IP is a valuable asset that can support you when doing business overseas. An Australian patent, trade mark, design or plant breeder’s right does not secure your rights outside of Australia. You should consider IP protection in the countries that you are planning on doing business, including manufacturing, or selling products online.
Please note, IP registration and protection can be a complex process, especially in an international context. It is recommended that you seek advice from an IP professional.
Canada has a population of over 37 million, and is the 10th largest economy in the world. In 2018, two-way trade in goods and services between Australia and Canada totalled A$6.8 billion. Canada has two official languages: English and French.
Australia and Canada have a long-standing trading relationship that continues to strengthen. It is important to know how to register and enforce your IP rights if doing business or planning to do business in Canada.
IP protection in Canada
You can register IP rights in Canada for trade marks, patents, designs, copyright, and plant varieties.
The Canadian Intellectual Property Office (CIPO) is the government agency overseeing most of Canada’s IP system. Plant varieties, or Plant Breeder’s Rights, are administered by the Plant Breeder’s Rights Office.
An address for service in Canada and a local agent or attorney is generally required when seeking IP registration.
Canada is a member of international agreements for the protection of IP rights as administered through the World Intellectual Property Organization. See below for further details.
- Trade mark applications can be filed directly with CIPO or made through the Madrid system for the international registration of trade marks. Applications can be submitted online.
- When deciding on whether or not to enter Canada with your trade mark (and ideally before you apply for a trade mark in Australia), you should consider two things when applying for an international application through the Madrid system.
- Firstly, you may wish to search the Global Brands Database to make sure your chosen trade mark is available to be registered.
- Secondly, acceptable claims for goods and services vary across the world. Consider consulting the Madrid Goods and Services Manager database, which outlines what claims are acceptable in various jurisdictions globally.
- Like Australia, Canada has a “first to use” rule for obtaining trade mark right. This means that the first person who can prove significant use of a trade mark in Canada will generally have superior rights to a person who files a trade mark application later.
- Unregistered trade marks may, in some cases, be protected under common law in Canada. However, a registered trade mark provides statutory protection which offers significant advantages in trade mark disputes.
- The registrability of a trade mark is considered from both an English and French language perspective; for example, if your trade mark is “Red Flower” you would need to consider “Red”, “Rouge”, “Flower” and “Fleur”.
- Trade mark registrations may be removed from the register if they are not used over a period of three or more consecutive years after registration.
- A trade mark’s validity generally has no deadline for being challenged. However, if the registration is more than five years old it cannot be contested based on prior use unless the registered user is demonstrated to have adopted the mark with knowledge of the prior use.
- There are other circumstances under which a trade mark may be challenged, cancelled or removed. Please check the relevant requirements prior to application.
- A trade mark registration is valid for 10 years and may be renewed indefinitely for successive 10 year periods upon payment of fees.
- Applications may be made directly to CIPO or can enter through national phase entry via the Patent Cooperation Treaty (PCT).
- Applications can be made for “standard” patents only. Canada does not have a utility model (‘mini patent’) system.
- Canada has a one-year grace period for public disclosures made by inventors, applicants, or a person who obtained that knowledge directly or indirectly from either the applicant or inventor.
- If a patent is not used after three years any interested party can file an application for a compulsory license to use the patent.
- Patent protection is for up to 20 years from the date of filing.
- The Global Patent Prosecution Highway (GPPH) may be used by Australian applicants to speed up the examination process for corresponding patent applications filed in Canada.
Applications may be made directly to CIPO.
Registration of a design must be applied for in Canada within one year of the date on which the design is first disclosed.
Protection is available for a period of up to 15 years, subject to payment of a maintenance fee prior to the end of the first five-year term.
Canada is a member of the Hague Agreement and can therefore be designated in an international application where the applicant is able to establish entitlement. Australia is not currently a member of the Hague Agreement.
- Like Australia, copyright arises automatically at the time of creation of an eligible work.
- However, CIPO operates a voluntary registration system under which copyright owners may record their copyright and receive a certificate of registration for a fee. The certificate assists third parties seeking permission to use the work and may be used as evidence of ownership.
- The term of protection varies depending on the type of work. In general, most published works are protected for the life of the author plus 50 years.
- Applications may be made directly to the Plant Breeder’s Rights Office.
- All plant species, excluding algae, bacteria and fungi, are eligible for protection.
- Protection is granted for up to 25 years for trees and vines, or 20 years for all other varieties of plant.
Enforcing your IP rights in Canada
It is your responsibility to protect your IP. You should actively monitor the marketplace for any unauthorised use of your IP.
IP law is complex. If legal action is necessary, you should consult a legal professional who specialises in IP law.
Doing business in Canada
Before entering the business market in Canada, there are a number of factors to consider including culture, politics and business etiquette.
You can start by taking a look at the extensive information about doing business in Canada on the Austrade website.
- Canadian Intellectual Property Office
- Plant Breeders’ Rights Office
- Madrid system
- Patent Cooperation Treaty
- Hague Agreement
- Export Council of Australia
- 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 this contact.