FOR IP PROFESSIONALS

IP protection in Canada

The government agency overseeing Canada's intellectual property (IP) rights system is the Canadian Intellectual Property Office (CIPO).

You can register IP in Canada for trade marks, patents, designs and integrated circuit topographies (ICT) through the CIPO.

Plant breeder's rights (PBR) must be registered through the Plant Breeder's Rights Office.

Patents, trade marks, design and copyright registration may be applied for online through the CIPO website. Applications for registration of ICT must be submitted in writing to the CIPO. Plant varieties must be submitted in writing to the Canadian Food Inspection Agency who administer plant breeders' rights. A local address for service is generally required to register IP in Canada.

The CIPO also operates a voluntary records system under which copyright owners may record their copyright.

Trade Marks

Trade mark rights may be acquired at common law through the adoption and use of a trade mark in association with goods or services or through registration. Registration confers statutory protection that provides significant advantages in trade mark disputes.
The CIPO examines trade mark applications on a first-to-file basis, therefore applications should be filed as early as possible.
A Canadian trade mark registration is valid for 15 years and may be renewed for successive 15 year periods upon payment of fees.
Non-traditional marks such as sound marks, motion marks, hologram marks and scents are not registrable in Canada.
Three-dimensional aspects of a product or its packaging (known as "distinguishing guise") may be protectable. Colour may only be protected as applied to the surface of distinguishing guise.
Unlike many other countries, Canada has not adopted the Nice classification system. Goods and services are described and listed in their ordinary commercial terms
Trade mark registrations may be removed from the register if they are not used for three or more consecutive years after registration.

Patents

Canada adopted a first-to-file patent system on 1 October 1989. Patents filed after that date generally have a term of protection of 20 years from the date of filing. Extension of patent terms is generally not available in Canada.
To be eligible for patent protection, an invention must be new, non-obvious to a person skilled in the art and have utility, such as be functional and operative.
Some things are not patentable in Canada. These include methods for medical treatment, higher (multi-cellular) life forms and computer software. Some software may be protected by patents if it meets the traditional criteria for patentability. A recent Federal Court decision in Canada has suggested that business methods may be patentable under Canadian law.

Designs

The term of protection in Canada for registered designs is 10 years, subject to payment of a maintenance fee five and a half years from the registration date.

Copyright

In general, copyright protection continues for the life of the author and will expire on 31 December of the 50th year from the death of the author. Although copyright arises automatically at the time of creation of eligible work, registration of copyright is possible in Canada. The registration certificate may be used in court as evidence of ownership.

Plant varieties

Canada has provisions for protection of plant variety rights for up to 18 years, subject to the payment of an annual fee. All plant species except algae, bacteria, and fungi are eligible for protection.

Integrated circuits

The Integrated Circuit Topography (ICT) Act protects the original design of a registered topography. The term of protection may be up to 10 years from the filing date and will expire on 31 December of the 10th year after the filing date, or the year of first commercial exploitation.

Professional advice

If you are considering exporting to Canada, it is recommended that you contact an IP professional experienced in Canadian IP law and trade to advise on local IP, customs and other laws regulating imports and trade in Canada. Australian IP professionals can facilitate such contact.

This information has been developed in conjunction with Spruson & Ferguson Patent and Trade Mark Attorneys (Australia) and Gowling Lafleur Henderson LLP (Canada).