CANADA Law and Practice Contributed by: Casey Chisick, Steven Kennedy, Karen MacDonald, Jessica Zagar, Dian Howard and Steven Henderson, Cassels Brock & Blackwell LLP
6. Assignments and Licensing 6.1 Assignment Requirements and Restrictions Trade Mark A trade mark registration or pending application can be assigned by agreement. It is highly rec - ommended (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 sat - isfactory 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-dis - tinctiveness. 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 limita - tions 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 regis - tered to be assigned, nor does a copyright owner need approval from CIPO to assign a copyright. Copyright is transmissible upon death. Copy - right will pass to the copyright owner’s heirs and can be included in a will. Where the author of a work is also the first own - er 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 inter - est 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. In certain circumstances, reversion does not apply. 6.2 Licensing Requirements or Restrictions 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 restric - tions related to the form, scope, exclusivity, or length of the licence. Additionally, a trade mark that is subject to a pending application can be licensed in the same way as a registered trade mark. Canada makes no distinction between licensing an applied-for trade mark that is based on use and one that is based on an intent to use. To overcome the risk that licensing a trade mark will result in that mark no longer being used by or
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