Michael Melvin
Michael Melvin, Lawyer, McInnes Cooper

For many businesses, large and small, their “Intellectual Property” (IP) is one of their most valuable assets. So understanding IP is important. Here’s a Primer on what the five main IP rights are, how they are created and how to maintain them.

1. Trade-mark A trade-mark is a mark that distinguishes one owner’s goods and services from those of others; it can be: a word, design mark or a three dimensional trademark, including a distinguishing guise (shaping of wares or their containers, or a mode of wrapping or packing wares). Registration isn’t necessary to create trade-mark rights; they can be created by operation of the “common law” (the law made by judicial decisions) based on use of the mark. However, these common law trade-mark rights are limited in geographic scope to the area in which the mark has been used and are more difficult to enforce than registered trade-mark rights. Registration gives the registrant the exclusive right to use the mark throughout Canada in association with specified goods and services, even in geographic areas where the registrant hasn’t previously used the mark. It also confers other advantages when it comes to enforcement, blocking and registration of the trade-mark in other countries. Some major changes to the Trade-Marks Act are expected to come into effect in the near future and will include allowing registration of all sorts of non-traditional trade-marks such as tastes, smells and textures.

Registration of a trade-mark is valid for 15 years after registration, and is renewable (for a fee) after this initial period expires; when the pending changes to the Trade-Marks Act take effect, the initial registration period will be reduced to 10 years plus renewals. CIPO can cancel a trade-mark registration after three consecutive years of uninterrupted non-use and/or for a number of other reasons, including loss of distinctiveness. Marking a trade-mark with the “TM” or “®” symbols when using the trade-mark isn’t mandatory in Canada, but it’s advisable because it give notice of the existence and ongoing use of the trade-mark.

2. Copyright. Copyright protects original expression, but there’s no protection of an idea – only of the expression of the idea in a “work”. There are four categories of works: literary (software), dramatic, musical and artistic. Originality is key to the creation of copyright in a work: the author must have exercised some effort, skill and judgement in its creation. Registration of a copyright isn’t required for it to exist; it exists upon creation of a work, but registration is available. The copyright owner has the exclusive rights to produce, reproduce, perform in public and publish a work or a substantial portion of a work in any material form.

Where copyright is registered, the resulting certificate of registration is evidence that copyright subsists and the registrant is the owner. In Canada, copyright generally expires after the author’s life plus 50 years; in other countries, it may last for more than 70 years. There are no steps required to maintain the existence of a copyright, or a copyright registration; it simply expires at the end of its term.

3. Trade Secrets. Generally, a trade secret is any information used in a trade or business that’s not generally known, has economic value because it’s not generally known and is kept secret by the owner. It can include a formula, recipe, pattern, device or a compilation of information. In Canada, there’s no legislation that either defines or protects trade secrets, so registration isn’t required for them to exist.

Trade secrets are only protected while they remain a secret. Secrecy is maintained by using good information security practices and agreements: take steps to ensure confidentiality of the information is maintained, including limiting access to it, effecting physical safeguards of it, marking it as confidential and making use of IP ownership clauses, non-disclosure and confidentiality agreements and other appropriate contractual provisions.

4. Industrial Design. Industrial design rights are created by registration under legislation (the Industrial Design Act) of the features of the shape, configuration, pattern or ornament. There’s no protection for solely functional features; the protection only applies to a finished article and the design elements must appeal to, and be judged solely by, the eye. The owner of the industrial design rights has the exclusive right to make, sell, rent and import for the purpose of trade or business any article in relation to which the design has been registered.

The registration protection lasts for 10 years after the date of registration. There’s a single maintenance fee payment required to maintain the registration.

5. Patent. Patents protect an inventor’s right to her “invention”, if it satisfies certain criteria. To obtain a patent on an invention it must be new, useful, non-obvious and related to “patentable subject matter” (art, a process, a machine, a manufacture, a composition of matter or any improvement of one of these); if an invention doesn’t satisfy these criteria, it can’t be patented. A patent is only created by legislation (a statute): registration is required and the proposed owner must file an application for registration that fully describes the invention at the Canadian Intellectual Property Office (CIPO). The owner must be very careful not to publically disclose information about her invention before she applies for a patent; doing so may disqualify her from receiving a patent. A patent, once granted, gives the patent-holder the exclusive right to make, use and sell the patented invention.

A patent is valid for 20 years after the filing date of the patent application and there are annual maintenance fees for applications and registered patents, but there’s no requirement for the patentee to actually use the patent.

To discuss this or any other legal issue, contact any member of McInnes Cooper’s Intellectual Property Team. Read more McInnes Cooper Legal Publications and subscribe to receive those relevant to your business.

McInnes Cooper prepared this article for information; it is not legal advice.  Consult McInnes Cooper before acting on it. McInnes Cooper excludes all liability for anything contained in or any use of this article. © McInnes Cooper, 2016.  All rights reserved.

About the author:

Michael Melvin is a Registered Trade-mark Agent. He regularly advises start-ups and established companies on a range of legal issue, including intellectual property, incorporation, equity division, financing and general contract and commercial matters.  You can reach Mike at michael.melvin@mcinnescooper.com.