Acknowledgements
About the Editor
Chapter 1: INTRODUCTION
Stuart C. McCormack
§ 1.01 General Description of Intellectual Property
[1] Introduction
[2] The Subject of Intellectual Property
[3] The Significance of Intellectual Property
§ 1.02 Sources of Law
[1] General
[2] Reception
[3] Persuasive Authority
§ 1.03 Constitutional Framework
[1] General
[2] The Nature of Legislative Power regarding
Patents and Copyrights
[a] Patents
[b] Copyright
[3] The Nature of Legislative Power regarding
Trade-marks, Unfair Competition and
Industrial Designs
[a] Trade-marks
[b] Unfair Competition
[i] Subsection 7(e)
[ii] Subsection 7(b)
[c] Industrial Designs
[4] The Nature of Legislative Power regarding
Confidential Information and Personality Rights
[a] Confidential Information
[b] Personality Rights
§ 1.04 Interfaces between Intellectual Property Systems
[1] Doctrines of Election and Exclusivity
[2] Problem Areas
[a] Designs
[i] Industrial Design and Copyright
[aa] Works Created before June 8, 1988
[bb] Works Created after June 8, 1988
[ii] Industrial Design and Patent
[iii] Industrial Design and Trade-mark
[iv] Copyright and Patent
[b] Computer Programs
[i] Patent
[ii] Copyright
[iii] Trade Secrets
[c] Marketing and Merchandising
[i] Patent and Trade-mark
[ii] Copyright and Trade-mark
[iii] Trade-mark and Unfair Competition
[aa] False or Misleading Statements
[bb] Passing Off: Confusion as to Wares,
Services or Business
[cc] Passing Off: Substitution
[dd] False Description
[ee] Acts Contrary to Honest Usage
[iv] Protection of Personality and Intellectual
Property Rights
Chapter 2: TRADE-MARKS
Nicole Brousseau and Stuart C. McCormack
§ 2.01 Introduction
§ 2.02 Historical Development of Trade-Marks Law
[1] Background
[a] Guild Marks
[b] Proprietary Marks
[c] Clothiers’ Seals
[d] Printers’ and Publishers’ Marks
[e] Cutlers’ Marks
[2] Legislative History
[3] Newfoundland Trade-marks
[4] International Conventions
[5] Other Statutes Affecting Trade-marks
[a] Precious Metals Marking Act
[b] Timber Marketing Act
[c] Tobacco Act
[d] Olympic and Paralympic Marks Act
§ 2.03 Requirements for Protection
[1] Definition of Trade-mark
[2] Types of Trade-marks and Related Concepts
[a] Traditional Trade-mark
[b] Service Mark
[c] Certification Mark
[d] Export Mark
[e] Proposed Trade-mark
[f] Trade-Name
[g] Geographical Indications
[3] Subject Matter
[a] Word Mark
[b] Design Mark
[c] Distinguishing Guise
[d] Prohibited Marks
[e] Section 9 Prohibitions
[f] Section 10 Prohibitions
[4] Fraudulent and Misleading Marks
[5] Distinctiveness
§ 2.04 Acquisition of Rights
[1] Person Entitled to Secure Registration
[a] Adoption and Use
[b] Making Known
[c] Registration and Use-Abroad
[d] Proposed Use
[e] Certification Marks
[2] Registrable Trade-marks
[a] Prima facie Non-Distinctive Marks
[b] Names of Wares or Services
[c] Marks Not without Distinctive Character
[d] Distinguishing Guises
[e] Confusing with Registered Trade-marks
§ 2.05 Confusing Trade-marks and Trade-names
[1] General
[2] Statutory Criteria
[a] Inherent Distinctiveness
[b] Length of Time in Use
[c] Nature of the Wares, Services or Business
[d] Nature of Trade
[e] Degree of Resemblance between the
Trade-marks or Trade-Names in Appearance
or Sound or in the Ideas Suggested by Them
§ 2.06 The Registration Process
[1] Overview
[a] Administrative Responsibility
[b] Fee Structure
[2] Application
[a] Applicant
[b] Form of Application
[c] Disclaimer
[d] Effect of Foreign Application or Registration
[3] Examination
[a] As to Form
[b] As to Substance
[4] Opposition Proceedings
[a] Advertisement for Opposition Purposes
[b] Grounds of Opposition
[c] Procedure
[5] Allowance and Registration
[6] Certificate of Registration
[a] Term and Renewal
[b] Content
[c] Certificate as Evidence
[d] Amendment
[7] Expungement
[a] Expungement by the Registrar
[b] Expungement by the Federal Court
[8] Appeal from Registrar’s Decisions
[a] Which Decisions May Be Appealed
[b] Procedure
[c] Scope of Appeal
§ 2.07 Trade-mark Rights
[1] Exclusivity of Use
[a] Territorial Restriction
[b] Concurrent Use by Another
[c] Exhaustion of Rights
[2] Protection of Goodwill
[3] Parallel Importation
[4] Warranty of Lawful Use
§ 2.08 Transfer of Trade-mark Rights
[1] Assignment
[2] Licensing
[a] General Considerations
Chapter 3: COPYRIGHT
D. Jeffrey Brown and Marisia Campbell
§ 3.01 Introduction
§ 3.02 Copyright and the Copyright Act
§ 3.03 Who May Obtain Copyright Protection
in Canada
§ 3.04 Subject Matter of Copyright
[1] Originality
[2] Literary Work
[a] Generally
[b] Computer Programs
[c] Literary Merit
[3] Dramatic Work
[4] Musical Works
[5] Artistic Works
[a] Copyright in Works Created on or
after June 8, 1988
[b] Copyright in Works Created prior to
June 8, 1988
[6] Fixation
[7] Neighbouring Rights: Performer’s Performances,
Sound Recordings and Communications Signals
[a] Generally
[b] Sound Recordings
[c] Performer’s Rights
[d] Broadcasting Rights
§ 3.05 Term of Copyright
§ 3.06 Ownership of Copyright
[1] General Rule
[2] Exceptions to the General Rule
[a] Work Made in the Course of Employment
[b] Works for Newspapers
[c] Engraving, Photograph or Portrait
[d] Corporations
[3] Performer’s Performances, Sound Recordings and
Broadcaster’s Communications Signals
§ 3.07 Assignment and Licence
[1] Generally
[2] Assignment by Operation of Law
§ 3.08 Registration of Copyright
§ 3.09 Infringement of Copyright, Moral Rights
and Neighbouring Rights
[1] Infringement of Copyright
[a] Direct Infringement
[b] Authorizing Infringement
[c] Indirect Infringement
[d] Infringement of Particular Types of Work
[2] Infringement of Moral Rights
[3] Infringement of Neighbouring Rights
§ 3.10 Defences to Infringement
§ 3.11 Remedies for Infringement
[1] Time Limit for Action
[2] Who May Bring Action
[3] Criminal Remedies
[4] Civil Remedies
§ 3.12 International Conventions and Proclamations
§ 3.13 Compulsory Licensing and Copyright
Collectives
§ 3.14 Private Copying
§ 3.15 Ephemeral Recordings
§ 3.16 Interface between Copyright and
Competition Law
Chapter 4: PATENTS
Eugene F. Derényi
§ 4.01 Introduction
[1] Historical Perspective
[2] Conventions and Protocols
§ 4.02 Duration
[1] Maintenance Fees
§ 4.03 Applicant
§ 4.04 Requirements for Patentability
[1] Inventiveness
[a] Applications Filed prior to October 1, 1996
[b] Applications Filed after October 1, 1996
[i] Claim Date
[ii] Statutory Requirement for Inventiveness
[2] Novelty
[a] Old Act and Transitional Patents
[i] Co-pending Applications
[ii] Public Disclosure
[iii] Prior Use
[b] New Act Patents
[3] Utility
§ 4.05 Prima Facie Validity
[1] Grounds for Attacking the Validity of One or
More Claims (Old Act)
[a] Statutory Grounds
[i] Prior Invention and Disclosure
[ii] Prior Use
[iii] Fraud
[b] Non-Statutory Grounds
[2] Grounds for Attacking the Validity of One or
More Claims (New Act)
[a] New Act, October 1, 1989–October 1, 1996
[i] Prior Invention and Disclosure
[ii] Prior Disclosure by Inventor
[b] New Act, Post-October 1, 1996
[i] Prior Disclosure by Inventor
[ii] Prior Disclosure by Another Person
[iii] Obviousness
[c] Non-Statutory Grounds
[3] Incorrect Maintenance Fee Payment
[4] Insufficiency of Disclosure
§ 4.06 Patentable Subject Matter
[1] General
[2] Inventions versus Discoveries
[3] Methods of Medical Treatment
[4] Computer Software
[a] Business Methods
[5] Biotechnology
[a] Biological Sequences and Other
Non-Living Matter
[b] Living Matter
[i] Lower Life Forms
[ii] Higher Life Forms
[aa] Plants
[bb] Animals
[6] New Use–Known Compound
[7] Selection of Alternative Materials
[8] Combination versus Aggregation
§ 4.07 Interpreting the Patent
[1] General
[2] The Specification
[3] “File Wrapper” Evidence
§ 4.08 Infringement 350
[1] The Concept of Infringement
[2] Test for Infringement 352
[3] Doctrine of Equivalence 353
[4] Inducement (Contributory Infringement
[5] Parties to an Infringement Action
[a] General
[b] Liability of Directors
[6] Defenses to Infringement
[a] General
[b] Bona Fide Experimentation
[c] Acquisition of Intervening Rights
[d] Acquiescence and Laches
§ 4.09 Rights Accorded under a Patent
[1] General
[2] Compulsory Licensing
[a] Government Use of Patented Inventions
[i] General
[ii] Atomic Energy
[iii] Instruments and Munitions of War
[b] Abuse of Patent Rights
§ 4.10 Patented Medicines
[1] Compulsory Licensing
[2] Patented Medicines (Notice of Compliance)
Regulations
[3] The Patented Medicine Prices Review Board
[4] The Patented Medicine Price Review Process
[a] Disclosure Generally
[b] Disclosure Where Price Increases Exceed
Increase in the Consumer Price Index
[c] Disclosure Where Board Determines
That Excessive Pricing Is Taking Place
[d] Penalties and Powers of the Board
[5] Monitoring of Pharmaceutical Trends
and Investment
§ 4.11 The Competition Act
§ 4.12 Integrated Circuit Topography Act
[1] Introduction
[2] What Is Protected: The Topography
[3] Who May Be Protected
[4] The Nature of the Protection Granted
[5] Infringement and Statutory Exceptions Thereto
[a] Reverse Engineering
[b] Fair Use
[c] Innocent Infringement
[d] Exhaustion of Rights
Chapter 5: INDUSTRIAL DESIGN LAW
Stuart C. McCormack
§ 5.01 Introduction
§ 5.02 Historical Development of Industrial Design Law
[1] Background
[2] Legislative History
§ 5.03 Registrability
[1] Subject Matter
[a] Definition
[b] Shape, Configuration, Pattern or Ornament
[c] Applied to an Article
[d] Appeal to the Eye
[i] Visibility
[ii] Aesthetic Quality
[e] Not a Method or Principle of Manufacture or
Construction
[f] Not Dictated Solely by Utilitarian Function
[g] Colour
[h] Reading Matter
[2] Originality
[a] Novelty and Originality
[b] Test
[i] Originality Is in Application
[ii] Originality Must Be Substantial
[iii] Originality Is a Question of Fact
[c] Date of Test
[3] Time Constraint
[a] Limitation
[b] Publication
[i] Disclosure in Confidence
[ii] Disclosure in Anticipation of Commercial
Distribution
§ 5.04 The Registration Process
[1] Overview
[a] Administrative Responsibility
[b] Fee Structure
[2] Authorized Applicant
[3] The Application
[a] Form
[b] Description
[c] Unity of Subject Matter
[d] Examination
[e] Amendment of Application
[f] Appeal of Refusal to Register
[g] Effect of Foreign Application
[4] Registration
[a] Certificate of Registration
[b] Amendments to Registered Design
[c] Expunging or Varying Registration
§ 5.05 Industrial Design Rights
[1] Exclusive Right
[2] Certificate as Evidence
[3] Duration
[a] Basic Term
[b] Extended Term
[c] Maintenance Fees
[4] Marking
[a] Marking Requirements
[b] Marking Method
[c] Failure to Mark
[i] Compliance
[ii] Sanction
§ 5.06 Infringement
[1] What Constitutes Infringement
[a] Definition
[b] Copying and Imitation
[i] Copying
[ii] Imitation
[iii] Fraudulent Imitation
[2] Test
[a] The Threefold Test
[b] The Side by Side Test
[c] The Distance Test
[3] Jurisdiction
[4] Effect of Intention
[5] Effect of Opposing Registration
[6] Defences
[a] Delay in Filing Suit
[b] Invalidity of Registration
[c] Failure to Mark
[d] Personal or Experimental Use
[e] Lack of Knowledge of Non-Consent
[7] Summary Offences and Penalties
§ 5.07 Ownership and Transfer
[1] Proprietorship
[a] Author
[b] Executor for Good and Valuable Consideration
[2] Assignment
[3] License
Chapter 6: CONFIDENTIAL INFORMATION
Alison J. Youngman, Craig Collins-Williams and Simon Kupi
§ 6.01 Introduction
§ 6.02 Historical Development
[1] Common Law
[2] Civil Law
§ 6.03 Definition and Related Issues
[1] Definition
[2] Issues Related to Definitions—Secret-Oriented
versus Relationship-Oriented Protection
[3] Special Categories
[a] Government Secrets
[b] Protection of Privacy
[c] Privileged Communication
§ 6.04 Bases for Protection
[1] General
[2] Common Law
[a] Property
[b] Contract
[i] Express Covenants
[aa] Employment Contracts
[bb] Sale of Business
[cc] Others
[ii] Implied Covenants
[c] Tort
[i] Inducement of Breach of Contract
[ii] Unfair Competition
[d] Equity
[i] Duty of Confidence
[ii] Fiduciary Duty
[iii] Unjust Enrichment
[3] Civil Law
[a] Property
[b] Contract
[c] Delict
[d] Duty of Loyalty
[e] Unjust Enrichment
[4] Criminal Law
§ 6.05 Requirements for Protection
[1] General
[2] The Information Must Be Secret and Confidential
[3] The Information Must Be Imparted in Confidence
[4] The Information Must Be Used or Disclosed
without Authorization
§ 6.06 Duration and Loss of Protection
[1] Independent Discovery and Reverse Engineering
[2] Public Disclosure
[3] Disclosure to Government Agencies
[4] Disclosure in Judicial Proceedings
§6.07 Breach of Confidence—Misappropriation
[1] General
[2] Defences
[a] Requirements for Protection Not Met
[b] Public Interest
[3] “Springboard” Principle
[4] Remedies against Third Parties
§6.08 Ownership and Transfer
[1] Employee Ideas and Creations
[2] Assignment
[3] Licensing
Chapter 7: PERSONALITY RIGHTS
Kathryn Chalmers
§ 7.01 Introduction
§ 7.02 Provincial and Federal Jurisdiction
§ 7.03 Distinguishing between Privacy and Publicity Rights
§ 7.04 The Common Law
[1] Defamation
[2] Passing Off
[3] Appropriation of Personality
[a] The Requirements for an Action Based on the
Appropriation of Personality Tort
[i] Wrongful Use of the Plaintiff’s Personality
by the Defendant
[ii] Identifiable Element of the Plaintiff’s
Personality Is Required
[iii] Lack of Consent
[iv] Proof of Injury and Damages
[v] The Public Interest
[b] Application of the Tort to Non-Famous
Individuals
[c] Application of the Tort to Non-Traditional
Situations
[d] Duration of the Appropriation of Personality
Action
[e] Remedial Options
[i] Interlocutory and Permanent Injunctions
[ii] Common Law Damages
[iii] Unjust Enrichment
§ 7.05 Statutory Protection
[1] Statutory Appropriation of Personality Actions
[a] Introduction
[b] The Requirements for Statutory Appropriation
of Personality Actions
[i] Subject-Matter
[ii] Identity
[iii] Deemed Wrongful Use
[iv] Intent
[v] Proof of Damage
[vi] Defences
[aa] Consent
[bb] Public Interest
[c] Duration of the Statutory Right
[d] Preemption of the Common Law Appropriation
of Personality Tort
[e] Statutory Remedies
[2] Quebec Civil Law
[a] Introduction to the Right to Privacy in Quebec
[b] Scope of the Right to Control One’s
Image or Likeness
[c] Remedies
[3] Other Potential Actions
[a] Trade-mark Act
[b] Copyright
[c] Misleading Advertising
§ 7.06 Licences
§ 7.07 Note on Fictitious Characters
Chapter 8: UNFAIR COMPETITION
Mirko Bibic and Justine Whitehead
§ 8.01 Introduction to the Canadian Law of Passing Off
and Unfair Competition
§ 8.02 Passing Off
[1] Provincial and Federal Jurisdiction
[2] The Cause of Action for Passing Off
[a] At Common Law
[b] In the Province of Quebec
[3] Section 7 of the Trade Marks Act
[a] The Constitutional Validity of Section 7
[b] Subsection 7(a)
[c] Subsections 7(b) and 7(c)
[d] Subsection 7(d)
§ 8.03 Grey Marketing
§ 8.04 Ambush Marketing
§ 8.05 Comparative Advertising
[1] Introduction to Comparative Advertising—
The Clairol Decision
[2] More Recent Decisions
[a] Infringement of the Trade Marks Act and the
Copyright Act
[i] The Trade Marks Act
[aa] Section 19
[bb] Section 20
[cc] Section 22
[ii] The Copyright Act
[b] Misleading Advertising under the
Competition Act
[c] Tort of Injurious Falsehood
[d] Tort of Interference with Economic Relations
Chapter 9: LITIGATION
Randall J. Hofley and Nicholas McHaffie
§ 9.01 Introduction
§ 9.02 Professional Representation
[1] Patent Agents
[2] Trade-mark Agents
[3] Lawyers and Others
§ 9.03 The Court System
[1] Introduction
[2] Jurisdiction of the Federal Court
[3] Jurisdiction of the Federal Court of Appeal
[4] Jurisdiction of the Provincial Superior Courts
[5] Jurisdiction of the Provincial Courts of Appeal
[6] Jurisdiction of the Supreme Court of Canada
[7] Jurisdiction respecting Non-Resident Parties
[8] Consideration regarding Selection of Forum
§ 9.04 Practice and Procedure
[1] Venue
[a] Federal Court
[b] Provincial Courts
[2] Commencing Proceedings
[a] Federal Court
[b] Provincial Courts
[3] Simplified Procedure
[4] Service
[5] Subsequent Pleadings
[6] Costs and Security for Costs
[7] Jury Notice
[8] Discovery
[a] Documentary Discovery
[b] Examination for Discovery
[c] Discovery of Third Parties
[d] Admissions
[9] Settlement
[10] Setting Down for Hearing
[11] Conduct of Hearing
[12] References after Trial
§ 9.05 Legal Actions
[1] Actions for Infringement
[a] Patents
[b] Trade-marks
[c] Copyright
[d] Other Statutes
[2] Actions to Impeach, Expunge or Amend
the Register
[3] Actions for Declaration of Non-Infringement
[4] Additional Statutory Causes of Action
[5] Common Law Causes of Action
§ 9.06 Remedies
[1] Pre-judgment Remedies
[a] Interim and Interlocutory Injunctions
[b] Anton Piller Orders
[c] Mareva Injunctions
[d] Replevin
[e] Seizure before Judgment
[f] Interim Custody
[2] Judgment Remedies
[a] Permanent Injunctions
[b] Monetary Recovery
[i] Damages
[ii] Accounting for Profits
[iii] Punitive Damages
[iv] Statutory Damages
[v] Pre- and Post-Judgment Interest
[vi] Legal Costs
[c] The “Springboard” Principle
[d] Delivery Up
§ 9.07 Arbitration
§ 9.08 Criminal Offences
[1] Copyright Act
[2] Criminal Code
[3] Competition Act
Index
On CD-ROM
Appendix 1 – Trade-marks Act
Appendix 2 – Copyright Act
Appendix 3 – Patent Act
Appendix 4 – Industrial Design Act
Appendix 5 – Industrial Circuit Topography Act
