CANADA Law and Practice Contributed by: Casey Chisick, Steven Kennedy, Karen MacDonald, Jessica Zagar, Dian Howard and Steven Henderson, Cassels Brock & Blackwell LLP
remaining distinctive of the owner, Section 50(1) of the Trademarks Act deems use of a regis - tered 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 exist - ence 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 ter - ritory, medium, or sector of the market or other limitations relating to the scope of the licence. A licence may be exclusive or non-exclusive, pro - prietary or non-proprietary, revocable or irrevo - cable, or perpetual or for a limited time. Further, a copyright owner may assign or license a copy - right at any time, including while an application for registration is pending. However, it is not possible to assign the pending application itself. A copyright does not need to have been regis - tered to be licensed, nor is approval from CIPO needed to license a copyright. 6.3 Registration or Recording of an Assignment or Licence Trade Mark Because CIPO merely records assignments and licences of trade marks and does not evaluate their validity (see 6.1 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. How - ever, it is often prudent to register an assignment or licence of copyright in order to safeguard the assignee’s or licensee’s interests. Any assign - ment 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 regis - tered before the subsequent assignee or licen - see registers the later instrument under which they claim an interest in the copyright. 7. Initiating Trade Mark and Copyright Lawsuits 7.1 Timeframes for Filing Infringement Lawsuits 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 prov - inces, this is two or three years. Where the cause of action arose in multiple provinces, the federal limitation period – six years – applies. 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.
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