Trademarks, Copyright and Other Intellectual Property (No. 231)

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This information applies to British Columbia, Canada. Last reviewed for legal accuracy by Ling Wong, Fasken Martineau DuMoulin LLP in July 2018.

Inventors, designers, writers, other creative people, and entrepreneurs naturally want to protect the things they create. The laws involved in protecting ideas, inventions and designs are called “intellectual property” laws.

Overview

Intellectual property in a nutshell

Intellectual property is property in ideas, inventions and designs — intangible things that people create.

A patent protects new, useful and ingenious inventions.

An industrial design registration provides protection for the original visual features of a product.

A trademark is a combination of letters, words, sounds or designs that distinguishes one business’ goods or services from those of others.

Copyright provides protection for literary, artistic, dramatic and musical creations.

A non-disclosure agreement protects trade secrets and confidential business information.

A federal government agency administers intellectual property

The Canadian Intellectual Property Office (CIPO) is the federal government agency responsible for administering intellectual property in Canada. This office is where you file an application to protect intellectual property. They can be contacted online at cipo.gc.ca or by toll-free phone at 1-866-997-1936.

Patents

A patent protects inventions

A patent is an agreement between an inventor and the federal government. The government gives the inventor the right to prevent others from making, selling or using their invention in Canada (and possibly elsewhere) for the life of the patent. In return, the inventor shares the technological information behind their invention, so others can benefit from and build on this knowledge when the patent expires.

A company, let’s call it National Mousetrap Corporation, that has developed a new and better mousetrap can apply for a patent to protect it.

A patent can be a valuable business asset. It gives the patent owner the competitive advantage of a limited monopoly. A patent owner can license the patent to others or sell it.

A patent lasts for up to 20 years from the time the patent application is first submitted.

How to get a patent

You can apply for a patent by filing a patent application with the Canadian Intellectual Property Office (CIPO). You have to pay the required fees. Your application must describe your invention in full and show you would put it into practice. The invention must meet patentability requirements, meaning that it is new and useful, and has inventive ingenuity.

The Patent Office will not review your application unless you ask them to. Within five years of filing the patent application, you must formally ask the CIPO to consider (or examine) your application. You must pay the examination fee.

About 18 months after you’ve paid this fee, a government patent examiner familiar with the subject matter will examine your application and decide if it meets the requirements for a patent. If the examiner has any objections to the application, they will issue an examiner’s report explaining why they are rejecting it. The applicant (or a patent agent they hire) must then respond within a certain time with arguments or amendments (or both) to support their application. The process can take one to four or more years before a patent is granted.

Tip

Most applicants hire a registered patent agent or patent lawyer to help them with the application process. A list of registered patent agents is available from the CIPO and from the Intellectual Property Institute of Canada (IPIC).

Time limits for submitting a patent application

If you’re concerned about a competitor being on the same track, you should submit your patent application as soon as possible. In all countries, including Canada, the person who applies first gets the patent over another person who applies later, claiming the same invention. This is normally true even if the second person can prove they developed the invention before the first person did.

Also, in Canada and the US, any public disclosure, use or sale of your invention starts a one-year clock running. After that one year, if you have not filed a patent application, you cannot get a valid patent for your invention. Many countries don’t allow this one-year grace period — they don’t allow any public disclosure before a patent application can be validly filed. You could lose your right to obtain a patent internationally if you rely on the one-year grace period in Canada. So it’s important to keep your invention secret and file a patent application (or assess your other options) before you publicly disclose your invention.

Industrial designs

An industrial design registration protects unique visual design

Returning to the mousetrap example, imagine the company has designed its mousetrap so it has an attractive shape or design that appeals to consumers. But the company is worried that a competitor might soon copy the look and visual design of the mousetrap. To protect the design, the company can apply to the Canadian Intellectual Property Office for an industrial design registration.

An industrial design registration protects the original visual features of a product. (This differs from a patent, which generally protects how an invention works.) Examples of industrial design that people might seek to protect include the shape of a table, the pattern of a fabric, the visual design of a computer keyboard, or the decoration on the handle of a spoon.

How to apply for an industrial design registration

You can apply or an industrial design registration from the CIPO. You have to pay the required fees. You must apply within one year after the design, or an article showing the design, has first been publicly used, displayed or sold.

Many countries outside of Canada and the US require you to submit your application for registration before there is any public disclosure of your design, the same as with patents.

Registration protects an industrial design for 10 years, but a maintenance fee must be paid after five years.

Trademarks

Trademark registration protects words and logos

Suppose the National Mousetrap Corporation, in addition to designing a unique mousetrap, has also developed a catchy name to brand the product. Or it might have developed a distinctive logo to use on the boxes the mousetraps are sold in and in magazine ads for its mousetraps. To prevent competitors from using the same brand name or logo, it can apply for trademark registration. (Copyright protection for the logo may also be available, discussed later.)

A trademark is a combination of letters, words, sounds or designs that distinguishes one business’ goods or services from those of others in the minds of consumers. The words “Under Armour” on athletic clothing, the red “K” on a box of Kellogg’s Corn Flakes, and the alligator on Lacoste t-shirts, are familiar trademarks.

How to protect a trademark

You can apply to register a trademark with the Canadian Intellectual Property Office. You must pay the required fee. You may file a trademark application based on use (if you have already started using the trademark in your business) or based on proposed use (you intend to use the trademark soon, but you haven’t yet started using it).

Your application is reviewed by a trademark examiner who decides if the application meets the requirements for registration (they consider, for example, whether it is confusing with any prior registrations or applications). If the application is approved, the trademark is published (to give others a chance to oppose the application). If no one opposes it, your trademark will be registered.

Although trademark applications are not as tricky and complex as patent applications, it’s still helpful to hire a trademark agent to handle the process. The Trademarks Office at the CIPO keeps a list of trademark agents. So does the Intellectual Property Institute of Canada (IPIC).

You don’t have to register a trademark, but there are advantages to doing so

You don’t have to register a trademark to use it. But there are advantages to registering. Registration gives you the exclusive right to use your trademark (with the types of goods or services the trademark is registered for) throughout Canada for 15 years. It also gives you the right to stop others from using a mark that is confusingly like yours.

On the other hand, an unregistered trademark can be protected only where you can prove the trademark is known and has an established reputation.

Copyright

Copyright protects literary, artistic, dramatic and musical creations

Suppose the National Mousetrap Corporation, having developed its unique mousetrap, is ready to launch an advertising campaign. Its advertising department creates a brilliant script for a TV commercial. The law of copyright protects the ownership of the script.

In Canada, the law automatically gives the author, artist or creator of original works like poems, books, plays, musical scores, computer programs, and paintings ownership rights or “copyright” in that creation. Copyright can arise only when a work has been fixed or created in some way: for example, a book has been written, a song recorded, or a movie filmed.

Many items in a business — such as the company website, advertising materials and more — are probably protected by copyright. Copyright means no one else can copy or substantially reproduce your work without your permission. This right generally lasts during the life of the author plus 50 years after they die.

Copyright does not apply in some circumstances

There is no copyright in ideas; only the original expression of an idea can be copyrighted.

If you use your artistic work on a useful article, such as a decorative lamp or goblet, by using the article as a model or pattern to make 50 or more decorative lamps or goblets, then copyright protection, with some exceptions, isn’t usually available. You generally have to apply for registration of an industrial design instead. You can’t claim copyright in a very short combination of words, such as the title of a book or song. This likely doesn’t meet the originality requirement.

Copyright arises automatically

Because copyright is automatic, you don’t have to register it. But registering a copyright with the Canadian Intellectual Property Office (and paying the required fees) can help prove you own the copyright. This can be especially helpful if you have to sue someone for “infringement” of your copyright. When you register your copyright, you are the presumed owner of the work and the burden of proof is on the person challenging your copyright to disprove your ownership. If you don’t register your copyright, the burden of proof is on you to prove you own the copyright.

Protecting trade secrets and confidential business information

The law recognizes that businesses want to protect their trade secrets and confidential business information. This could include special recipes, training manuals, methods of doing business and inventions that aren’t patented — all of which the business might want to keep secret from competitors and the public.

You don’t register this type of information. The law on trade secrets hinges on whether you have taken steps to keep the information secret. Having employees, customers or business partners sign a confidentiality or non-disclosure agreement is the most common way to show you are taking steps to protect secret and confidential information. As well, if someone breaks the agreement, you can sue them.

One risk with a trade secret is that once it is no longer secret, it can be lost. Without a contractual obligation, nothing can prevent someone else from independently creating or reverse engineering the subject matter of your trade secret.

Get help

The Canadian Intellectual Property Office (CIPO) is the federal government agency responsible for administering intellectual property in Canada.

Toll-free: 1-866-997-1936
Web: cipo.gc.ca

The Intellectual Property Institute of Canada (IPIC) is the professional association of patent agents, trademark agents, and lawyers practising intellectual property law.

Telephone: 1-613-234-0516
Web: ipic.ca
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