Patents, Trade-marks, Copyrights and Industrial Designs
What do magic clothes pins, talking alarm clocks, intelligent hearing aids, and snowboards have in common? You'll find them all, and much more, on Canada's Patent Database!
The following is general information about four types of intellectual property: patents, trade-marks, copyrights and industrial designs. It is
not intended to replace advice from a professional such as a lawyer or registered patent or trade-mark agent.
Q - What is a patent?
A - Patents are federal government grants that award inventors the right to prevent others from making, selling or using their inventions
from the day the patent is granted for a period of twenty years from the date the patent application is filed. An inventor must apply for and
receive a patent for each country in which he or she wishes to have such a right.
Q - What makes an invention patentable?
A - Under the Canadian Patent Act, protection is available for “any new and useful art, process, machine, manufacture or composition of
matter” or any new and useful improvement of an existing invention. In order to qualify for a patent, the invention must be new, useful and
unobvious. In order to be “new”, the invention must be the first of its kind in the world. The invention must not have been previously
disclosed to the public by anyone other than the inventor. Even disclosure of the invention to the public by the inventor before the patent
application is filed can in some circumstances prevent the invention from being novel and ruin the potential for it to be patented. To meet the
second criteria, usefulness, the invention must be functional and operative. In order to meet the third requirement, that the invention be
unobvious, the invention must be one that would not have been obvious to a person of ordinary skill working in the art in light of the prior art
at the time the invention was made. Inventors can search the Canadian Patent Database to determine what inventions are already patented.
Q - How and when do I apply for a patent?
A - Patents are granted to the first inventor to file an application. For this reason it is wise for an inventor to file for a patent as
soon as possible, but not so soon in the development process that important features of the invention are not yet known. Also, as mentioned
above, disclosure of the invention prior to filing the application may ruin the potential for a patent in some cases. Making a patent
application can be a lengthy and complex process and inventors often seek professional help from a registered patent agent. A list of
registered patent agents is provided on the Canadian Intellectual Property website. Canada Business also has a
list available. Separate applications must be filed for each country in which protection for a patent is desired.
Q - What is a trade-mark?
A - Trade-marks are words, designs, symbols, two-dimensional or three-dimensional forms or any combination of these things used in
association with the wares and/or services of one person, organization or business to distinguish their wares and/or services from those offered
by others in the marketplace. In Canada, proper trade-marks are entitled to protection whether they are registered with the Canadian
Intellectual Property Office or not.
Q - Is my trade name a trade-mark?
A - Trade names are not the same as trade-marks. Trade names are names under which a business operates, whether or not it is the company
name, while trade-marks are associated with the wares and/or services that a business sells. A trade name and a company name may be registered
as trade-marks in some cases if they are used as trade-marks. It is important to note that the registration of a company or trade name with the
Registry of Joint Stock Companies does not protect it as a trade-mark.
Q – Should I register my trade-mark?
A – Registration of a trade-mark is not mandatory, but it does make it easier for the trade-mark owner to prevent others from using the
trade-mark, or similar ones, in association with the same or similar wares and/or services. This is because a trade-mark registered with the
Canadian Intellectual Property Office provides its owner exclusive use of that trade-mark in association with the specific wares and services
associated with it in Canada for a term of fifteen years and this term is renewable indefinitely. Also, the process of registration can help a
business ensure that it is not infringing the trade-mark of another business. Registration has another benefit in that it provides public
notice of the business’ ownership of the trade-mark and this may discourage others from adopting similar ones. An unregistered trade-mark may
be recognized by the courts as belonging to an owner in some circumstances; however, such protection is generally limited to the geographical
area, such as Halifax, in which the owner uses the trade-mark and the court proceedings required to establish the protection may be costly.
A trade-mark agent may assist persons, organizations and businesses in determining whether a selected trade-mark has the potential to be
registered and can assist with the application process. A list of trade-mark agents is provided on the Canadian Intellectual Property website.
Separate applications must be filed for each country in which protection for a trade-mark is desired.
Q – What types of trade-marks may not be registered?
A – There are a number of specific types of trade-marks that may not be registered. These include trade-marks that would be likely to cause
confusion in the minds of average consumers due to their similarity with previously registered trade-marks. Also, trade-marks that are clearly
descriptive or deceptively misdescriptive of the wares and/or services with which they are to be associated are not permitted, nor are
trade-marks that indicate the geographical origin or mode of production of the product. Further, there are many other restrictions, including
trade-marks that make use of national flags and coats of arms.
Q – What is copyright?
A – Copyright grants the copyright owner the exclusive right to produce, reproduce, perform or publish their original work, or any
substantial part of it, in Canada and to allow others to do the same. Copyright protects an original literary, dramatic, musical or artistic
work and also applies to other subject matter, such as performers’ performances, communications signals and sound recordings. As a general
rule, copyright extends for the lifetime of the author, performer or maker of the work and for 50 years after their death. Specific works that
are no longer subject to copyright are said to be in the public domain and may be copied, performed and published, generally speaking.
Q – Who owns copyright and should copyright be registered?
A – The first owner of a copyright is the author of the work, unless the work is subject to an exception, such as when the work is created in
the course of employment, or it is a photograph.
Q – When and how does copyright arise and should it be registered?
A – Copyright arises automatically when a person creates an original literary, dramatic, musical or artistic work or other subject matter.
In order for copyright to exist, the work must be fixed in a material form, for example, a poem must be written down. Copyright does not
protect ideas, concepts, facts or information. Generally speaking, neither does it protect slogans, most titles, plots, or methods, such as a
method of teaching. Copyright may be registered with the Canadian Intellectual Property Office, and while copyright arises even without
registration, registration is notice to the public that copyright in the work is claimed by the registered owner. Further, it creates the legal
presumption that the registered owner is the true owner of the copyright in that work. Separate applications must be filed for each country in
which protection for a work is desired.
Q – When may a person copy material that is subject to copyright?
A – The general rule is that persons may not copy or publish works that are subject to copyright. However, there are some exceptions. One
is the ‘fair dealing’ exception that allows limited portions of works subject to copyright to be copied for the purpose of private study,
research, commentary or criticism, provided the source of the work is provided along with the name of the author, performer, maker or
broadcaster if mentioned in the source. How much use of a work will be considered fair dealing depends on the specific circumstances of each
use.
In the case of material used for study, particular schools and universities may have entered into a photocopying licensing agreement that
allows students and faculty to photocopy certain material that would otherwise constitute copyright infringement. If you have concerns about
whether the use of a copyrighted work would be copyright infringement in such a case, the school administration or library should be able to
advise you about its copyright policy. An exception also exists for the purposes of reporting.
With respect to images posted on the internet, they are subject to the same copyright protection as images published in any other form.
Regarding copying musical works, sound recordings or performers’ performances, the Copyright Act allows persons to copy music onto an audio
recording device for their own private use.
Q – When may a person perform material that is subject to copyright?
A – Regarding the public performance of musical works, sound recordings, theatrical works and other subject matter, performers or presenters
must ensure that the rights to perform or present the works subject to copyright are secured either through the venue in which the performance
will occur or through direct contact with the author or owner of the work, or their union or other representatives
Q – What are moral rights?
A – Under the Copyright Act, an author has a moral right in the work they create. This moral right is the right the author has to the
integrity of their work, and the right, where reasonable in the circumstances, to be associated with it as its author, or under a pseudonym,
when that work is reproduced, performed, adapted, communicated to the public or otherwise dealt with as outlined in the Copyright Act. Moral
rights are infringed when, to the prejudice of the honour or reputation of the author, the work is distorted, mutilated, or otherwise modified,
or used in association with a product, service, cause or institution without permission. Moral rights also give the author the right to remain
anonymous. Unlike copyrights, moral rights cannot be assigned to other owners, but they may be waived.
Q – What is an industrial design?
A – Industrial designs are the features of shape, pattern, configuration or ornamentation that give an article visual appeal, such as the
shape of a lamp or a chair. Industrial designs do not include features of an article that are dictated solely by a utilitarian function
Q – Should an industrial design be registered?
A – Registration provides the owner with the sole right to make, import for the purpose of trade or business, sell, rent, offer or expose for
sale or rent any article produced with the same or a substantially similar appearance for a period of ten years from the date of registration in
Canada. Industrial designs can only be protected through registration with the Canadian Intellectual Property Office; however, it is important
to note that if fewer than fifty copies of the article using the design are produced, the design may be protected as an artistic work under
copyright law. Under certain circumstances, once more than fifty of the product based on the design is produced, copyright may no longer
prevent others from producing products with the same design and protection. Also, some protection for a product design may exist under the
trade-mark law of distinguishing guises in some circumstances.
Q – When should an industrial design be registered?
A – The general rule is that an application for an industrial design must be filed within one year of the design being offered for commercial
sale or displayed to the public anywhere in the world. Separate applications must be filed for each country in which protection for an
industrial design is desired.
Q – Where can I get more information?
More information on each of these types of intellectual property is available on the Canadian Intellectual Property Office website
at http://cipo.gc.ca, and information may be available through Canada Business Nova Scotia office at 1575 Brunswick Street in Halifax. The Canada Business general inquiry telephone number is 1-888-576-4444, or visit www.canadabusiness.ca. LISNS would like to thank lawyer and trade-mark agent Heather Oke, and law student Colin Fraser, for generously volunteering their time in preparing the above legal information.
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