Trade Marks & Copyright 2024 Comparisons

Trade Mark

The governing legislation for trade marks in Canada is the Trademarks Act, which is supplemented by the Trademarks Regulations.

Canada recognises unregistered trade marks both by statute and at common law. However, unregistered trade marks have a more limited scope of protection and more onerous evidentiary tests for enforcement (see 4.1 Trade Mark Registration). 

Copyright

Copyright is exclusively a creature of statute in Canada. All rights and remedies are set out in the Copyright Act and related regulations.

Trade Mark

Canada is a signatory to the following:

• Agreement on Trade-Related Aspects on Intellectual Property Rights (TRIPS);
• Canada-United States-Mexico Agreement (CUSMA);
• Hague Convention;
• Madrid Protocol;
• Nice Agreement;
• Paris Convention;
• Singapore Treaty; and
• WIPO Convention.

Copyright

Canada is a signatory to the following:

• Berne Convention;
• CUSMA;
• Marrakesh Treaty;
• Rome Convention;
• TRIPS;
• Universal Copyright Convention;
• WIPO Copyright Treaty; and
• WIPO Performances and Phonograms Treaty.

International treaties and conventions are not self-executing. Canada has ratified and implemented these treaties through amendments to the Trademarks Act and the Copyright Act.

The Trademarks Act and the Copyright Act govern the rights of foreign trade mark and copyright owners in Canada, respectively.

The Trademarks Act recognises several types of trade marks.

• A “trade mark” is a “sign” or a “combination of sign” that is used or proposed to be used to distinguish the goods and/or services of one party from those of another. “Sign”, in turn, includes words, personal names, visual designs, letters, numerals, colours, figurative elements, three-dimensional shapes, holograms, moving images, modes of packaging goods, sounds, scents, tastes, textures and the positioning of a sign.
• A “certification mark” is a sign or combination of signs that distinguishes goods and services that are of a certain defined standard.
• A “geographical indication” is used to identify certain types of wines, spirits, foods, and agricultural products as originating from a certain territory, region, or locality.
• A “prohibited” or “official” mark is a badge, crest, emblem, or mark that is adopted and used by any public authority to distinguish its goods or services.

Industrial designs attract separate protection under the Industrial Design Act.

Certain trade marks in Canada receive special protection under their own designated legislation. For example, the Olympic and Paralympic Marks Act specifically relates to the protection of 39 marks related to the Olympic and Paralympic Games.

Canadian trade mark law does not expressly protect unregistered marks that are famous in other jurisdictions. However, under the common law doctrine of passing off, a foreign trade mark owner may be able to demonstrate that the fame of their mark has resulted in that mark having goodwill and reputation in Canada such that confusion with similar marks could result. 

A trade mark is eligible for registration if it is distinctive of the goods and services with which it is associated and does not fall under one of the express prohibitions in the Trademarks Act. Examples of these prohibitions are marks that are:

• primarily or merely a surname;
• clearly descriptive (or deceptively misdescriptive) of the character or quality of the associated goods and services;
• the name of any of the associated goods and services in any language;
• confusing with another registered (or pending) trade mark; or
• primarily dictated by utilitarian function.

An otherwise unregistrable trade mark can qualify for registration if the applicant can demonstrate that the mark has acquired distinctiveness in Canada. This is often demonstrated through evidence of extensive sales and advertising in Canada.

A trade mark registration provides its owner with the exclusive right to use that mark throughout Canada, during the term of registration, in association with the listed goods and services. See 8.2 Legal Claims for Infringement Lawsuits and Their Standards.

A trade mark is “used”:

• for goods, if at the time the goods are transferred, in the normal course of trade, the mark appears on the goods themselves, their packaging, or in any other manner that would amount to notice of the association between the mark and the goods being given to the purchaser; and
• for services, if it is used or displayed in the advertising or performance of the services. “Use” with services must be in a manner that makes some benefit available to Canadians; merely advertising a mark in association with a service Canadians cannot actually benefit from is not sufficient.

Use must be use as a trade mark, meaning it must be for the purpose of distinguishing – or must actually distinguish – the owner’s goods and services from those of others.

While not mandatory, it is common practice in Canada to accompany the display of a trade mark with symbols that denote trade mark rights (eg, ® or TM).

The Trademarks Act and the Copyright Act are separate statutes that do not limit each other. A mark can qualify for both trade mark and copyright protection if it satisfies the requirements under each statute.

The following types of works and other subject-matter are eligible for copyright protection:

• literary works (including computer programs);
• dramatic works (including choreographic and cinematographic works);
• musical works;
• artistic works (including architectural works);
• performers’ performances;
• sound recordings; and
• communication signals.

Subject to certain exceptions, it is not copyright infringement to reproduce a design applied to a useful article if, by or under the authority of the copyright owner, the article has been reproduced in a quantity of more than 50. Such a design may be protected instead if registered under the Industrial Design Act.

To qualify for copyright protection in Canada, a work must fall within one of the four categories of works set out in the Copyright Act. It must also be original, fixed, and sufficiently connected to Canada or a “treaty country”.

Originality is not defined in the Copyright Act. The Supreme Court of Canada has held that, for a work to be “original”, it must be more than a mere copy of another work. However, it need not be creative, in the sense of being novel or unique. Rather, it must be an exercise of skill and judgement that involves intellectual effort that is not so trivial that it could be characterised as a purely mechanical exercise.

To attract copyright protection, the original expression must also be fixed – that is, expressed to some extent in some material form, capable of identification and having a more or less permanent endurance. The work must also be sufficiently connected to Canada or a treaty country (that is, a country that is a party to the Berne Convention, the UCC, or the WIPO Copyright Treaty or is a World Trade Organization Member), by virtue either of the author’s citizenship or residency when the work was created or of the place of first publication.

Copyright also subsists in other subject matter, namely performers’ performances, sound recordings, and communication signals. Each has its own statutory requirements for protection. 

The Copyright Act does not define an “author”. Generally, the author of a work is the person who created it through the exercise of their skill and judgement. Since the term of copyright protection in a work is tied to the year of the author’s death, the author must be a natural person.

Parliament and the courts have not yet considered whether AI-generated works are eligible for copyright protection. It is unlikely that entirely AI-generated works are protectable under the current Copyright Act because they are not created by a human “author”. However, it is possible that AI-assisted works may be protectable depending on the level of human involvement.

Anonymous or Pseudonymous Authorship

An author may claim protection anonymously or pseudonymously, but a different term of protection is afforded to anonymous and pseudonymous works.

Joint Authorship

A work of joint authorship is a work produced by the collaboration of two or more authors in which the contributions of the authors are not distinct from each other. In the absence of an agreement to the contrary, the joint authors’ ownership interests in the work will be equal. A joint author cannot grant a licence to exploit the work without the consent of the other joint authors.

Works Made in the Course of Employment

Where the author of a work was employed under a contract of service or apprenticeship and the work was made in the course of their employment, the employer will be the first owner of the copyright in that work absent any agreement to the contrary. However, the employee will remain the author.

Canada does not have a work-made-for-hire regime. To transfer copyright ownership, an independent contractor must make a valid written assignment of the copyright to any works they create.

Copyright in a work means the sole right:

• to produce or reproduce the work, or any substantial part of it, in any material form whatever;
• to perform the work, or any substantial part of it, in public; or
• if the work is unpublished, to publish it or any substantial part of it.

It also includes other enumerated rights, including the sole right to do or to authorise any of the following:

• produce, reproduce, perform, or publish any translation of the work;
• in the case of a literary, dramatic, or musical work, make any sound recording, cinematograph film, or other contrivance by means of which the work may be mechanically reproduced or performed;
• reproduce, adapt, and publicly present the work as a cinematographic work;
• communicate the work to the public by telecommunication, which includes the right to make it available to the public by telecommunication on an on-demand basis;
• in the case of a musical work, rent out a sound recording in which the work is embodied; or
• in the case of a work that is in the form of a tangible object, sell or otherwise transfer ownership of the tangible object, as long as that ownership has never previously been transferred with the authorisation of the copyright owner.

The author of a work also holds moral rights, including the right to the integrity of the work and the right, where reasonable in the circumstances, to be associated with the work as its author by name or under a pseudonym or to remain anonymous. 

Synchronisation rights fall within the reproduction right. In order to use music in an audiovisual work, it may be necessary to obtain separate licences for the composition and the sound recording.

Generally, the term of copyright in a work is the life of the author plus 70 years after the end of the year they die. Before 30 December 2022, the term was the life of the author plus 50 years. When the term expires, the work falls into the public domain.

Other subject matter, such as performer’s performances, communication signals, and sound recordings, are subject to different terms of protection.

Notice of copyright ownership is not required in Canada. However, a notice that consists of the symbol ©, the year of the first publication, and the name of the copyright owner may be used.

In proceedings for copyright infringement, the plaintiff is not entitled to any remedy other than an injunction if the defendant proves that they were not aware and had no reason to suspect that copyright subsisted in the work or other subject-matter.

Canada has various collective societies that manage rights in various types of works and subject matter. That includes, among other things, the reproduction and public performance of musical compositions, sound recordings, and performers’ performances, as well as various rights in literary and artistic works.

The powers and affairs of collective societies are governed by the Copyright Act and regulated by the Copyright Board of Canada. Generally, a collective society may enter into agreements or file proposed tariffs with the Copyright Board to set royalties for the rights that it administers.

Copyright protection arises automatically upon the creation of an eligible work or other subject matter. There is no requirement to register the copyright to obtain the protections afforded under the Copyright Act. However, there are benefits to registration. See 9.2 Effect of Registration.

An application to register copyright may be made by or on behalf of the copyright owner (whether the first owner or an assignee) or a person to whom an interest in the copyright has been granted by licence. Foreign copyright owners are not required to appoint or be represented by an attorney in order to apply for registration.

The Canadian Intellectual Property Office (CIPO) maintains the Copyright Register, which is available online.

An application to register copyright in a work or other subject-matter must be filed with CIPO. It must include basic information, such as the author, owner, and title of the work. An applicant is not required to provide a copy of the work or other subject-matter.

Information on filing fees is available online.

In Canada, there is no substantive review of an application and no direct consequences for providing incorrect information. However, an incorrect registration may affect an applicant who seeks to rely on it in copyright infringement proceedings. Further, where a person purports to have the authority to apply for registration on behalf of another person, any damages caused by a fraudulent or erroneous assumption of authority are recoverable in court.

Once a registration has been issued, the Registrar of Copyrights may correct clerical errors in the registration. The Federal Court may also, on application, order the rectification of the register. See 6.2 Legal Grounds for Filing a Revocation/Cancellation Proceeding, 6.3 Ability to File a Revocation/Cancellation Proceeding, 6.4 Revocation/Cancellation Procedure, and 6.6 Amendment in Revocation/Cancellation Proceedings.

The Copyright Office will only refuse to register a copyright if the formal registration requirements are not met. There is no appeal, but the applicant may resubmit a corrected application.

Copyright may also be protected by trade mark or industrial design rights. See 2.6 Related Rights and 3.1 Types of Copyrightable Works.

Registration is not required for trade mark rights in Canada. However, registration provides several benefits. See 8.2 Legal Claims for Infringement Lawsuits and Their Standards.

CIPO operates a public register of all trade mark registrations and applications, available online.

It is advisable to conduct a search before filing an application. However, CIPO searches by their nature cannot cover unregistered and unfiled trade marks. As a result, prospective applicants often choose to engage a trade mark agent to conduct a more robust search.

Canada’s trade mark registration system does not allow for the registration of series marks.

The initial term of a trade mark registration is ten years from the date of registration (15 if it was registered before 2019).

Owners can extend the initial term by filing a renewal, with each renewal made after 2019 extending the term by an additional ten years. A renewal can cover all or only some of the goods and services listed in the registration.

The trade mark owner does not need to demonstrate continued use upon renewal. However, failing to use a registered trade mark for several years can lead to a summary cancellation proceeding (see 6. Trade Mark and Copyright Revocation/Cancellation Procedure).

Basic changes to a trade mark registration can be made by written request to CIPO. More substantive changes, whether to the mark itself or to the goods and services with which it is associated, must be processed as a new application.

A trade mark application must include:

• the applicant’s name and address;
• representation and/or description of the trade mark;
• a statement in specific and ordinary commercial terms of the goods and services associated with the trade mark;
• the Nice Classification classes of the associated goods and services;
• the application fee (see the Fees for trademarks website); and
• any other requirements specific to the type of trade mark sought to be registered.

If an application has a priority claim, the Canadian application should also include the date and country of the prior application as well as the priority application number.

A trade mark application can be filed by an individual, corporation, or other legal entity. It is not necessary to appoint a trade mark agent, although it is common practice to do so. Appointing a Canadian agent is particularly advisable for foreign trade mark owners because CIPO will not send many key documents related to the application to an international agent.

Since 2019, a trade mark applicant no longer needs to declare whether they have already used the mark in association with their goods or services or specify the date of first use. However, a registration may be subject to cancellation if the registrant fails to use the mark for three consecutive years after registration. See 6. Trade Mark and Copyright Revocation/Cancellation Procedure.

CIPO will consider whether a trade mark is registrable and search for potentially confusing third-party registrations and pending applications on the register. Canadian examiners also consider uses of unregistered marks available online and through public databases.

If an issue is identified, the examiner will send a report to the applicant or agent, identifying any third-party marks or references in question. The applicant can submit a response arguing against any objections.

A response to a confusion objection can include a letter of consent from the owner of the third-party mark, but this is not guaranteed to result in a withdrawal of the objection. If the owner of the third-party mark were to assign their registration to the applicant, the common ownership of the marks should resolve any confusion-based objection.

CIPO will conduct its own review of the register to determine if the subject mark is likely to be confusing with third-party marks. A mark owner can also submit a “Notification of Third Party Rights” to alert an examiner to the existence of potentially confusing prior rights. The submissions do not permit evidence or argument, but they are often used to flag prior rights for consideration and can result in objections being raised to the application.

Once an application passes through the examination phase, it is advertised to the public in the Trademarks Journal. At that point, a third-party trade mark owner who believes the mark would be confusing with their own mark can oppose the application on that basis.

Certain basic amendments to a trade mark application will usually be accepted. However, an amendment to substantially change the mark or broaden the scope of the goods and services listed in the application will not be accepted.

A trade mark application can be divided if it is still active. An applicant may consider dividing their application if an objection or opposition is raised against the original application with respect to only some of the listed goods and services.

The process for filing a divisional application is similar to the process for filing an original application. The divisional application should clearly state that it is a divisional application and reference the application number of the original application.

Incorrect information in a trade mark application can result in the refusal of an application before registration or the cancellation or expungement of a registration.

A trade mark application can be refused if it includes any of the prohibitions to registration or does not contain the required information, or if the mark is not inherently distinctive.

Before an application is refused, the applicant will be notified that the examiner has raised an objection and will be given the opportunity to either correct the deficiencies in the application or argue why the objection should be withdrawn. The standard for overcoming an objection will depend on the nature of the objection.

If a final refusal is issued on a trade mark application, Section 56 of the Trademarks Act allows an applicant to appeal the refusal to the Federal Court within two months. An appeal can be based on arguments that CIPO erred in its reasons for refusing the application. It can also include new evidence furnished by the applicant that would have materially affected CIPO’s decision.

Canada participates in the Madrid system. The applicant or registrant of a trade mark in Canada may apply for international registration if the applicant or registrant is a national of Canada, domiciled in Canada, or has a real and effective industrial or commercial establishment in Canada. Part 2 of the Trademarks Regulations sets out the full procedural requirements for applying for an international registration under the Madrid system.

A party may file an opposition to a trade mark application after the application has been advertised in the Trademarks Journal. A statement of opposition must be filed within two months of the advertisement date. However, within this two-month period, a party can request a two-month extension of time.

A party can also request a seven-month “cooling off” period to facilitate settlement discussions or mediation as long as both parties consent. That can occur at any stage of the opposition, up to the filing of the applicant’s written representations. Each party can request one cooling-off period, meaning that up to 14 months of total cooling-off time may be granted. Finally, if the parties are close to finalising a settlement, they can request (on consent) an additional three-month extension of time to complete negotiations.

The Trademarks Act provides for seven legal grounds of opposition:

• the application does not conform with the technical requirements for an application;
• the application was filed in bad faith;
• the trade mark is not registrable;
• the applicant is not the person entitled to registration of the trade mark;
• the trade mark is not distinctive;
• at the filing date, the applicant was not using and did not propose to use the trade mark in Canada in association with the goods or services specified in the application; or
• at the filing date, the applicant was not entitled to use the trade mark in association with the goods or services specified in the application.

The Trademarks Act does not expressly refer to “dilution”. However, a trade mark application can be opposed for a lack of distinctiveness, even if it is not tied to confusion.

Any person may file an opposition as long as they rely on at least one of the grounds of opposition described above. Legal representation is not mandatory in an opposition, although it is highly recommended given the complexity of many proceedings.

An opponent must pay a fee of CAD1,040 to file a statement of opposition and an additional CAD150 per extension of time requested. Legal fees associated with an opposition proceeding can vary significantly based on the complexity of the file and the amount of evidence involved.

The standard opposition procedure in Canada includes the following stages.

• Pleadings – the opponent commences the opposition by filing a statement of opposition. If compliant with legislative requirements, the statement of opposition is forwarded to the applicant, who then serves and files a counterstatement confirming the applicant’s intention to respond.
• Evidence – each party can submit evidence in support of their position, typically in the form of affidavits or statutory declarations. The opponent files first, followed by the applicant, after which the opponent can choose to submit reply evidence. There is no formal documentary discovery, but each party can request an order to cross-examine the other party’s affiants or deponents.
• Argument – after all evidence has been filed and any cross-examinations have been completed, the parties (first the opponent, and then the applicant) can submit written representations outlining their legal arguments on the opposition.

After these stages are complete, either party can request an optional oral hearing. An opposition concludes with a written decision issued by the TMOB.

A decision of the TMOB can be appealed by any party to the opposition. An appeal must be filed with the Federal Court within two months of the date on which the Registrar of Trademarks transmits the decision to the parties. Leave to appeal is not required.

Trade Mark

A summary cancellation proceeding for non-use cannot be commenced until at least three years after the mark was registered. There is no maximum period.

There are no minimum or maximum time limits for when general expungement proceeding can be commenced, except when the proceeding is based on the existence of a confusing third-party trade mark. In that case, the proceeding cannot be brought more than five years after the registration of the subject mark, unless the challenger can establish that the registrant knew of the third-party mark when they first adopted the subject mark. 

Copyright

The Copyright Act does not prescribe any specific time periods for the expungement of a registration. However, see 8.1 Timeframes for Filing Infringement Lawsuits.

Trade Mark

The Trademarks Act provides for a Section 45 summary cancellation proceeding and a Section 57 expungement proceeding.

• A Section 45 summary cancellation proceeding is limited to a situation where a registered trade mark has not been “used” by its owner in association with the goods and services listed in the registration for at least three consecutive years.
• A Section 57 proceeding is broader, allowing the Federal Court to expunge a registration if it does not accurately express or define the existing rights of the registered owner.

Copyright

The Federal Court may, on application of the Registrar of Copyrights or of any interested person, rectify the register:

• to add an entry wrongly omitted;
• to expunge an entry wrongly made or remaining; or
• to correct an error or defect.

Trade Mark

A Section 45 proceeding can be initiated at the request of “any person”, whereas a Section 57 proceeding can be initiated at the request of “any interested person”, which includes anyone whose present or future rights or commercial interests may be affected by the registration. In practice, this is a relatively low threshold.

Sections 45 and 57 both allow the Registrar of Trademarks to commence a cancellation or expungement proceeding on its own initiative.

Copyright

The Registrar of Copyrights or any “interested person” may bring an application to expunge an entry from the register.

Trade Mark

A request for summary cancellation of a trade mark registration can be made by written request to CIPO. An interested person can also apply to the Federal Court to expunge a registration.

Copyright

The Registrar of Copyrights may correct clerical errors in a copyright registration. However, an application to expunge an entry from the register, or to correct an error or defect in the register, must be brought in the Federal Court.

Trade Mark

Partial revocation or cancellation is available in Canada through Sections 45 and 57 proceedings.

Copyright

Partial expungement of a registered copyright is not possible.

Trade Mark

See 6.5 Partial Revocation/Cancellation.

Copyright

The Federal Court may, on application, correct any error or defect in the register. Among other things, such applications have been brought to correct the name of the copyright holder, change the name to a pseudonym, reflect joint ownership of a copyright, and address privacy concerns.

Trade Mark

A Section 57 proceeding may be commenced as part of a counterclaim in an infringement action. In that case, the infringement claim and the expungement counterclaim will be heard and decided together.

Copyright

Proceedings involving copyright infringement and expungement of a registered copyright may be heard together.

Trade Mark

The Trademarks Act does not explicitly refer to fraud, although “bad faith” is both a ground for an opposition of a pending application and for an expungement of a registration. While this ground is only a few years old in Canada, an application that contains fraudulent information would likely constitute a “bad faith” application. An allegation of bad faith is resolved through an opposition proceeding (see 5. Trade Mark Opposition Procedure). If the opposition is successful, the application will be refused; if not, it will be allowed to proceed to registration.

Copyright

There are no special procedures to expunge an entry from the register if the application was filed fraudulently. CIPO does not conduct an independent examination of an application to determine if the applicant is entitled to registration. However, where a person purports to have the authority to apply on behalf of another person, any damages caused by a fraudulent or erroneous assumption of authority may be recovered in court.

Trade Mark

A trade mark registration or pending application can be assigned by agreement. It is highly recommended (although not technically required) to have a written assignment.

Once an assignment is finalised, either party may write to CIPO to record the transfer on the trade marks database. The requesting party must pay a prescribed fee and provide the name and address of the transferee. If the request is being made by the transferee, it must also include satisfactory evidence of the transfer (such as a copy of a written assignment).

Partial transfers of trade mark registrations or pending applications are permitted, but can result in issues related to confusion or non-distinctiveness.

The Trademarks Act does not contain specific provisions related to transfers upon the death of the owner, so an owner who wants to ensure that ownership of a trade mark is passed down to a specific individual upon their death should ensure that there is written documentation in place.

Copyright

The copyright owner may assign copyright, either in whole or in part, and either generally or subject to limitations relating to territory, medium, or sector of the market or other limitations relating to the scope of the assignment. The assignment may be for the whole term, or part of the term, of the copyright. However, an assignment is not valid unless it is in writing and signed by the owner or their authorised agent.

A copyright does not need to have been registered to be assigned, nor does a copyright owner need approval from CIPO to assign a copyright.

Copyright is transmissible upon death. Copyright will pass to the copyright owner’s heirs and can be included in a will. See also 7.5 Transferred Rights and Termination.

Trade Mark

Licensing of a trade mark is permitted under the Trademarks Act. The terms of the licence are largely up to the parties; Canadian trade mark law does not contain any hard rules or restrictions related to the form, scope, exclusivity, or length of the licence.

To overcome the risk that licensing a trade mark will result in that mark no longer being used by or remaining distinctive of the owner, Section 50(1) of the Trademarks Act deems use of a registered trade mark by a licensee to have the same effect as use by the owner, as long as the licence ensures that the owner retains direct or indirect control over the licensee’s use of the mark and the character or quality of the licensee’s goods and services.

It is also recommended that a trade mark licence include a requirement by the licensee to display a public notice confirming that they are using the mark under licence from the licensor, as Section 50(2) of the Trademarks Act further states that such public notice will act as proof of the existence of a licence unless proven otherwise.

Copyright

The copyright owner may grant a licence to a copyright, either in whole or in part, and either generally or subject to limitations relating to territory, medium, or sector of the market or other limitations relating to the scope of the licence. A licence may be exclusive or non-exclusive, proprietary or non-proprietary, revocable or irrevocable, or perpetual or for a limited period of time.

A copyright does not need to have been registered to be licensed, nor is approval from CIPO needed to license a copyright.

Trade Mark

A trade mark that is subject to a pending application can be licensed in the same way as a registered trade mark (see 7.2 Licensing Requirements or Restrictions). There is no distinction in Canada between licensing an applied-for trade mark that is based on use and one that is based on an intent to use.

Copyright

A copyright owner may assign or license a copyright at any time, including while an application for registration is pending. However, it is not possible to assign an application itself while it is pending.

Trade Mark

Because CIPO merely records assignments and licences of trade marks and does not evaluate their validity (see 7.1 Assignment Requirements and Restrictions), recording an assignment or licence is not strictly required to give it legal effect. However, it is highly recommended to have an assignment recorded to ensure that the public is properly notified of the current owner of the trade mark.

Copyright

A copyright assignment or licence does not need to be registered with the Copyright Office. However, it is often prudent to register an assignment or licence of copyright in order to safeguard the assignee’s or licensee’s interests. Any assignment of copyright, and any licence granting an interest in copyright, will be void against a subsequent assignee or licensee for valuable consideration without actual notice of the prior instrument, unless the prior instrument is registered before the subsequent assignee or licensee registers the later instrument under which they claim an interest in the copyright. 

Where the author of a work is also the first owner of copyright in it, any assignment or grant of interest in a copyright (including an exclusive licence) made by the author during their lifetime, other than by will, terminates 25 years after the author dies, provided that certain conditions are met. At the end of that 25-year period, the interest devolves automatically to the author’s legal representatives as part of the author’s estate. The author cannot contract out of reversion to prevent it from happening. Any agreement that purports to deal with the author’s reversionary interest is void.

Reversion does not apply to an assignment of copyright in, or a licence to publish a work as part of, a collective work.

A trade mark or copyright can be given or assigned as security in Canada. A security interest in a registered trade mark or copyright may be recorded by filing the agreement with CIPO and paying the prescribed filing fees.

Under the Copyright Act, the limitation period is three years from the date of the event, or the date the plaintiff first knew or reasonably could have known about the event, if they could not have reasonably known about it at the time.

There are no express limitation periods in the Trademarks Act. Section 39 of the Federal Courts Act provides that, where the cause of action arose in a single province, the limitation period of that province applies. In most provinces, this is two or three years. Where the cause of action arose in multiple provinces, the federal limitation period – six years – applies.

For both trade mark and copyright infringement, each infringement constitutes a separate cause of action. Therefore, if there is ongoing infringement, even if some of the conduct occurred outside the limitation period, a plaintiff can still pursue claims for the infringement that occurred within the limitation period.

Equitable defences of laches, estoppel, and acquiescence are available in trade mark cases. In copyright cases, a plaintiff that has acquiesced to infringement or encouraged it, or has unreasonably delayed in pursuing legal remedies, may be unable to obtain an injunction or other equitable remedies.

Trade Marks

A claim for infringement of a registered trade mark is available where a third party, without authorisation, either uses a trade mark that is identical to a registered trade mark on the same goods and services as registered, or uses a trade mark or trade name that is confusing with a registered trade mark. A defendant may also be held liable for knowingly and deliberately aiding and abetting infringement.

Section 7(b) of the Trademarks Act, the passing off provision, provides that no person shall direct public attention to their goods, services, or business in such a way as to cause or be likely to cause confusion in Canada, between their goods, services, or business and the goods, services, or business of another. This cause of action is available in respect of both registered and unregistered trade marks. The tort of passing off is also available at common law and under the Civil Code in Québec.

Section 22(1) of the Trademarks Act, the dilution provision, prevents anyone from using a registered trade mark “in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto”.

To address cybersquatting, the Canadian Internet Registration Authority (CIRA) has a Domain Name Dispute Resolution Policy (CDRP), which is available with respect to disputes involving the bad faith registration of .ca domain names.

Copyright

A claim for copyright infringement is available where a person commits an act, without the consent of the copyright owner, that falls within the owner’s exclusive rights (see 3.4 Copyright Rights). A claim for infringement is also available where a person authorises – sanctions, approves, and countenances – an act that falls within the owner’s exclusive rights. Infringement is a matter of strict liability; it does not require that the infringer intended to infringe.

Secondary infringement occurs when a person does certain things with infringing materials, such as dealing in unauthorised copies. It requires that the secondary infringer had knowledge or constructive knowledge that they were dealing in infringing materials. There may also be liability for copyright infringement for providing a service via the internet or another digital network primarily for the purpose of enabling acts of copyright infringement, if an actual infringement of copyright occurs by means of the internet or another digital network as a result of the use of that service.

There are also provisions in the Copyright Act addressing liability for circumventing a technological protection measure (TPM), offering or providing services primarily for the purpose of circumventing a TPM, and manufacturing, importing, distributing, offering for sale or rental or providing any technology, device, or component designed or produced primarily for the purposes of circumventing a TPM. Other provisions address liability for removing electronic rights management information from a work, sound recording, or performer’s performance.

Moral rights infringement is addressed in 3.4 Copyright Rights.

Trade Marks

Infringement under Section 19 requires “use” of the impugned mark contrary to the Act.

With respect to Section 20, whether a mark is confusing is to be determined with reference to the non-exhaustive factors set out in the Act. All surrounding circumstances should be considered, including, for example, evidence of actual confusion among consumers or evidence of similar third-party trade marks.

Copyright

The right to produce or reproduce a work is infringed where a person produces, reproduces, performs in public, or publishes a work, or a substantial part of it, without the consent of the copyright owner.

Copyright infringement requires access and similarity: that is, the plaintiff must prove that the defendant had access to the protected work and that there is sufficient similarity between the protected and infringing works to establish infringement. Where the alleged infringement is non-literal, or some but not all of a work or other subject matter has been used, a court will conduct a holistic comparison of the material at issue to determine whether a substantial part of the protected material has been used. Substantiality is primarily a question of quality, not quantity.

Trade Marks

In most cases, only the owner of a registered trade mark can bring proceedings under Sections 19 and 20 of the Act. In certain circumstances, a licensee can institute proceedings for infringement.

Third parties may be joined as plaintiffs or defendants in a proceeding where appropriate.

Copyright

Either the owner of copyright or anyone deriving any right, title or interest by assignment or grant in writing from the owner, including an exclusive licensee, can bring an action for copyright infringement. In most cases, if proceedings are taken by a person other than the copyright owner, the copyright owner must also be made a party to those proceedings.

A moral rights claim can only be brought by the author of a work or the performer of a performance.

Class actions for copyright and trade mark infringement are permitted in Canada as long as certain requirements are met. In the Federal Court, the following criteria must be satisfied:

• the pleadings disclose a reasonable cause of action;
• there is an identifiable class of two or more persons;
• the claims of the class members raise common questions of law or fact;
• a class proceeding is the preferable procedure; and
• there is an appropriate representative plaintiff.

There are no prerequisites to filing a trade mark or copyright lawsuit. Although a demand letter is often sent before initiating proceedings, it is not required.

If a party sends a frivolous demand letter to a party’s customers or makes unfounded complaints to third-party retailers, it may in some cases be grounds for an action in tort. Under the Trademarks Act, Section 7(a) prohibits making false and misleading allegations of infringement. Generally, though, a demand letter sent only to the alleged infringer will not give rise to these risks.

Trade Marks

The Federal Court and provincial superior courts have concurrent jurisdiction to hear any action brought under the Trademarks Act, with the exception of certain criminal provisions. A pure common law claim for the tort of passing off must be brought in a provincial superior court.

Copyright

The Federal Court and provincial superior courts have concurrent jurisdiction to hear any action brought under the Copyright Act. However, the Federal Court’s jurisdiction is generally limited to deciding disputes and awarding remedies under the Copyright Act. Where a claim involves contract or tort matters in addition to a claim for copyright infringement, it usually must be brought in a provincial court, which has general jurisdiction over those matters.

General

The costs that arise prior to initiating an infringement lawsuit vary, but often include the costs of preparing demand letters, conducting investigations, gathering evidence, and conducting commercial negotiations or settlement discussions.

An individual party to a proceeding does not need to be represented by a lawyer. A corporation, partnership or unincorporated association, however, must be represented by a lawyer in the Federal Court, unless leave is granted.

There is no restriction on the ability of a foreign copyright owner to pursue a claim for copyright infringement in Canada. Similarly, a foreign trade mark owner may sue for infringement or passing-off claim in Canada, subject to the above-noted requirements that, for a claim under Section 19 or 20 claims, the mark must be registered in Canada. However, a foreign owner will often be required to pay security for costs if requested by a defendant. Security for costs is available where, among other things, the plaintiff is not ordinarily resident in Canada or there is reason to believe that the plaintiff would have insufficient assets in Canada available to pay the costs of the defendant if ordered to do so.

The Federal Court of Appeal has jurisdiction to hear appeals from decisions of the Federal Court, and provincial courts of appeal have jurisdiction to hear appeals from provincial court decisions. The Supreme Court of Canada may grant leave to appeal from any of these appellate courts.

There are no special requirements for pleadings in copyright or trade mark proceedings, but they must disclose a reasonable cause of action and contain a concise statement of the material facts on which the party relies.

A defendant can bring a counterclaim in the same document as its statement of defence.

A plaintiff can file a reply and, where applicable, a defence to counterclaim. Once a reply has been filed, or if no reply is filed, the pleadings are closed. The pleadings may, however, be amended with consent or leave of the court.

Declaratory relief may be available to a copyright or trade mark owner if the owner can show that its legal interest or right has been placed in jeopardy or grave uncertainty. It will not be granted, however, in the absence of necessity and practical utility, including where reasons for judgment will suffice. A declaration of non-infringement is an available remedy but is less common in Canada than in some other jurisdictions.

In either case, a defendant can bring a motion seeking to have the plaintiff pay for security for costs.

A claim can be filed in provincial small claims courts where the quantum of damages sought is below a certain amount. In Ontario, claims are limited to CAD35,000 or less. However, certain remedies may not be available in small claims courts, including various types of equitable relief.

The courts are not bound by the decisions of the Copyright Board, the TMOB, or CIPO. However, the Federal Court may give deference to them.

Traditional civil causes of action and remedies for copyright and trade mark infringement are equally applicable in the context of counterfeiting and piracy.

The Copyright Act and Trademarks Act also contain criminal provisions for certain dealings with infringing copies, including import and export and sale, distribution, and exhibition, and for certain dealings with goods, labels, or packaging associated with infringing marks. There are also relevant provisions in the Criminal Code, which are discussed in 9.6 Infringement as an Administrative or Criminal Offence.

There are no special procedural provisions or specialised courts for copyright or trade mark proceedings in Canada, though the Federal Court is considered to have expertise in such matters. In practical terms, the Copyright Board decides many copyright issues in the context of royalty proceedings. However, as noted, its decisions, while sometimes persuasive, are not binding on the courts.

Intellectual property cases before the Federal Court are determined by judges alone and the selection of judges cannot be influenced by the parties. While jury trials are available in some provinces, they are very rare in civil matters.

Trade Marks

Only registered trade marks can take advantage of the infringement and depreciation of goodwill provisions in Sections 19, 20, and 22 of the Act. See also 4.1 Trade Mark Registration.

Trade mark registrations are presumed to be valid unless the defendant can prove otherwise. No such presumption exists for common law marks.

Copyright

There is no requirement that copyright be registered in order to bring an infringement action. A certificate of registration is rebuttable evidence that copyright subsists in a work or other subject-matter and that the person registered is the owner of the copyright. Registrations of assignments and licences raise similar rebuttable presumptions.

The parties to an action have the right to full documentary and oral discovery. Parties to proceedings brought by way of application do not have a right to discovery but are generally entitled to cross-examine on any evidence filed.

In some circumstances, a plaintiff may seek an ex parte Anton Piller order (a civil search warrant), which allows the plaintiff to search the defendant’s premises and seize relevant documents and items. Similarly, a Norwich order can be obtained to allow pre-trial examination of, and obtain information from, a third party.

Examination of non-parties during an action is also permitted, with leave.

Expert evidence may be adduced in trade mark and copyright infringement actions. To be admissible, expert evidence must be relevant and necessary to assist the trier of fact, must be provided by a qualified expert, and must not be subject to an exclusionary rule. An expert has an overriding duty to assist the court impartially. That overrides any duty to the party who retains the expert.

The costs of litigating copyright and trade mark infringement actions can be substantial. They vary significantly depending on the issues and facts in a given case, the co-operation among counsel, and interlocutory motions. Although the successful party to litigation in Canada is generally entitled to an award of costs, the amount awarded is generally considerably less than the costs actually incurred.

A rights-holder may ask law enforcement to take steps under the Copyright Act, Trademarks Act or Criminal Code. However, the decision to take action, and the conduct of any ensuing proceeding, is within the discretion of law enforcement and the Crown.

The Criminal Code also contains certain relevant provisions, including offences for forgery of trade marks and trade descriptions and recording in a movie theatre a performance of a cinematographic work or its soundtrack.

See also 8.12 Counterfeiting and Bootlegging.

There are a number of available defences, including:

• invalidity of the registered trade marks asserted by the plaintiffs;
• concurrent use of the impugned trade mark or trade name prior to the filing of the application;
• expiration of an applicable limitation period;
• lack of standing to bring the claim;
• available exceptions to infringement; and
• a valid trade mark registration owned by the defendant in relation to the impugned mark.

Equitable defences including laches, estoppel, and acquiescence may also be available.

Fair Dealing

In certain situations, fair dealing allows a user to deal with a copyright-protected work or other subject matter without permission from or payment to the copyright owner. To claim fair dealing, a user must satisfy the two-step test set out by the Supreme Court of Canada.

• First, the dealing must be for one or more of the allowable purposes set out in the Copyright Act, namely research, private study, education, parody, satire, criticism, review, or news reporting. The Supreme Court has directed that the allowable purposes be given a “large and liberal interpretation”, with the “analytical heavy-hitting” reserved for the second step.
• Second, the dealing must also be considered “fair”, with at least six non-exhaustive factors available to aid in the determination: the purpose of the dealing, the character of the dealing, the amount of the dealing, alternatives to the dealing, the nature of the work, and effect of the dealing on the work.

Further, if the dealing is for the purpose of criticism, review, or news reporting, the source of the work – and, if given in the source, the name of the author, performer, maker, or broadcaster – must be given.

Satire and Parody

“Satire” and “parody” are not defined in the Copyright Act. The Federal Court has observed that satire includes elements of ridicule, irony, or sarcasm, and that parody should be understood as having two basic elements: the evocation of an existing work while exhibiting noticeable differences; and the expression of mockery or humour. Parody does not, however, require that the source of the parodied work be identified or that the expression of mockery or humour be directed at the exact thing being parodied.

Freedom of Expression

The Copyright Act does not recognise an express exception based on freedom of expression. However, courts have recognised that a dealing for the purpose of criticism or review (and, presumably parody or satire) may be fair even if the criticism is strongly expressed.

It is not an infringement of copyright for an individual to reproduce a work or other subject-matter, or any substantial part of it, if:

• the copy from which the reproduction is made is not an infringing copy;
• the individual legally obtained the copy from which the reproduction is made, other than by borrowing it or renting it, and owns or is authorised to use the medium or device on which it is reproduced;
• the individual did not circumvent, or cause to be circumvented, a technological protection measure;
• the individual does not give the reproduction away; and
• the reproduction is used only for the individual’s private purposes. 

This exception does not apply if the reproduction is of a musical work or a performer’s performance embodied in a sound recording, or a sound recording in which a musical work or performer’s performance is embodied, and is made on an “audio recording medium” as defined in the Copyright Act. In that case, the reproduction does not infringe copyright, but is subject to a right of remuneration in the form of private copying levies set by the Copyright Board, paid by manufacturers and importers of blank audio recording media, and distributed by the Canadian Private Copying Collective.

Copyright Infringement

Under the Copyright Act, an intermediary who simply provides the means of telecommunication necessary for another person to communicate a work or other subject matter, or digital memory in which another person stores the work or subject matter, does not infringe copyright by virtue of those acts alone. The intermediary may be liable, however, if it does or fails to do certain other things contemplated by the Act, including failing to comply with electronic directions related to the caching or other dealings with the work or subject matter during its communication, or if it is aware of a court decision that the work or subject matter that is stored infringes copyright.

An intermediary who provides otherwise non-infringing network or hosting services must take certain steps in relation to a notice of claimed infringement delivered by a copyright owner in prescribed form. However, while the intermediary’s failure to do so may result in statutory damages in a prescribed amount, it will not lead to liability for copyright infringement.

Trade Marks

The Trademarks Act does not deal specifically with the exhaustion of trade mark rights. Once a product bearing an owner’s trade mark has been sold to the first buyer, the owner is generally unable to prevent the subsequent sale of the goods by that buyer.

The principle of international exhaustion applies in Canada. Where a trade mark owner sells or permits to be sold its goods bearing its trade mark, even outside Canada, its Canadian trade marks will not suffice to prevent the parallel importation of those (authentic) goods or their sale in Canada. Trade mark owners can nevertheless seek to restrain these actions on other grounds.

Copyright

The Copyright Act recognises a limited distribution right for physical goods: in the case of a work that is in the form of a tangible object, copyright includes the right to sell or otherwise transfer ownership of the object, or to authorise others to do so, provided that ownership has never previously been transferred in or outside Canada with the authorisation of the copyright owner. Once ownership is transferred with the consent of the owner, that right is exhausted.

There is no corresponding distribution right, or principle of exhaustion, for works in digital form. 

The Copyright Act includes certain exceptions for libraries, archives, and museums.

Among other things, it is not an infringement of copyright for a library, archive, or museum, or a person acting under its authority, to make, for the maintenance of its permanent collection, a copy of a work or other subject matter, whether published or unpublished, in its permanent collection in certain circumstances. Subject to certain conditions, it is also not an infringement of copyright for an archive to make a copy of an unpublished work that is deposited in the archive for any person requesting to use the copy for research or private study and to provide the person with that copy.

A permanent injunction is generally granted when the plaintiff is successful in an action for copyright or trade mark infringement.

Interim and interlocutory injunctions, while rare, are nevertheless available in trade mark and copyright cases. To obtain an interlocutory injunction, a party must generally establish that:

• there is a serious issue to be tried,
• the requesting party would suffer irreparable harm if the injunction is not granted, and
• the balance of convenience favours granting the injunction.

Generally, a party seeking an interlocutory injunction must undertake to abide by any order concerning damages caused by the granting or extension of the injunction.

The Copyright Act also provides for a “wide injunction”, which can restrain the defendant from infringing copyright in the plaintiff’s existing or future works. The Trademarks Act does not include an analogous provision, but the courts have broad discretion to grant injunctive relief.

Delivery up and destruction of infringing goods and packaging and labelling are equitable remedies available to a plaintiff and are contemplated by both the Trademarks Act and the Copyright Act.

The courts can also tailor injunctive relief to the specific circumstances of a case. In copyright and trade mark cases, the courts have granted relief in the form of site-blocking and de-indexing orders, rolling injunctions, and third-party injunctions. A Mareva injunction may also be available to freeze a party’s assets and prevent their removal from a jurisdiction if there is genuine risk that the defendant will remove or dispose of its assets before the final outcome of the proceeding.

In trade mark matters, a successful plaintiff is entitled to recovery of damages or profits. In copyright matters, a successful plaintiff is entitled to recovery of both damages and profits or, at its election, statutory damages. The amount of statutory damages available depends on whether the infringement was for commercial purposes (CAD500 to CAD20,000 per work infringed) or non-commercial purposes (CAD100 to CAD5,000 for all works at issue in the proceeding), with the award itself varying depending on various factors.

There are no statutory damages available in trade mark matters. However, in matters involving counterfeit goods, the courts have followed a precedent of nominal damages depending on the nature of the activity.

Punitive and exemplary damages may also be awarded in both copyright and trade mark cases.

In Canada, a successful litigant is usually entitled to an award of costs. The amount awarded, however, is entirely within the discretion of the court.

In the Federal Court, the amount of costs awarded is presumptively calculated based on a tariff, which generally results in a very modest award. In more complex cases, the Federal Court has begun to award lump sum costs, which can range closer to 25–50% of a party’s legal fees. In exceptional cases, the court may award elevated (solicitor-client or full indemnity) costs.

Ex parte relief is available only in limited, exceptional circumstances. If granted, ex parte relief typically applies only for a short time and will be subject to review with the opposing party’s participation.

An owner of registered trade marks and registered or unregistered copyrights can file a Request for Assistance with Canadian Border Services Agency (CBSA) to prevent the importation of counterfeit and pirated goods, and the CBSA can detain goods that it suspects to be counterfeit or pirated under such provisions. The Request for Assistance must be renewed every two years.

CBSA detention of parallel imports is not available.

Parties can engage in meditation and settle copyright or trade mark litigation at any time up to and including trial.

In Federal Court proceedings, parties can request that a Case Management Judge be assigned to manage the proceedings. A Case Management Judge can assist with narrowing and resolving issues in the litigation. Court-facilitated mediation is also available.

Certain provincial courts also have mandatory mediation requirements in their rules of procedure.

Copyright and trade mark cases are often good candidates for arbitration and mediation.

The Federal Court can order that a proceeding or issue be referred to a dispute resolution conference. The dispute resolution conference can take the form of mediation, a neutral evaluation of the proceedings, or a mini-trial.

Legislation provides for the consolidation of pending proceedings before the same court, including in Federal Court and various provincial courts. It is possible, however, to pursue related infringement and validity proceedings concurrently in different courts.

Foreign parallel proceedings are not a basis to stay trade mark or copyright proceedings in Canada.

Final decisions in trade mark and copyright cases can be appealed. Federal Court decisions may be appealed as of right to the Federal Court of Appeal. Provincial superior court decisions may be appealed to the appeal courts of that province. Further appeals to the Supreme Court of Canada are available but require leave, which is only granted in a small minority of cases.

In the Federal Court, an appeal must be brought within ten days after the pronouncement of the judgment, in the case of an interlocutory order, and within 30 days for all other matters. Once the appeal has been heard, it usually takes three to six months for the court to render a decision.

Timelines for appeals in other jurisdictions vary from province to province.

There are no special appellate procedures for copyright and trade mark proceedings.

The usual Canadian appellate standard of review applies to copyright and trade mark cases. Questions of law (where extricable) are reviewed on a correctness standard, while questions of fact, and of mixed fact and law, are reviewed on a standard of palpable and overriding error.

The common law in Canada has developed in recent years to recognise various actionable torts for the misuse of a person’s name, image, and likeness, including the tort of “appropriation of personality”. Some provinces also have legislation that prohibits the unauthorised use of a person’s name or likeness.

In certain circumstances, a celebrity may also be able to secure a trade mark registration for their name, if it can be demonstrated that the name has acquired distinctiveness as a trade mark.

See the discussion of passing off in 8.2 Legal Claims for Infringement Lawsuits and Their Standards.

Under the Competition Act, where a person has used the rights and privileges conferred by a trade mark or copyright to unduly restrain trade or commerce in relation to an article or commodity, among other acts, the Federal Court may make several orders, including that the registration of a trade mark be expunged or that any agreement or licence relating to that use be declared void, in whole or in part.

Since 2022, CIPO has been using AI to assist in the initial examination of trade mark applications.

Most observers agree that, because of the human authorship requirement, there is no copyright protection available for purely AI-generated works. However, although various government consultations are underway, there has been no Canadian case law to date involving copyright and AI. See also 3.3 Copyright Authorship.

Canada’s trade mark system does not have a specific process for identifying and taking down infringing trade marks from internet web pages.

Canada has a “notice and notice” copyright regime that provides a specific process for notifying ISPs and users of potential copyright infringement on websites. Under the regime, a copyright owner can send a notice to the ISP hosting a website with infringing content. If the notice meets the statutory requirements, the notice is then forwarded to the relevant user. Notices may not include offers to settle or demands for payment or personal information. The receipt of a notice does not obligate either the ISP or the user to investigate or take down the allegedly infringing content.

See 10.4 Intermediaries for more information on when intermediaries may be liable for copyright infringement.

The Trademarks Act largely applies equally to all types of trade mark owners and users, though an ongoing development that may affect businesses in Canada is Quebec’s recent amendments to the French-language laws in its Charter of the French Language.