Trademarks, Copyright and Other Intellectual Property

Inventors, designers, entrepreneurs, writers and other creative and business people are often interested in protecting their ideas and business inventions. But how do you protect a new invention, or the brand name of a product, or the words of a song? Through patents, industrial designs, trade-marks and copyright—and sometimes as trade secrets too. This script discusses these forms of what the law calls “intellectual property,” starting with patents.

What is a patent?

Suppose that a company, National Mousetrap Corporation, has developed a new and better mousetrap. To protect that invention, it can apply for a patent.

A patent is essentially a contract between an inventor and the federal government. The government gives you, the inventor, the right to prevent others from making, selling or using your invention in Canada (and possibly elsewhere) for the life of the patent. In return, you share the technological information behind your invention, so that others can benefit from and build on this knowledge when the patent expires or they obtain a licence from you

How do you get a patent?

You must submit a patent application, along with the appropriate fee, to the Patent Office of the Canadian Intellectual Property Office (CIPO) in Hull, Quebec. (CIPO’s address and website is given at the end of this script.) Your application must describe your invention in full and demonstrate that it is new, useful, and has inventive ingenuity.

But your application isn’t automatically looked at. Within five years, you must formally ask that your application be considered and pay the prescribed fee. Approximately two years after you’ve paid this Request for Examination fee, a government patent examiner familiar with the subject matter in question will examine your application. If the examiner has any objections to the application, they will issue an examiner’s report explaining why the application is being rejected. The inventor (or patent agent hired by the inventor) must then respond within the prescribed time frame by submitting arguments and/or amendments in support of their patent application. The examination process itself can take one to four or more years, and after that, if your application is approved, you’ll receive your patent.

How long does a patent last for?

The life of a patent is 20 years from the time you first submitted your patent application. To keep your patent alive, you must pay annual government maintenance fees.

A patent application is a complicated process

Most applicants hire a registered patent agent or patent lawyer to help them with the complicated application process. You can get a list of registered patent agents from the Patent Office at CIPO.

Time is of the essence

If you’re concerned about a competitor being on the same track, you’ll want to submit your patent application for your invention as soon as possible. In most countries, including Canada, the person who applies first to the Patent Office is given the patent over another applicant who applies later claiming the same invention. This is true even if the second applicant can prove that they invented the same product before you did.

Also, any public disclosure, use or sale of your invention starts a one-year clock ticking. After that one year period, you cannot obtain a valid patent for your invention. Most countries, other than Canada and the US, don’t allow you this one-year grace period—they don’t allow any public disclosure before a patent application can be validly filed, and you could lose your right to obtain a patent internationally if you rely on the one-year grace period afforded in Canada. It’s therefore important to keep your invention secret and to file your patent application (or evaluate your other options) before you publicly disclose your invention.

What is an industrial design?

Returning to the mousetrap example, imagine that the company has also designed its mousetrap so that it has an attractive shape or design that appeals to consumers. But the company is worried that a competitor might soon copy the look and visual design of the mousetrap. To protect the design, the company can apply for an industrial design.

An industrial design protects the unique shape or ornamental appearance of a product. Examples include the shape of a table, the pattern of a fabric, the visual design of a computer keyboard, and the decoration on the handle of a spoon.

You must apply to register an industrial design

You must do this within one year after the design, or an article showing the design, has first been publicly used, displayed or sold. Registration protects an industrial design for 10 years, but a maintenance fee must be paid after five years. Like patents, many countries outside of Canada and the US require you to submit your application for registration before there is any public disclosure of your design.

What about trade-marks?

Now suppose that the company, National Mousetrap Corporation, has also developed a catchy name to brand the product and/or a distinctive logo to use on the boxes in which the mousetraps are sold and in magazine ads promoting its mousetraps. To prevent competitors from using the same logo and/or name, it would apply for trade-mark registration. (Copyright protection for the logo may also be available, discussed later.)

What is a trade-mark?

A trade-mark is a word, logo, symbol or design (or a combination of these) used to distinguish a product or service from competitors in the minds of consumers. The red “K” on a box of Kellogg’s Cornflakes, and the alligator on Lacoste t-shirts, are familiar examples of trade-marks.

How do you protect a trade-mark?

To register a trade-mark, you must submit a trade-mark application to the Trade-marks Office of CIPO in Hull, Quebec. You may file a trade-mark application on the basis of use (i.e., you have already started using the trade-mark in association with your business) or on the basis of proposed use (i.e., you intend to use the trade-mark in the near future, but you haven’t yet started using it). After examination and publication of your trade-mark, and if no one opposes it, your trade-mark will be registered.

Although not as tricky and complex as patent applications, it’s still best that you hire a trade-mark agent to help you with the application process. You can get a list of agents from the Trade-marks Office at CIPO.

Registering a trade-mark isn’t essential, but can be helpful

While you don’t have to register a trade-mark to use it, registration gives you the exclusive right to use your trade-mark throughout Canada for 15 years and the right to stop others from using a mark that is confusingly similar to yours. You can also renew your trade-mark every 15 years as long as you continue to use the trade-mark in your business. On the other hand, an unregistered trade-mark can only be protected in those places where you can prove the trade-mark is known and has an established reputation.

What about copyright?

Suppose that the mousetrap company is ready to launch an advertising campaign. Its advertising department has created a brilliant script for a TV commercial. The law of copyright protects the ownership of the script.

What does copyright mean?

In Canada, the law automatically gives the author, artist or creator of original works like poems, books, plays, musical scores, software codes and paintings ownership rights or “copyright” in that creation. Many items in your business—such as your logo, website, advertising materials and more—are probably protected by copyright. Simply put, copyright means that no one else can copy your work without your permission. This right generally lasts during your lifetime plus another 50 years after your death.

When does copyright not apply?

If you use your artistic work on a useful article, such as a decorative lamp or goblet, by employing the article as a model or pattern to make 50 or more decorative lamps or goblets, then copyright protection, with some exceptions, isn’t usually available, and you generally have to apply for registration of an industrial design instead. You also can’t claim copyright in a very short combination of words, such as the title of a book or song.

Do you have to register your copyright?

Because copyright is automatic, you don’t have to register it. But registration can help prove you own the copyright, especially if you have to sue someone for what’s called “infringement” of your copyright. When you register your copyright, you are the presumed owner of the work and the burden of proof is on the person challenging your copyright to disprove your ownership. If you don’t register your copyright, the burden of proof is on you to prove that you own the copyright.

How do you contact the Canadian Intellectual Property Office?

The address for the Patent Office, Trade-Marks Office and other offices is care of the:

Canadian Intellectual Property Office

Place du Portage Phase I

50 Victoria Street

Gatineau, Quebec K1A 0C9

CIPO’s website is www.cipo.gc.ca. For brochures and other information, check their website or call them at 1.866.997.1936.

Can you protect trade secrets and confidential business information?

As well as traditional forms of intellectual property (patents, industrial designs, trade-marks and copyright), courts recognize that businesses should also be able to protect their trade secrets and certain business information that they want to keep confidential. This could include special recipes, training manuals, methods of doing business and inventions that aren’t patented—all of which is kept secret from the public. You don’t register this type of information. Having employees, customers or business partners sign a confidentiality or non-disclosure agreement is the most common way to protect this secret and confidential information, and if someone breaks the agreement, you could be entitled to get compensation from them.

Summary

Patents protect new, useful and ingenious inventions. Industrial designs protect the shape or ornamental appearance of manufactured goods. Trade-marks protect words, symbols and logos used to distinguish the goods or services of one trader from those of another. And copyright protects original books and poems, computer program websites, artwork, movie scripts and the like. It’s also possible to protect your trade secrets and confidential business information.

[updated July 2014]

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Something which can be owned. See "chattels" and "real property."

A request to the court that it make a specific order, usually on an interim or temporary basis, also called a "chambers application" or a "motion." See also "interim application" and "relief."

In law, someone acting on behalf of someone else, with that person's express permission and normally at their express direction.

In family law, an antiquated term referring to child support and spousal support. See "child support" and "spousal support."

A person licensed to practice law in a particular jurisdiction by that jurisdiction's law society. See "barrister and solicitor."

A party who brings an application to the court for a specific order or remedy. Usually refers to the party making an interim application, but in the Provincial Court applicant also means the person who starts a court proceeding. See also "court proceeding," "application respondent," and "interim application."

A step in a court proceeding in which each party advises the other of the documents in their possession which relate to the issues in the court proceeding and produces copies of any documents the other side requests before trial. This process is regulated by the rules of court, which put each party under an ongoing obligation to continue to advise the other of new documents coming into their possession or control. The purpose of this step is to encourage the settlement of court proceedings and to prevent a party from springing new evidence on the other party at trial.

An agreement to transfer the ownership of property from one person to another in exchange for the reciprocal transfer of something else, usually money. See "agreement."

A legal right to have and use a thing that is enforceable in court. See "possession."

(1) The assertion of a legal right to an order or to a thing; (2) the remedy or relief sought by a party to a court proceeding.

In law, a document demonstrating ownership of a thing. See "ownership."

The obligation of a party to prove their case; the onus of proof. The burden of proof usually lies on the party who makes a claim, although in certain circumstances this burden is reversed, usually by operation of a statute. In civil litigation, a party must prove their case on the balance of probabilities. See "onus."

Under the Family Law Act, a term that describes the time a person who is not a guardian of a child, including a parent who is not a guardian, has with that child. Under the Divorce Act, a term that describes the time a person who is not a married spouse has with a child. See "guardian" and "parental responsibilities."