Ontario Intellectual Property Law — Copyright, Trademarks, and Patents

Intellectual Property in Canada — Federal Jurisdiction

Intellectual property in Canada is governed by federal legislation under s.91(22) and (23) of the Constitution Act 1867 (patents, copyrights, trademarks). The major federal IP statutes are: the Copyright Act RSC 1985 c C-42, the Trademarks Act RSC 1985 c T-13 (substantially amended by the Intellectual Property Laws Amendment Act SO 2014), the Patent Act RSC 1985 c P-4, the Industrial Design Act RSC 1985 c I-9, and the Integrated Circuit Topographies Act SC 1990 c 37. Trade secrets are primarily governed by provincial common law (breach of confidence) and contract.

The Canadian Intellectual Property Office (CIPO), a branch of Innovation, Science and Economic Development Canada (ISED), administers trademark and patent registration. The Federal Court has jurisdiction over IP matters including appeals from CIPO decisions, patent and trademark infringement actions, and copyright proceedings. Ontario courts (Superior Court of Justice) also have jurisdiction over IP disputes where the Federal Court's exclusive jurisdiction does not apply.

Copyright Act — Key Principles

Copyright in Canada subsists automatically in an original literary, dramatic, musical, or artistic work fixed in a tangible form by the author. Copyright Act s.5 — copyright subsists in Canada in every original literary, dramatic, musical, and artistic work if at the time of making the work the author was a citizen/national or resident of Canada (or a Berne Convention, UCC, or WTO member country).

The term of copyright protection is the life of the author plus 70 years (amended from life plus 50 years by Bill C-19, the Budget Implementation Act 2022 No. 1, effective December 30, 2022, implementing Canada-US-Mexico Agreement (CUSMA) obligations). For works of Crown (government) copyright, the term is 50 years from publication or 50 years from creation if unpublished.

The author is the first owner of copyright (Copyright Act s.13(1)), subject to two key exceptions: (1) where an author creates a work in the course of their employment under a contract of service or apprenticeship, the employer is the first owner absent contrary agreement (s.13(3)); and (2) where a portrait/photograph/engraving/print is made for valuable consideration at the order of another person, that person is the first owner (s.13(2) — the "for hire" rule for certain commissioned works).

Key copyright rights include: reproduction, performance, publication, translation, conversion, and making a derivative work (Copyright Act s.3). Moral rights (s.14.1) — the right of integrity (right to prevent distortion/mutilation/modification prejudicial to honour or reputation) and the right of attribution — run for the same term as copyright but can only be waived, not assigned (s.14.1(2)).

Fair dealing (Copyright Act s.29-29.4) permits use of copyright-protected works for research, private study, education, parody, satire, criticism, review, and news reporting without infringement, provided the dealing is fair (CCH Canadian Ltd v Law Society of Upper Canada 2004 SCC 13 six fair dealing factors: purpose/ character of dealing/nature of work/alternatives/nature of work/effect on market). Alberta (Education) v Canadian Copyright Licensing Agency 2012 SCC 37 confirmed that "education" is a user right, not just an exception.

Trademarks Act — Registration and Rights

A trademark is a sign or combination of signs used or proposed to be used by a person to distinguish their goods or services from those of others (Trademarks Act s.2 definition). Trademarks may include words, designs, shapes, tastes, textures, moving images, holograms, sounds, scents, three-dimensional signs, or a combination thereof. Canada adopted the Nice Classification system for goods and services (following the 2014 amendments).

Registration of a trademark at CIPO provides: (1) the exclusive right to use the trademark throughout Canada in association with the registered goods/services (Trademarks Act s.19); (2) the right to prevent confusing use by others under s.20; and (3) a presumption of ownership and validity. An unregistered trademark owner has common law rights in the geographic areas of use but cannot rely on the Act for registration-based infringement remedies.

The term of trademark registration is 10 years from registration, renewable indefinitely for further 10-year periods. A trademark may be expunged for non-use — under s.45, CIPO may require the registered owner to show use in Canada during the preceding three years; failure to show use leads to expungement. Use is defined in s.4 as use in the normal course of trade (for goods) or performance of the services (for services).

Passing off at common law protects unregistered trademark rights: Ciba-Geigy Canada Ltd v Apotex Inc [1992] 3 SCR 120 three elements — (1) goodwill in the mark; (2) misrepresentation (actual or likely to deceive); and (3) damage or likely damage.

Patent Act — Invention and Patent Protection

A patent grants the inventor an exclusive right to make, use, and sell an invention for 20 years from the filing date (Patent Act s.44-45). In exchange, the inventor discloses the invention publicly in the patent specification. After the patent expires, the invention enters the public domain.

To be patentable under Patent Act s.2, an invention must be: (1) novel — not previously disclosed (s.28.2); (2) non-obvious — not obvious to a person skilled in the art (s.28.3); and (3) useful — have practical utility (AstraZeneca Canada Inc v Apotex Inc 2017 SCC 36 utility confirmed at time of filing but sound prediction acceptable). Subject matter must fall within patentable categories: art, process, machine, manufacture, or composition of matter (s.2). Mathematical formulas, scientific theorems, higher life forms, and (currently) computer programs standing alone are not patentable in Canada.

Canada uses a first-to-file system (since 1989). Grace period of one year applies for disclosures by the inventor before filing (s.28.2(1)(a)). Patent applications must be filed within 12 months of any public disclosure by the inventor to preserve patentability.

Industrial Designs

Industrial designs protect the visual features of finished articles — their shape, configuration, pattern, or ornament (Industrial Design Act s.2). Protection requires registration at CIPO within 12 months of publication of the article. Registration gives the owner the exclusive right to make, import for trade, and sell or rent articles bearing the design for 10 years (in two 5-year periods with renewal required at 5 years). Amended by IP Laws Amendment Act 2018, the Industrial Design Act now also protects sets of articles.

Trade Secrets and Confidential Information

Unlike patents, trademarks, and copyright, trade secrets have no dedicated federal statute in Canada. Protection relies on the common law tort of breach of confidence and contractual obligations. The elements of breach of confidence under Canadian law (Lac Minerals Ltd v International Corona Resources Ltd [1989] 2 SCR 574): (1) the information conveyed was confidential; (2) the information was communicated in circumstances importing an obligation of confidence; and (3) there was unauthorized use of the information to the detriment of the person who communicated it.

Practical protection measures for trade secrets include: confidentiality agreements/NDAs (clearly defining what is confidential, scope of use, and duration); employment agreements with confidentiality and post-employment restrictions; internal access controls limiting exposure; and marking of confidential materials. Ontario courts enforce reasonable NDA terms and grant injunctive relief and damages for breach.