This article originally appeared in AI, Cybersecurity, IP and the Law: What You Need to Know.
Intellectual property (IP) rights are key assets for businesses, so it's important to know what types of rights are protectable and what actions that can be taken to enforce these rights.
In Canada, there are several key types of IP: patents, copyright, trademarks, industrial design and trade secrets. At MLT Aikins, our intellectual property enforcement & litigation team is focused on the protection and enforcement of these rights. The following is an overview.
Patents
Patents are statutory rights that protect inventions, namely "any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter." The Patent Act provides a patent owner with "the exclusive right, privilege, and liberty of making, constructing and using the invention and selling it to others to be used." Any act that interferes with the full enjoyment of the monopoly granted to a patent owner constitutes patent infringement. A person who induces another to infringe a patent may also be liable to the patent owner if certain conditions are present.
Patent infringement claims in Canada can be commenced in the Federal Court or in provincial courts. In contrast, a person seeking to impeach a patent, and have it declared invalid or void, must do so in Federal Court.
Copyright
Copyright law protects original musical, literary, artistic and dramatic works – typically for the lifetime of the author plus 70 years. An important right under copyright law is the right to produce or reproduce a work or any substantial part thereof; however, other rights may exist depending on the nature of the work. Canadian copyright law also recognizes moral rights, which can be waived, but not assigned, by an author. Moral rights include the right to be known as the author, the right to remain anonymous and the right to the integrity of the work.
While obtaining a copyright registration is not required in order to commence an action for copyright infringement, securing a copyright registration will create the rebuttable presumption that copyright subsists in the work and that the person registered is the work's owner. Copyright infringement claims can be commenced in the Federal Court or in provincial courts.
Trademarks
Trademarks are words, designs and other signs that are used to distinguish the goods or services of an owner from the goods or services of others. Trademark infringement occurs when another person uses an identical trademark to that registered in association with any of the goods or services listed in the registration (section 19 of the Trademarks Act).
Trademark infringement also occurs when a confusing trademark is used by another person, even if the trademark is not identical or the goods and/or services offered by the infringer are not identical to those listed in the registration (section 20 of the Trademarks Act). In addition to trademark infringement, an owner of a trademark registration can prevent others from using a registered trademark in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto (section 22 of the Trademarks Act).
Unregistered trademarks may also be enforced in Canada under the common law tort of passing-off. In order to succeed in a claim for passing-off, a plaintiff must prove:
- the existence of goodwill;
- the deception of the public due to a misrepresentation; and
- actual or potential damages to the plaintiff.
Trademark claims may be commenced in the Federal Court or in provincial courts. Finally, it is important to note that trademark owners must monitor and enforce trademark rights, since permitting others to use the same or similar trademarks will result in a narrowed scope of rights and – in the worst case scenario – the loss of trademark rights.
Industrial design
Canadian industrial design registrations protect the aesthetic look or features of a product. As with patents, trademarks and copyright, the Federal Court and provincial courts have concurrent jurisdiction over industrial design infringement claims. Interestingly, the Federal Court does not have jurisdiction to consider an action seeking a declaration of non-infringement of an industrial design registration since the Industrial Design Act does not make reference to such declarations and the Federal Court's jurisdiction is statutory.
Trade secrets
Trade secrets are a form of IP right on confidential information. The information is commercially valuable because it's secret, and therefore reasonable steps must be taken to keep the information secret (such as through the use of confidentiality agreements, encryption, or lock and key). Properly employed, trade secrets can be an important tool for companies that need an advantage in a competitive market. Canada does not have a trade secrets act or any formal registration process. Instead, trade secret law is based on common law, or civil law in Quebec.
Provincial courts have jurisdiction over trade secret disputes, and possibly exclusive jurisdiction in Canada. If another party is using a trade secret without authorization, the owner of the trade secret may be able to claim breach of fiduciary duty, breach of contract, unjust enrichment, wrongful interference with the contractual relations, or breach of confidence, depending on the situation.
Businesses and entrepreneurs suspecting a breach of IP rights are encouraged to contact an IP litigator at MLT Aikins.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
