Patents, Copyrights and Trade-marks all fall into the category of intellectual property (generally known as “IP”), however entrepreneurs and business owners do not know if an idea is protectable IP and, if so, how to protect it. Intellectual Property, as the name denotes, is property that comes from one’s intellect or brain.

 

Canadian law recognizes that this kind of property can be very valuable and will protect one’s rights in it. In order to protect your intellectual property, it is key to know which category your intellectual property falls into, how you gain legal rights to it and how, or if, you can continue to protect your legal rights to your intellectual property. This article discusses the three most common types of intellectual property rights in Canada.

A patent is granted by the Canadian Patent Office, a division of the Canadian Intellectual Property Office (“CIPO”) upon application for a new and useful invention.

 

Examples of patentable inventions are cars (a product), the chemical composition used in paint for cars (composition), a method for making the cars (a process) or an improvement on any of these.  In exchange for the exclusive right on the invention in Canada, the owner of the invention must provide a full description of the invention. People may then read about (though not make, use, or sell) the invention without the inventor’s permission.

 

The invention must be for something new, useful and not obvious. It is easy to think of inventions as mechanical things like cars, but there are interesting issues arising because of new technologies such as the patenting of scientifically developed cells of an animal, like a mouse that has been engineered in a lab for cancer research.

 

The patent application process involves an extensive commitment of both time and money. It can take up to four years for the patent to be granted and there are four different types of fees that must be paid in order obtain or maintain a patent or patent application (the initial application fee, for example, is $2,500).

 

Application does not guarantee that the patent will be granted. The Patent Office may refuse a patent if it decides the invention has already been invented by someone else, if the invention is too similar to another patent that has already been granted or if there is no value to the invention that the general public would benefit from.  

 

How long does a patent registration last? The exclusive right to make, use and sell the invention is granted for 20 years. Inventors spend a lot of time, skill and money to come up with the invention so it is only fair that they should be rewarded for doing so by the granting of a patent.  By granting such rights the Canadian government encourages the research and development of new inventions.  However, a patent registration is not renewable. After 20 years, anyone else can make the invention. At that point, it is more beneficial to society at large for everyone to be able to use the invention. The patent grants protection of the invention only in Canada. Therefore, applications must be separately filed in all countries where patent protection is desired.

A copyright protects the expression of an idea or intellectual creation. For example, if you create a story, a song, a painting, a photograph or a movie then you have copyright protection which means, legally, that no one can copy, sell or licence the creation without permission of the creator or author. Most copyrights are recognizable by the use of the symbol “©”, but marking a work is not required in Canada. Nonetheless, such marking serves as notice to others that the work is copyrighted. Copyright does not just protect original artistic ideas like books, songs and movies, but also original works like computer programs, technical drawings/blueprints and designs in a logo.  

 

Unlike patents which require an application to the Patent Office in order to obtain legal protection in Canada, a copyright does not have to be registered in order for the creator to acquire legal rights.  Those rights are acquired at the moment the idea is created. However, there are benefits to registering a copyright as such registration is evidence of ownership of the work.  This evidence of ownership may be used by the copyright owner in court to claim damages from someone who has infringed the copyright. The copyright owner can be the author of the work, the employer of the author, or any person who has obtained ownership through a transfer of ownership, such as an assignment.

 

In order to register a copyright, an application to the CIPO is made along with the filing fee of $65.00 (or $50.00 via online registration). The application process is much quicker and simpler than registering a patent and it only takes about 10 business days for the copyright registration to be issued.

 

Canadian copyright protection lasts for the life of the author, the remainder of the calendar year in which the author dies, and for 50 years following the end of that calendar year.  That is why, for example, posters of the famous painting by Leonardo da Vinci—the Mona Lisa—are widely copied and sold.  Da Vinci has been dead for more than 50 years.

Trade-marks are words, slogans, logos or shapes that identify a certain product or service when a consumer sees it.  For example, MacDonald’s restaurants’ golden arches, the Nike “swoosh” or the VW logo for Volkswagen cars are all trade-marks.  These are not words in any language and the logos do not look anything like the products they represent, but they have meaning to almost everyone who sees them.  This shows how powerful a trade-mark can be and how valuable an asset a trade-mark is. 

 

A trade-mark distinguishes the products or services of one company from another. Trade-mark rights may only be obtained if your mark is distinctive, unique and original. It cannot be obvious.  For example, the word “sandal” (the kind you wear on your feet) cannot be trade-marked as it is obvious and general.  However, the popular footwear known as “Crocs” is distinctive and unique and therefore this word can be and was registered as a trade-mark. The registration of a trade-mark protects against exact copies or knock-offs of the protected mark or something that is so close to the original that people will confuse the original with the copy or knock-off.

 

Legal rights in a trade-mark are gained once you start using a trade-mark so registration of the mark is not a prerequisite to gaining legal rights. This is similar to a copyright, but registering a trade-mark with CIPO gives better protection. The registration will give cross-Canada rights to use that trade-mark for the specific products or services of the registrant for 15 years and it is a renewable for additional 15 year periods.  In a dispute, the registered owner of the trade-mark does not have to prove ownership of the trade-mark. The onus is on the person objecting.  

 

If your business’s products or services are sold in another country you will need to consider if you should apply for registration of your mark in that country. Registration of your trade-mark in Canada only provides protection in Canada.  Foreign jurisdictions have their laws protecting such marks as well as specific registration requirements.

 

Why is trade-mark protection important? A trade-mark protects a business’s branding, protects its reputation in the marketplace and, in turn, generates revenue directly from consumers who buy a business’s product or service as well as revenue from licensing a trade-mark to someone else to use.  

 

Once a trade-mark has been registered in Canada, it is necessary to use the registered mark in order to preserve it.  The old adage–use it or lose it–applies.  The registration of the trade-mark may be removed if the owner does not use it for an extended period of time.  Similar to a copyright, there are no marking requirements in Canada to indicate the trade-mark is registered.  The symbol “®” is often associated with trade-marks, but this symbol indicates that the trade-mark is registered in the United States. 

 

In order to register a trade-mark, an application to the Canadian Intellectual Property Office is made along with the initial filing fee of $300.00 (or $250.00 via online registration).  There is a six step process to registering a trade-mark.  Assuming there are no issues with the application itself, it is approved by CIPO without changes and is not opposed by third parties, the registration is normally issued in about two years.  If there is an opposition by a third party to the proposed trade-mark application then the process can take much longer—it can be almost double that time frame.

 

It is important to recognize that not all ideas or creations are capable of intellectual property protection.  Seeking the advice and guidance of a lawyer can help to evaluate the idea or creation and to determine if intellectual property protection is possible.  

 

 

 

* The content of this article is intended to provide general information for the reader and is not intended as advice or an opinion to be relied upon in relation to any particular circumstance.  For specific applications of the law to a particular set of circumstances, the reader should seek professional advice.