With filings from overseas keeping its registries busy and a small yet productive population to cater for, Canada has one of the West’s best administered IP systems. Bereskin & Parr’s Daniel R Bereskin, QC and Jonathan Burkinshaw explain how the system works.

Canada has a surprisingly prominent position in the IP world considering the relatively modest size of its population. In fact, when considering the number of IP applications filed as a function of gross domestic product, Canada receives more patent applications per billion dollars of GDP than the UK, France, Germany, Mexico and Spain, among others. Similarly, more trademark applications are filed in Canada per billion dollars of GDP than in the USA, UK, France, Germany and Japan.

The patent process
A Canadian patent gives an inventor the right to prevent others from making, using or selling an invention for up to 20 years after the date of filing. To be patentable, an invention must be novel and useful, and show inventive ingenuity. Patentable subject matter includes products, compositions, apparatuses, and processes, or improvements to any of these; however, a patent is only granted for the physical embodiment of an idea or for a process that produces something tangible, and not for scientific principles or abstract theorems.

Unlike the USA, Canada now has a first-to-file patent regime. Patents are granted to the inventor who is the first to file a patent application rather than the first to invent. As is the case in most countries, public disclosure of an invention before filing will make it impossible to obtain a patent; however, in Canada, an exemption exists where the disclosure is made by the inventor and within one year before the filing date.

The Canadian Intellectual Property Office (CIPO) is responsible for processing all forms of IP applications, and also for settling certain types of disputes. Other disputes are handled by the Superior Courts of each province or the Federal Court of Canada.

At last count, of the approximately 40,000 patent applications filed annually in Canada, 35,000 were by residents of foreign countries. This is attributable to the strength of the Canadian economy, and the fact that Canada has strong and enforceable IP laws.

Tackling trademarks
In Canada, ownership of a trademark can be established through use of the mark, and thus registration of the trademark is not strictly necessary; however, it is generally advised because it gives the registrant the exclusive right to use the mark across Canada for a period of 15 years, as well as a number of other substantive and procedural advantages. For example, the owner of a registered trademark is entitled to prevent others from using the identical mark in association with the exact wares or services for which the mark has been registered, or from using a confusingly similar trademark or trade name, or depreciating the goodwill in a trademark through dilution.

At the last count, of the approximately 40,000 patent applications filed annually in Canada, 35,000 were by residents of foreign countries.

Generally, marks are not registrable if they are: the name or surname of an individual who is alive or has died in the past 30 years; clearly descriptive or deceptively misdescriptive of the associated wares and services; or likely to cause confusion with an existing registered trademark. Among the other restrictions on the adoption and registration of trademarks in Canada, of particular note is the protection granted to a class of marks known as ‘official marks’, which are granted to public authorities in Canada with a public benefit purpose – these marks are not examined and entitle their owners to a wider scope of protection than normal trademarks.

Canada currently lags behind other countries in the registration of nontraditional trademarks, such as those consisting of sound, moving images, holograms, scent, taste or colour per se.

In order to prove infringement, it is usually necessary to show that the accused mark is likely to cause confusion or dilution with the registered mark. Two recent decisions by the Supreme Court of Canada involving the Veuve Clicquot and Barbie trademarks confirm that – notwithstanding the fame of the registered mark – if there is, in fact, no real likelihood of confusion, there can be no infringement irrespective of the similarity between the registered and accused marks. Canada does not subscribe to the International Classification System, but requires that wares and services be described in ordinary commercial language.

Airtight copyright
In Canada, copyright subsists in all original literary, artistic, dramatic and musical works, including computer programs, if the author was at the time of creation a Canadian citizen or resident, or the citizen or resident of a country that is a member of the Berne Convention, the Universal Copyright Convention, the Rome Convention or the WTO, or if the work was first published in one of those countries. Copyright gives the owner the sole right to produce or reproduce a work or a substantial part thereof, or to authorise such activities.

Canadian copyright law is currently undergoing substantial reform. At present, it is unknown when new legislation will be introduced, or how the government will respond to concerns that are likely to be raised by various special interest groups.


Major legislation

Copyright Act (1924) Covers the full range of artistic works, plus computer programs.

Industrial Design Act (1961) Protects original ornamentation, shaping and configuration of industrial objects.

Patent Act (1985) All novel, useful and ingenious inventions are protected by this Act.

Trademarks Act (1985) Handles all brands and signs, plus domain names and 'official marks.'

Plant Breeders' Rights Act (1990) Allows all new plant varieties to be registered.

Integrated Circuit Topography Act (1993) Covers design features and appearance in this specific technological field.


This article first appeared in IP Review, issue 21

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