doing business in canada - Davies Ward Phillips & Vineberg LLP

Thirdly, an invention must be inventive, not obvious to someone skilled in the relevant area.Special provisions apply to computer software and medicines. While most computer software is covered undercopyright protection, a patent may be possible if the software forms an integral part of another patentableinvention. Applications for patents of medicines entail their own special regime that includes a number ofspecific reporting and pricing requirements.TRADE-MARKSLegal rights to a trade-mark may arise from usage alone, but these rights are usually limited in scope. Anunregistered mark may be protected against subsequent use by another person of a confusing mark, if theowner of such unregistered mark can prove that it has acquired goodwill within the same trading area as the useof the subsequent mark. So although registration of a trade-mark is not mandatory in Canada, it is highlyadvisable.An applicant who registers a mark under the federal Trade-marks Act is granted the exclusive right to use themark throughout Canada (irrespective of the extent of use), the right to prevent the use of a confusing mark andthe right to register the mark in countries adhering to the Paris Convention and in WTO countries.An application for registration must show that the mark is in actual use in Canada, or that the applicant intendsto use the mark in Canada. A foreign applicant may also rely on foreign registration and use or, in appropriatecircumstances, on the fact that the trade-mark used in the foreign country has become known in Canada.Generally, once a trade-mark application has been examined, approved and advertised without successfulopposition, it will be granted and the trade-mark registered. A registration is for a term of 15 years and may berenewed for an indefinite period of time. However, if a registered mark is not used in commerce in Canada for aperiod of three years, it becomes subject to cancellation for non-use.Registration may be refused for a number of reasons, such as if the trade-mark is merely the name or surnameof an individual, is misleading, is merely descriptive, or if it is confusing with a trade-mark or trade name that iscurrently used in Canada, registered or not. Some trade-marks which are not initially distinctive may becomeregistrable if they acquire a "secondary" meaning after a certain period of use in Canada; for example, suchcould be the case for the name of fashion designers which may become eligible for a trade-mark registration if itcan be shown that the name has become distinctively indicative of a certain product in Canada.While there are no requirements in Canada regarding the markings of products or services protected with aregistered trade-mark, symbols such as "TM" or ®, may be used to give notice to third parties of the existenceof trade-mark rights. However, the ® symbol should not be used unless the mark is registered in Canada.Trade-marks may be assigned or licensed to third parties. Use of a licensed trade-mark is required to be subjectto the direct or indirect control of the trade-mark owner. A written licence agreement is advisable. To the extentthat the existence of the licence is made public, there is a presumption that the use by the licensee of the trademarkis lawful and within the control of the owner.Remedies for unauthorized use, passing off or infringement of a trade-mark include an injunction to stop theinfringement and a claim for damages resulting from the infringement.COPYRIGHTThe federal Copyright Act grants an exclusive right to the copyright holder of any original literary, dramatic,musical or artistic work to control the copying and other commercial exploitation of that work. The copyrightholder has the exclusive right to publish, produce, reproduce, translate, broadcast or adapt the copyright works,Industrial and Intellectual Property 49