’s co-pending patent application.
Furthermore, Canada does not use terminal disclaimers between applications owned by the same party. As a consequence, the applicant must amend the claims of the applications to distinguish one from the other.
Unlike in other jurisdictions, there is no Canadian continuation application procedure, but the applicant can file claim amendments to a further invention at any time before allowance, or file a divisional application anytime before issuance of the parent patent. The preferred practice for filing divisional applications in Canada is to include or add all desired claims in the pending patent application to allow the Canadian examiner to determine whether separate inventions are claimed. This practice enables the applicant to avoid a later allegation of “double patenting” in the divisional application and provides the potential to have a broader range of inventions claimed within a single application.
A trademark is a word, slogan, symbol or anything else that serves as a distinctive indicator of the source of particular goods or services. In Canada, while trademarks do not need to be registered to be protected, the scope of rights afforded by registration and the available means of enforcement are generally greater for registered trademarks.
As such, trademark registration is a good investment for any owner who plans to use a trademark extensively in Canada. A trademark registration in another country with no use or reputation in Canada conveys no protection in Canada.
Canadian trademark law shares many similarities with U.S. trademark law, but also has its own particularities. Because the process of registering a trademark under the federal Trademarks Act (Canada) can be technical, it is advisable to consult a trademark lawyer or trademark agent to oversee this process and also to provide advice on protecting and licensing trademarks in Canada.
a. Registered and unregistered trademarks
If an unregistered trademark has been in use and possesses goodwill, the common law will protect it under the doctrine of passing off. However, the scope of protection for unregistered trademarks is generally narrower than that for registered trademarks. Protection for an unregistered trademark is strictly limited to the geographic boundaries of its use and established goodwill.
On the other hand, obtaining a registration for a trademark confers many advantages, including the exclusive right to use the trademark across Canada, without geographic restriction, in relation to the goods or services specified in the registration.
Trade names, corporate names or business names may be registrable if such a name is used as a trademark. That is, a trade name may be registered as a trademark if it is used to distinguish a product or service of one company from that of another. If a trade name is not used as a trademark, it may nonetheless be protected under the doctrine of passing off, which protects the goodwill of a business rather than the right to the name itself.
Registration can be obtained for a trademark in relation to wares, services or both. In Canada, unlike in many other countries, a single trademark registration can cover multiple classes of wares or services.
In Canada, there is no formal requirement for the use of trademark notices such as ® or ™. However, the use of such notices can be helpful when asserting something as a trademark. The use of similar notations to direct consumers to a legend stating the owner’s name and that the use is by a third party under licence is highly recommended, as it gives rise to a statutory presumption of proper licensing.
b. Entitlement, prosecution and opposition
There are numerous procedural and substantive requirements for the application, processing and registration of a trademark in Canada. Before applying for a trademark, it is advisable to conduct a trademark search to ensure that the trademark is registrable and that the applicant is the party entitled to the registration of the trademark.
There are currently three possible bases for registration of a trademark in Canada: the use of the trademark in Canada, the registration and use of the trademark abroad, or the proposed use of the trademark in Canada. Recent legislative changes that are expected to be proclaimed into force sometime in late 2015 will remove the registration and use of the trademark abroad as a basis for registration. Resolution of competing claims to a trademark will likely depend upon which party has first used or made the trademark known in Canada, or has been the first to file an application for registration on the basis of foreign registration or proposed use, depending on the circumstances.
Prior to registration, it is possible for a third party to oppose an application for a trademark on specific listed grounds, such as confusion or technical defects in the application. In Canada, technical grounds can be fatal to an application with no opportunity to remedy them, further underlining the need for marks to be prosecuted by experienced trademark counsel.
c. Term of trademark protection
Registered trademarks must be renewed every 15 years upon payment of a renewal fee, which is the only requirement to renew a trademark registration in Canada. It is not necessary to file a declaration of continued use. Recent legislative changes that are expected to be proclaimed into force sometime in late 2015 will reduce the renewal period to 10 years.
Nevertheless, registered trademarks are liable to be expunged from the register after an initial grace period if, after a request to show use by the registrar or any other interested party, the trademark owner cannot show that the trademark has been “used” (for the purposes of the Trademarks Act) during the previous three years.
Furthermore, if a trademark loses its distinctive character and quality, it ceases to be a protectable trademark. Therefore, a trademark owner must be careful not to allow a trademark to become “genericized” — that is, to become the common name of the goods with which it is associated — or to be usurped by a third party.
d. Assignment and licensing of trademarks
The Trademarks Act allows registered trademarks to be assigned. Since trademark registrations in Canada can cover multiple wares or services, it may be possible to only partially assign a trademark with respect to some of the wares or services, provided there would be no likelihood of confusion between the two resulting registrations. Territorial assignments of registered marks are generally not permitted under the Trademarks Act.
It is also possible to license a trademark under the Trademarks Act. For a trademark licence to be valid and to avoid the risk of a trademark losing its distinctiveness, certain requirements must be met. These include the trademark owner retaining control over the character or quality of the wares or services associated with the trademark. Satisfying the requirements for “control” will vary from case to case. However, typically a bare assertion of control or mere evidence of corporate control of a subsidiary will be insufficient for the purposes of the Trademarks Act.
e. Use of trademarks in Québec
It is important for all trademark owners to appreciate that special rules apply to the use of trademarks in Québec, due to the Charter of the French Language (the Charter) in that province. The Charter provides that every marking on a product or document, as well as public signs, posters and other commercial advertising, must be drafted in the French language, though they may be accompanied by a translation.
However, a regulation to the Charter creates an exception with respect to trademarks: a “recognized trademark” may be used exclusively in a language other than French, unless a French version has been registered. If a French version of the trademark has been registered, it must be used.
In the past, both unregistered and registered trademarks have been held to be covered by the exception. However, in the absence of a registration, it may not be possible to prove the existence of a trademark to the satisfaction of the authorities. The Office québécois de la langue française (OQLF), the body that is responsible for enforcing the Charter, takes the view that the “recognized trademark” exception generally requires registration. The requirement is a commercial reality in Québec and extends to the packaging of wares that are sold in that province whether or not they are also intended for other markets.
There is also some uncertainty regarding the application of the trademark exception to markings on business signs. The OQLF has adopted the position that trademarks (even registered) featured on store fronts must be accompanied by French descriptive text where the trademark itself is in another language. This interpretation is being challenged in the courts. Trademarks and other terms composed of descriptive elements may be the most likely to be challenged. Therefore, businesses operating in Québec (or selling wares in Québec) that wish to make use of the exception should seek registration of their trademarks, especially where the mark contains descriptive terms, and would be well-advised to seek guidance from Canadian trademark counsel as to compliance with the terms of the Charter and the current position of the OQLF.
4. Enforcement of intellectual property rights
Intellectual property rights (including patents, trademarks, copyright and industrial designs) are generally enforced through proceedings brought before the Federal Court of Canada. While the provincial courts have concurrent jurisdiction for enforcement of intellectual property rights, the country-wide jurisdiction of the Federal Court gives it the ability to grant an injunction throughout Canada in a single proceeding. Over 95 per cent of all intellectual property cases are brought to the Federal Court.
The one exception is where the intellectual property right relates to trade secret law, which, as a matter of property and civil rights, can be enforced only in the provincial courts. For passing off matters, while only the provincial courts can enforce the common law right, the Federal Court has jurisdiction under Section 7 of the Trademarks Act to hear essentially the same action.
The Federal Court consists of approximately 25 trial court judges who can sit anywhere in Canada. While the Federal Court has its headquarters in Ottawa, it is essentially a circuit court, with judges travelling throughout the country to hear cases. Any member of any bar of Canada can appear in the Federal Court, regardless of the province in which the court is sitting. A successful plaintiff is generally entitled to its damages and a permanent injunction (assuming the right has not expired) and some of its legal expenses. Depending on the intellectual property right, the successful plaintiff may also elect to appropriate the infringer’s profits.
While Canadian courts may grant interlocutory injunctions, these are rarely granted in patent, copyright and design matters. They are sometimes, but still infrequently, granted in trademark matters. Key to obtaining an interlocutory injunction is proving irreparable harm, i.e., harm that is not compensable in damages.
a. Patent enforcement
In general, patent litigation matters are commenced with a Statement of Claim and proceed through oral and document discovery leading to a trial by judge alone.
Proceedings by way of action generally take between two and four years to get to trial. A right of appeal is available to the Federal Court of Appeal, and with leave, to the Supreme Court of Canada.
Frequently in infringement proceedings, a defence and counterclaim of invalidity are also raised by the defendant. Alternatively, a potential infringer could commence a proceeding seeking a declaration of non-infringement and/or impeachment of the patent.
i. Section 55.2 of the Patent Act
Separate and apart from actions for infringement, a procedure is available for certain pharmaceutical patents that is similar to the Hatch-Waxman Act proceedings in the United States. Under this provision, a generic drug manufacturer who is seeking to come to market by virtue of reliance on an originator’s Notice of Compliance must address any patent that has been listed with the minister of health. The initial step is to forward a Notice of Allegation by the second person, at which point the patentee has 45 days within which to commence an application seeking an order prohibiting the minister of health from issuing a Notice of Compliance to the generic. These proceedings are summary in nature, and are not full actions. Consequently there is no right of discovery. Furthermore, because they are summary in nature, any decision is not final, and an action for infringement and/or impeachment may be commenced separately and apart from the Section 55.2 proceeding.
b. Trademark enforcement: Passing off, infringement and depreciation of goodwill
The owner of an unregistered trademark may enforce rights in that trademark only through an action for passing off. To succeed, the owner of an unregistered trademark must show that it has a commercial reputation or goodwill created through the use of its mark, that another person has sold goods or services in a way that misrepresents them as those of the trademark owner, and that damage is likely to be suffered to the owner’s reputation or goodwill.
Mechanisms for enforcing a registered trademark provide a greater ambit of protection than those available to an unregistered trademark. In addition to an action for passing off, the owner of a registered trademark may also bring an action for trademark infringement or depreciation of goodwill.
The remedies available against a party who infringes a trademark or depreciates the value of its goodwill include injunctive relief, monetary damages or profits, as well as an order for the destruction of the infringing articles.
The Canadian Criminal Code also makes certain types of trademark infringement and counterfeiting criminal offences punishable by fine or imprisonment.
c. How is copyright enforced and what relief is available?
In Canada, copyright can be enforced by way of an action with trial or by a more summary proceeding called an application. An application proceeds on a paper record and does not involve any rights or discovery.
An exclusive licensee may commence proceedings in its own name to enforce its rights, but will generally be required to join the copyright owner as a party unless the court orders otherwise.
Upon proof of infringement, a copyright holder may obtain a broad range of remedies, including an award of damages, an accounting of profits, permanent injunctive relief and on order of delivery up of infringing materials.
A plaintiff can also elect, at any time prior to judgment, to recover “statutory damages” instead of other compensatory monetary remedies. (The right to seek punitive damages is not affected by the selection of statutory damages.) The maximum award of statutory damages is $20,000 per work infringed. Under legislative amendments that have not yet come into force, this maximum will be reserved for commercial infringements. A lower cap will apply to non-commercial infringements.
The Copyright Act also makes certain types of copyright infringement a criminal offence.
d. Industrial design
Industrial designs are also enforced via an action for infringement, in a manner similar to that set out for copyrights, trademarks and patents. With respect to industrial designs, infringement can apply only to elements of design: there is no protection for purely functional elements that may have been taken by a competitor.
A successful plaintiff may obtain an injunction and damages for infringement.
e. Trade secrets, unfair competition claims and ancillary litigation
As noted previously, a breach of trademark secrets can be enforced only in provincial courts. Consequently, where there is a breach of a trade secret and potentially an infringement of a patent, the preferred venue for resolving both matters would be the provincial court with jurisdiction over the defendant.
In a similar fashion, other types of proceedings can often be joined together. For instance, a patent and a trademark case can be joined depending on the circumstances. In addition, sometimes an attack based on the Competition Act can be joined with a Patent Act defence. Consequently, intellectual property litigation is not always a matter of simply enforcing one right to the exclusion of others, but often involves a portfolio of issues, both core intellectual property and related matters, touching on areas including trade secret law and competition law among others.
Learn more about Gowlings’ services in this area at gowlings.com/ip.