Whether you’re a business owner with trade secrets or a creative with unique inventions, learning how intellectual property is protected in Canada is a must.
To protect your edge over your competitors, here’s the process for protecting the creations you worked so hard on, straight from an expert on Canadian intellectual property laws.
How is intellectual property protected in Canada?
Protection of intellectual property (IP) in Canada is composed of two parts:
- businesses and creators orient themselves on Canada’s legal framework on IP rights
- the creator or inventor registers their IP and enforces these rights whenever necessary
Kevin Sartorio, a senior intellectual property specialist and partner at Gowling WLG, provided insights on how intellectual property is protected in Canada.
Sartorio says that Canada protects intellectual property by recognizing the existence of intellectual property rights and allowing rights-holders to enforce those rights against unauthorized users. This is done through legal proceedings in Canadian courts.
“Canada’s recognition of intellectual property rights is influenced by our need to adhere to various conventions and treaties for the protection of intellectual property that Canada is a signatory of,” says Sartorio.
What are the important laws on intellectual property?
Intellectual property rights in Canada are protected both by federal statutes and common law.
Each type of IP is governed by a specific law, apart from trade secrets whose protection falls under common law and Canada’s law on contracts.
Intellectual property is protected in Canada by these federal statutes:
These laws, aside from common law principles on these four IPs and trade secrets and the Québec Civil Code, form the basic protections of intellectual property in Canada.
Four basic protections of IP
Sartorio helped define the four basic protections of intellectual property, as follows:
- patent: to protect a new, useful and non-obvious invention
- trademark: to protect a symbol of trade source
- copyright: to protect an original literary, artistic, musical or dramatic work or other subject matter
- industrial design: to protect an artistic design applied to a useful article
Sartorio adds that the misuse of confidential information or trade secrets generally falls within the jurisdiction of the provinces. This means that there are other related laws – both at the federal and provincial levels – that also protect intellectual property in Canada.
As an example, Sartorio says that “the use of a confusing trademark or trade name can be the subject not only of various actions under the federal Trademarks Act, but can also be the subject of an action for ‘passing-off’ as recognized by the various provinces.”
Registration of intellectual property
As stated in the different federal IP laws, an owner’s IP rights can be enforced if the creation or invention has been registered.
This will vary for every type of intellectual property, as elaborated by Sartorio:
- patent or industrial design: IP rights will only be recognized if the intellectual property is the subject of a formal registration
- copyrights: registration is not essential but beneficial
- trademark: registration will allow for a broader range of enforcement options
- confidential information or trade secrets: there is no mechanism for registration
Registration of patents, trademarks, copyrights, and industrial designs is done through the Canadian Intellectual Property Office (CIPO).
In another aspect of protecting intellectual property, here’s a video of Sartorio explaining the intersection of copyrights, trademarks, and industrial designs:
If you’re from Ottawa, Toronto, Hamilton, or nearby areas, consult with one of the Lexpert-ranked best intellectual property lawyers in Ontario. Explore your options on how to protect your intellectual property.
Criminal case for IP infringement
The federal Criminal Code may also play a part in protecting intellectual property. “It is also possible in theory for certain infringements of intellectual property to be considered to rise to a level of criminal responsibility,” says Sartorio.
Here are relevant provisions of the Criminal Code on intellectual property infringement:
- section 391: defines what a trade secret is, how an offense of trade secret infringement is committed, and its punishment
- sections 406-414: defines the crime of forgery of trademarks and trade descriptions, including passing off trademarked products and services, and its punishment
Enforcement of IP rights
Infringement of IP rights is the use of intellectual property without the consent of its owner, or of the person who has the right to use or produce it. Infringement is also defined in the above-mentioned federal statutes, in addition to its actual application as seen from common law.
For example, the Patent Act defines infringement of patents as making, constructing, using, or selling the patented invention without the patentee’s consent. Common law clarified this definition by adding how can it be indirectly committed, such as by inducement.
When owners of registered IPs find out that their IP rights have been violated, the law outlines legal actions they can take.
Sartorio says that they can start legal proceedings to enforce intellectual property rights against unauthorized users. Most of these proceedings can be brought before the Federal Court of Canada or the various provincial superior courts of justice, he says. “Although a breach of confidence will generally be enforced only through the provincial courts,” Sartorio adds.
How can lawyers help in protecting intellectual property in Canada?
Intellectual property lawyers can help in different areas related to protecting intellectual property in Canada.
This includes assisting clients with registering their inventions with the CIPO or helping them enforce their IP rights against infringers. “Practicing in the field of intellectual property allows a lawyer to be exposed to a diverse range of interesting issues and technologies on a regular basis,” says Sartorio.
He also shared some cases that he has handled recently, such as disputes regarding:
- patents pertaining to geolocation technologies for mobile devices
- copyrights claimed to cover popular online programming and broadcasts in Canada
- confidential information asserted over retail display technologies
- trademark disputes involving leading manufacturers and retailers
When clients come across similar circumstances, or if they regularly deal with intellectual property, it’s high time to hire an intellectual property lawyer to guide them.
Learn more about how intellectual property is protected in Canada by consulting one of the best intellectual property lawyers in Canada as ranked by Lexpert.