CHAPTER 09 Intellectual Property
To be registered, a trademark must be distinctive of the unique and single source of the products or services for which it is used. Registration may therefore be refused if a mark is the name or surname of an individual, is deceptive or merely descriptive, or if it can be confused with another trademark or trade name that was previously used or registered in Canada. Trademarks that are not initially distinctive may have acquired recognition and distinctiveness through extended use in Canada, and thus become registrable. Generally, once a Canadian trademark application has been examined and no successful opposition filed, the mark will be registered for a term of 10 years and may be renewed for an indefinite period of time. Once a trademark is registered, the owner has the exclusive right to use the mark throughout Canada. Trademarks may be assigned or licensed to third parties. A written licence agreement is generally advisable. To maintain the distinctiveness of a licensed trademark, the trademark owner must exercise direct or indirect control over the quality of products manufactured and sold or services offered by its licensee. If the licence is made public, for example by written notice, there is a presumption that the licensee’s use of the trademark is lawful and within the control of the owner. The owner of a trademark may bring a civil action for infringement of its trademark rights, acts of passing-off or unfair competition, and can seek remedies such as an injunction, damages or an accounting of profits resulting from the infringement, punitive damages or any other order deemed appropriate by the court.
Although there are no requirements regarding the markings of products or services protected under a registered trademark in Canada, symbols such as TM or ® are often used to give notice to third parties of the existence of trademark rights. However, the ® symbol should not be used unless the mark is registered in Canada. Copyrights Canadian copyrights are governed by the federal Copyright Act . Canada is a signatory to the Berne Convention for the Protection of Literary and Artistic Works, TRIPS and other World Intellectual Property Organization treaties and conventions related to copyrights, as well as CUSMA. Copyright arises automatically in Canada upon the creation and fixation on a tangible support of any original literary, dramatic, musical or artistic work, including computer software, compilations and sound recordings. Copyright can be granted if the author of the work is a citizen or subject of, or ordinarily resident in, a country that is a party to the Berne Convention or is a member of the WTO. Registration of copyright is not mandatory to confirm the existence of a copyright, but does serve as prima facie evidence of copyright ownership and strengthens the remedies available to a party whose copyright is infringed. The Copyright Act also provides a system for the registration of copyright interests and assignments or licensing of copyrights. Assignments or licences must be in writing and recorded to be enforceable against third parties.
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