CANADA Law and Practice Contributed by: Casey Chisick, Steven Kennedy, Karen MacDonald, Jessica Zagar, Dian Howard and Steven Henderson, Cassels Brock & Blackwell LLP
All rights granted to a registered owner will per - sist for the term of that trade mark’s registration. In addition, the Trademarks Act allows for own - ers to assign or license their trade marks under certain conditions. See also 6.1 Assignment Requirements and Restrictions , 6.2 Licensing Requirement or Restrictions , and 7.2 Legal Claims for Infringe- ment Lawsuits and Their Standards . 2.4 Use in Commerce A trade mark is “used”: • for goods, if at the time the goods are trans - ferred, 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 benefit from is not sufficient. “Use” of a trade mark must be for the purpose of distinguishing – or must actually distinguish – the owner’s goods and services from those of others. 2.5 Notices and Symbols 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 use of these symbols can signify to the public that the owner is asserting their rights in their trade marks, which can also
assist in dissuading others from using a confus - ingly similar trade mark. 2.6 Related Rights 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 copy - right protection if it satisfies the requirements under each statute. 3. Copyright Ownership, Protection and Rights 3.1 Types of Copyrightable Works 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; 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 repro - duced in a quantity of more than 50. Such a design may be protected instead if registered under the Industrial Design Act. 3.2 Essential Elements of Copyright Protection 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”. • sound recordings; and • communication signals.
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