Training - IP Reading Guide - Centre for Intellectual Property Policy

Training • IP Reading Guide

The Centre for Intellectual Property Policy welcomes you to the IP Reading Guide, a reference of intellectual property material for academics, students, policy makers and business people. The IP Reading Guide contains leading IP cases, recommendations, guidelines and policy reports, as well as articles and books in all areas of intellectual property. This tool is part of CIPP's mission to facilitate debate about intellectual property issues around the world.

Patents

Legislation

Competition Act, R.S., 1985, c. C-34.: Visit Site »
Patent Act, R.S., 1985, c. P-4.: Visit Site »
Patent Rules, SOR/96-423.: Visit Site »

Case Law and Commentary

Apotex Inc. v. Wellcome Foundation Ltd., [2002] 4 S.C.R. 153.

(At issue is patent validity.) The court held the patent to be valid. At the time of filing the application, the respondents showed more than mere speculation, and were entitled to rely on sound prediction of utility, which was later supported by subsequent testing. Sound prediction requires a factual basis, a sound line of reasoning, and sufficient disclosure.

Beloit Canada Ltd. v. Valmet Oy, (1986) 8 C.P.R. (3d) 289.

(At issue are patent validity and the test for obviousness.) The court held that the classical test for obviousness involves a technician skilled in the art but having no scintilla of inventiveness or imagination. The question to be asked is whether this person would, in the light of the state of the art and of common general knowledge as at the claimed date of invention, have come directly and without difficulty to the solution found in the patent.

Canada (Commissioner of Patents) v. Ciba Ltd., [1959] S.C.R. 378.

(At issue is whether the application of a known process to known materials never previously been applied to them can be patentable.) The court held that the application of a known process to known materials may be novel where the process had never been previously applied to such materials. Where, in addition to this, the process is useful - it can be patented.

Eli Lilly & Co. v. Novopharm Ltd., [1998] 2 S.C.R. 129.

(At issue is whether Novopharm by entering into a supply agreement with Apotex violated the terms of the compulsory license given by Eli Lilly. The compulsory license prohibited granting of sublicenses.) The court held that the supply agreement was not a sublicense and therefore the conditions of the compulsory license are not violated.

Free World Trust c. Électro Santé Inc., [2000] 2 S.C.R. 1024.

(At issue is whether Électro Santé Inc. infringed a patent by creating and marketing an apparatus that achieves similar therapeutic effects using a different technology from the patented invention.) The court found no patent infringement. The technology used in Électro’s apparatus was completely different, and therefore there was no duplication of an essential element.

Harvard College v. Canada (Commissioner of Patents), [2002] 4 S.C.R. 45.

(At issue is whether mammals, being genetically altered to be more susceptible to cancer, were higher life forms and therefore not patentable as a composition of matter.) The court held that the “composition of matter” does not include higher life forms; a genetically engineered mouse is not patentable under Canadian law.

Monsanto Canada Inc. v. Schmeiser, [2004] 1 S.C.R. 902.

(At issue is whether active cultivation and harvesting of seeds containing patented genes and cells infringes a patent.) It was held that the patent in this case was valid because the plaintiffs did not claim protection for the genetically modified plant itself (unpatentable), but rather for the genes and the modified cells that make up the plant.

Schlumberger Canada Ltd. v. Canada (Commissioner of Patents), [1982] 1 F.C. 845.

(At issue is whether the computer program, alleviating data processing relating to energy resource exploration is patentable.) The court held that the only new elements in the discovery were mathematical formulae and methods of calculation. According to s.28 (3) of the Patent Act they are not patentable. A computer program does not render an otherwise unpatentable invention patentable.

Shell Oil Co. v. Canada (Commissioner of Patents), [1982] 2 S.C.R. 536.

(At issue is whether the composition of old and new compounds mixed with adjuvant for new use is patentable.) The court held that the idea of applying old compounds to a new use - one capable of practical application and of undoubted economic value - is considered an invention within the context of s. 2 of the Patent Act, and is therefore patentable.

Tennessee Eastman Co. v. Canada (Commissioner of Patents), [1974] S.C.R. 111.

(At issue is whether a method for surgical bonding using well known compounds can be patented in Canada.) The court held that the method did not constitute patentable subject matter under s. 2(d) of the Patent Act in that it is neither an art, nor a process within the meaning of the section. The court made a reference to public policy reasons.

Recommendations, Guidelines and Policy

CIPO - Manual of Patent Office Practice: Visit Site »
Intellectual Property Policy: Visit Site »

Articles and Books

Adams, W.A. and R. Gold. "The Monsanto Decision: the edge or the wedge" (2001) 19 Nature Biotechnology, p. 587.
Adams, W.A. “Confronting the Patentability Line in Biotechnological Innovation”, forthcoming, Canadian Business Law Journal.
Adams, W.A. “The Myth of Patent Neutrality: Property Rights, Animal Rights and Animal Welfare in Commissioner of Patents v. President and Fellows of Harvard College” (2003), 39 Canadian Business Law Journal 1 – 34.
Bentley, L. and B. Sherman. Intellectual Property Law (Oxford: Oxford University Press, 2004).
Canadian Biotechnology Advisory Committee. Patenting of higher life forms and related issues: report to the Government of Canada Biotechnology Ministerial Coordinating Committee (Ottawa: Canadian Biotechnology Advisory Committee, 2002).
Gold, R and W.A. Adams. “Reconciling Private Benefit and Public Risk in Biotechnology: Xenotransplantation as a Case Study in Consent” (2002) 10 Health Law Journal 31.
Gold, R. "Biomedical Patents and Ethics: A Canadian Solution" (2000) 45 McGill Law Journal, p. 413.
Gold, R. "Finding Common Cause in the Patent Debate" (2000) 18 Nature Biotechnology, p. 1217.
Gold, R. "Making Room: Reintegrating Basic Research, Health Policy, and Ethics into Patent Law", in Caulfield TA & Williams-Jones, B (ed.), The Commercialization of Genetic Research (New York: Plenum Publishers, 1999).
Gold, R. and D.K. Lam. “Balancing Trade in Patents: Public Non-Commercial Use and Compulsory Licensing” (2003) 6 Journal of World Intellectual Property 5.
Gold, R. and T.A. Caulfield. "Genetic Testing, Ethical Concerns, and the Role of Patent Law" (2000) 57 Clinical Genetics, p. 370.
Gold, R. Body Parts: Property Rights and the Ownership of Human Biological Materials (Washington D.C.: Georgetown University Press, 1996).
Gold, R. with Timothy A. Caulfield and Mildred Cho. "Refocusing the Debate on Patenting Human Genetic Material" (2000) 1 Nature Reviews Genetics, p. 227.
Gold, R. with W. Adams, D. Castle, G. Cleret de Langavant, L.M. Cloutier, A.S. Daar, A. Glass, P. J. Smith and L. Bernier. “The Unexamined Assumptions of Intellectual Property: Adopting an Evaluative Approach to Patenting Biotechnological Innovation” (2004) 18 Public Affairs Quarterly 273.
Gold, R. “From Theory to Practice: Health Care and the Patent System” (2003) Special Edition of the Health Law Journal 21, September 2003.
Gold, R. “SARS genome patent: symptom or disease?” (2003) 361 The Lancet 2002.
Gold, R. “The Reach of Patent Law and Institutional Competence” (2004) 1 University of Ottawa Law and Technology Journal 265.
Judge, E. & D. Gervais. Intellectual Property: The Law in Canada (Toronto: Carswell, 2005).
Knoppers, B. (ed). Human DNA : law and policy : international and comparative perspectives (The Hague; Boston : Kluwer Law International, 1997).
Kratz, M. Canada’s Intellectual Property Law in a Nutshell (Toronto: Carswell, 1998).
Vaver, D. Intellectual Property Law: Copyright, Patents, Trademarks (Toronto: Irwin Law 1997).

Copyright

Legislation

Copyright Act, R.S., 1985, c. C-42.: Visit Site »
Copyright Regulations, SOR/97-457.: Visit Site »

Case Law and Commentary

Allen v. Toronto Star Newspapers Ltd., (1997) 152 D.L.R. (4th) 518.

(At issue is whether the plaintiff's copyright in photograph was infringed by the subsequent reproduction of the entire magazine cover.) By allowing the defendant’s appeal the court held that a compilation including the original work would not be a copyright infringement if it results in a production of something in a new form, as a result of the skill, labour and judgment of the author.

Apple Computer Inc. v. Mackintosh Computers Ltd., (1987), [1988] 1 F.C. 673, 44 D.L.R. (4th) 74, 18 C.P.R. (3d) 129 (C.A.), aff’d [1990] 2 S.C.R 209.

(At issue is whether the duplication of a computer chip infringes copyright in a computer program embodied therein.) The court held that the sole distinguishing characteristic of a literary work is not its quality as art or literature but simply that it be in writing or in print. Similarly, the programs embodied in silicon chips are protected by the Copyright Act just as they would be if written or printed on paper.

Apple Computer Inc. v. Mackintosh Computers Ltd., (1987), [1988] 1 F.C. 673, 44 D.L.R. (4th) 74, 18 C.P.R. (3d) 129 (C.A.), aff’d [1990] 2 S.C.R 209.

(At issue is whether the program embodied in the silicon chip is subject to copyright protection.) It was held that the program is a proper subject of copyright protection and that the right to produce or reproduce was violated. This right includes the sole right to produce the means of reproduction of the work or, to put the matter another way, the sole right to produce anything used or intended to be used to reproduce the work.

Aubry c. Éditions Vice Versa Inc., [1998] 1 S.C.R. 591.

(At issue is whether the artist's right to publish a photograph can justify infringement of the other person's right to privacy.) The court held that the artist's right to publish his or her work is not absolute and cannot include the privilege to violate, without any justification, a fundamental right to privacy of the person whose image appears in the work.

Bishop v. Stevens, [1990] 2 S.C.R. 467.

(At issue is whether the right to perform and the right to record a work are separate under the Copyright Act.) The court held that having a license to make a public performance of a work does not imply any license or right to make a mechanical reproduction of a work for the purpose of exercising the right to perform the work in public.

Boudreau v. Lin, (1997) 75 C.P.R. (3d) 1, 150 D.L.R. (4th) 324 (Ont. Gen. Div.).

(At issue is a violation of the attribution right.) The court found a copyright infringement and concluded that author’s moral rights include the right of attribution. The right of attribution is the right of the author to be associated with the work, and not have the work’s creation improperly attributed to another.

C.A.P.A.C. v. CTV (Television) Network, [1968] S.C.R. 676.

(At issue is the scope of the right to perform and the right to communicate.) The copyright owner has the sole right to perform the work in public. However, if a person’s only role is to provide the telecommunication means necessary to communicate the work to the public, then the person does not by that act alone communicate the work to the public. Thus, a microwave transmission of a television signal, including musical works, is held not a communication to the public of the musical works by the microwave facility operator.

Canadian Admiral Corp. v. Rediffusion Inc., [1954] Ex. C.R. 382 (Ex.Ct.).

(At issue is whether copyright subsists in live and film telecasts; and the meaning of "original" in the law of copyright.) The court held that the work, to be capable of copyright protection, must be original and be fixed in a tangible form. “Original” is defined in a negative sense, meaning that the work is not copied from someone else’s work. The Court held that a live telecast of a football game is not covered by copyright protection because, among other reasons, it is not fixed prior to broadcast.

CCH Canadian Ltd. v. Law Society of Upper Canada, [2004] 1 S.C.R. 339.

(At issue is the meaning of “originality” and the libraries’ liability for having photocopiers available for lawyers who wish to photocopy materials.) The court held that an "original" work under the Copyright Act is one that originates from an author and is not copied from another work. The original work must be the product of an author's exercise of skill and judgment and should not be characterized as a purely mechanical exercise.

Compo Co. v. Blue Crest Music Inc., [1980] 1 S.C.R. 357.

(At issue is the liability of person pressing records from master disc prepared by a third party.) Discussing the nature of copyright, the court held that rights under copyright law are statutory rights.

Composers Authors & Publishers Ass. of Canada ltd. v. CTV Television Network ltd., [1968] S.C.R. 676.

(At issue is copyright infringement in musical works.) The court defined musical works as graphic reproductions of melody and harmony. A claim for copyright infringement cannot be supported where "a performance of the works" was communicated but not “the works" themselves.

Cuisinaire v. South West Imports Ltd., 54 C.P.R., [1968] 1 Ex. C.R. 493, aff’d [1969] S.C.R. 208.

(At issue is the existence of copyright in coloured rods used as counting sticks for teaching arithmetic in primary school grades.) The court rejected the copyright claim, holding that the rods were “not artistic” and that no craftsmanship was involved in their creation.

Despeuteaux v. Éditions Chouette (1987) Inc., [2003] 1 S.C.R. 178.

(At issue is the arbitration and the interpretation of a contract between an artist and a promoter.) Addressing the nature of copyright, the court held that the Copyright Act deals with copyright primarily as a system designed to organize the economic management of intellectual property, and regards copyright mainly as a mechanism for protecting and transmitting the economic values associated with that type of property and with the use of it.

DRG Inc. v. Datalife Ltd., (1987) 18 C.P.R. (3d) 538.

(At issue is whether the design of colour-coded numeric labels is an artistic work and therefore protected by copyright.) The court held that the respondent's design is not an artistic work but instead is an industrial design. Requiring courts to determine what is artistic depends on the circumstances of the case.

Galerie d'art du Petit Champlain Inc. c. Théberge, [2002] 2 S.C.R. 336.

(At issue is the violation of a reproduction right.) The court held that transferring an authorized paper reproduction onto canvas does not amount to an infringement within the meaning of the Copyright Act. Reproduction necessarily involves duplication. In contrast, this is a case of physical or mechanical transfer in which no multiplication takes place.

Gould Estate v. Stoddart Publishing Co., (1998) 39 O.R. (3d) 545.

(At issue is the existence of copyright in oral statements and in photographs.) The court held that oral speech is not protected by copyright unless it is fixed. The owner of the original negative or photograph is deemed to be the author and the first owner of the copyright.

Kantel v. Grant, [1933] Ex. C.R. 84 (Ex. Ct.).

(At issue is the existence of copyright in a radio sketch outline.) The court held that the radio sketch outline, recorded in writing is a protectable work.

Kantel v. Grant, [1933] Ex. C.R. 84 (Ex. Ct.).

(At issue is whether a radio sketch is a dramatic work within the meaning of copyright law.) The court held that the radio sketch comprised of predetermined incidents, songs, dialogues and talks is a dramatic work and therefore is protected by copyright.

Moreau v. St. Vincent, [1950] D.L.R. 713.

(At issue is the existence of copyright in ideas.) The court decided that at its most basic level, copyright protects the expression of ideas but does not protect the ideas themselves.

Snow v. Eaton Center Ltd., (1982), 70 C.P.R. (2d) 105 (Ont. H.C.).

(At issue is a violation of the author’s moral rights.) The court held that author’s moral rights are violated where dealing with the work is prejudicial to author’s honour and reputation. The word ‘prejudicial’ involves a certain subjective element or judgment on the part of the author so long as it is reasonable.

Tele-Direct (Publications) Inc. v. American Business Information Inc., (1997), 76 C.P.R. (3d) 296.

(At issue is whether an arrangement of data resulted in a protected compilation.) The court held that a compilation is protected by copyright only if it is original. In arranging the information in its telephone directory, Tele-Direct did not exercise a degree of skill, labour or judgment that was sufficient to support a claim of originality in compilation.

Tom Hopkins International Inc. v. Wall & Redekop Realty Ltd., 1 C.P.R. (3d) 348 [1984].

(At issue is the existence of copyright in a sales training program consisting of video cassette tapes.) The court decided that the sales training program consisting of video cassette tapes qualifies as a dramatic work and is protected by copyright.

Recommendations, Guidelines and Policy

A Guide to Copyrights: Visit Site »
Copyright Circulars: Visit Site »
Copyright Reform Process: Visit Site »
Fact Sheet on Copyright Remedies: Visit Site »

Articles and Books

Adams, W.A. “Secondary Markets for Copyrighted Works and the Ownership Divide: Reconciling Competing Intellectual and Personal Property Rights” (2002) 37 Canadian Business Law Journal 321 – 356.
Bentley, L. and B. Sherman. Intellectual Property Law (Oxford: Oxford University Press, 2004).
Copyright administrative institutions: conference organised by the Centre de recherche en droit public (CRDP) of the Faculty of law of the Université de Montréal, 11 & 12 October 2001 / directed by Ysolde Gendreau (Cowansville, Quebec: Éditions Y. Blais, 2002).
Gold, R. "Partial Copyright Assignments: Safeguarding Software Licensees Against the Bankruptcy of Licensors" (2000) 33 Canadian Business Law Journal 193.
Handa, S. & A. Matheson, “Copyright Law and the Internet: The Tariff 22 Case” (2004) BNA International - World Internet Law Report Vol. 5, No. 10.
Handa, S. Copyright Law in Canada (Canada: Butterworths, 2002).
Handa, S. “A Review of Canada’s International Copyright Obligations” (1997) 42 McGill Law Journal 961.
Handa, S. “Copyright Protection of Electronic Databases” (2003) Canadian International Lawyer Vol. 5, No. 4.
Judge, E. & D. Gervais. Intellectual Property: The Law in Canada (Toronto: Carswell, 2005).
Kratz, M. Canada’s Intellectual Property Law in a Nutshell (Toronto: Carswell, 1998).
Lametti, D. “Coming to Terms with Copyright” in M. Geist’s In the Public Interest (Toronto: Irwin Law, 2005).
Lametti, D. “Publish and Profit?: Justifying the Ownership of Copyright in the Academic Setting” (2001) 26 Queen’s Law Journal 497-567.
Landes, W. & R. Posner. “An Economic Analysis of Copyright Law” (1989) 17 J. Legal Stud. 325.: Visit Site »
Vaver, D. Copyright Law (Toronto: Irwin Law, 2000).
Vaver, D. Intellectual Property Law: Copyright, Patents, Trademarks (Toronto: Irwin Law 1997).

Trademarks

Legislation

Trade-marks Act, R.S.C. 1985, c. T-13.: Visit Site »

Case Law and Commentary

BCAA et al. v. Office and Professional Employees' Int. Union et al., (2001) 85 B.C.L.R. (3d) 302 (B.C.S.C.).

(At issue is whether the Union’s website infringed BCAA’s trademark.) The court found no infringement since there was no element of commercial use and no depreciation of goodwill. The union was not trying to sell a product or service nor was it was trying to persuade the public not to do business with the BCAA.

Compagnie Générale des Établissements Michelin-Michelin & Cie v. National Automobile, Aerospace, Transportation and General Workers Union of Canada (CAW-Canada), (1996), 124 F.T.R. 192 (F.C.).

(Workers used trademarked “Michelin Man” with foot above workers’ heads in union leaflet to encourage union membership. At issue is whether this activity constitutes unauthorized “use” for purposes of the Trademark Act.) The court found no “use” in this case because the union was not trying to sell a product or service and was not trying to deceive people into thinking that the leaflets originated from the trademark owner. Note that the union lost the case under copyright, where “use” is not as restricted since profitability is not a factor.

Frank Reddaway Ltd. v. George Banham, [1896] A.C. 199 (H.L.).

(At issue is the scope of protection for descriptive words, i.e. Camel Hair Belting.) The Passing off action succeeded. The court held that although descriptive words are generally not protected, those words may become so much associated with the goods of a particular maker that their sole use by another manufacturer would deceive a purchaser.

Glen-Warren Productions Ltd. v. Gertex Hosiery Ltd., (1990) 32 F.T.R. 274. (Fed. C.A.), [1990] F.C.J. No. 51.

(The Plaintiff used the unregistered trademark “Miss Canada” in association with beauty pageants. At issue is whether the defendant can register the same trademark which will be used in association with ladies hosiery.) The court held in favor of the plaintiff. The trademark cannot be registered because the public would likely assume that the wares were approved, licensed or sponsored by the beauty pageant, creating confusion in the consumer. The defendant also failed to show that the name "Miss Canada" was inherently distinctive of its hosiery.

Institut National des Appellations d”Origine des Vins et Eaux-de-Vie v. Andres Wines ltd. et al., (1987), 60 O.R. (2d) 316 (C.A.).

(The plaintiff, a French organization of Champagne producers, is suing a Canadian producer selling sparkling wine under the name “Canadian Champagne” for passing off. At issue is the application of the concept of “shared goodwill”.) The court recognized the concept of “shared goodwill,” allowing 16 plaintiffs to share the same action. It held that the proprietary right is not a right in the name itself, but in the reputation or goodwill associated with it.

Kirkbi AG v. Ritvik Holdings Inc. / Gestions Ritvik Inc., [2005] 3 S.C.R. 302.

(At issue are the scope of the unregistered trademark and the doctrine of functionality.) Kirkbi asserted an unregistered trademark in the top surface of each LEGO block and brought a claim against Ritvik for “passing-off”. The court rejected Kirkbi’s claim and found that a purely functional design does not fall within the scope of a trademark.

Mattel, Inc. v. 3894207 Canada Inc., 2006 SCC 22.

(At issue is whether the respondent's use of the “Barbie” name in relation to restaurant services would likely create confusion in the marketplace with the appellant Mattel's famous trade-mark "Barbie".) The Supreme Court of Canada dismissed the appeal, allowing the respondent to use the Barbie name. Under s. 6(2) of the Trade-marks Act, confusion arises if it is likely that the hypothetical purchaser — the casual consumer somewhat in a hurry — will be led to the mistaken inference that “the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class”. The SCC stated that the general class of wares and services, while relevant, is not controlling. All the surrounding circumstances must be considered. The Federal Court of Appeal’s decisions in Pink Panther and Lexus should not be followed to the extent they suggest that, for confusion to occur there must be “some resemblance or linkage to the wares in question”. Resemblance is clearly not a requirement under s. 6.

Pink Panther Beauty Corp.v. United Artists Corp., (1998), 147 F.T.R. 306 (F.C.A.).

(U.A. Corp. owns the famous trademark "The Pink Panther" for use in association with records and films. At issue is whether the Pink Panther Beauty Corporation can register similar trademark “The Pink Panther” for use in association with beauty products.) The court allowed Pink Panther’s appeal holding that the average person would not confuse these two marks. Hence, the test is likelihood of confusion.

Rotisseries St-Hubert Ltée v. le Syndicat des Travailleurs(euses) de la Rotisserie St-Hubert De Drummondville (C.S.N.), (1986) 17 C.P.R. (3d) 461. (Qc. Sup. Ct.).

(The Union used the trademarked head of a cock on pamphlets, pins and stickers being distributed during a labour dispute. At issue is whether this is contrary to the Trade Marks Act.) The court found no trademark infringement. The Union was a non-profit organization, was not in competition with the plaintiff and did not use the trademark in the ordinary course of trade. However, plaintiff’s action under s. 3(1) of the Copyright Act succeeded because a copyright violation is not restricted to commercial use.

Tommy Hilfiger Licensing, Inc. v. International Clothiers Inc., [2005] 1 F.C.R. 148 (Fed. C.A.).

(At issue is whether the intention to use an offending mark to distinguish wares is necessary to prove infringement.) The Court of Appeal allowed Tommy Hilfiger’s appeal and found that no intention to use an offending mark to distinguish wares is necessary to prove a trademark infringement.

U.A.P. Inc. v. Automaxi S.A., (1994) (Fed. C.A.), [1994] F.C.J. No. 1933.

(At issue is whether the trademarks “AUTOMAX” and “AUTOMAX & Design” could be registered in relation to auto servicing where they resemble the previously registered trademark “AUTO MAXI & Design”, also used in relation to automobile accessories and servicing.) The court disallowed the trademark registration. The marks are visually and phonetically similar, and there is an overlap between the wares and services which would likely lead to confusion.

Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée, 2006 SCC 23.

(At issue are the following: whether the use of the CLIQUOT name in relation to women’s clothing store is likely to create confusion in the marketplace with the famous trade-mark VEUVE CLICQUOT, associated with luxury champagne; and whether such use is likely to depreciate the value of the goodwill attached to the VEUVE CLICQUOT trade-mark.) The SCC dismissed the appeal and allowed the use of the CLIQUOT trademark. It held that the famousness of a mark is an important factor for determining whether there is confusion between the competing marks. However, this fact does not by itself provide absolute protection for a trademark. It is one factor that should be considered with all the others. Further, the SCC delineated the test for the cause of action under s. 22 of the Trade-Marks Act (goodwill depreciation). The court applied the test and rejected the goodwill depreciation claim.

“Jif Lemon Case” – Reckitt and Colman Products Ltd. v. Borden Inc., [1990] 1 W.L.R. 491 (H.L.)., [1990] H.L.J. No. 18.

(At issue are the content and the elements of a passing off action.) Passing off is a common law tort that can be used to enforce unregistered trademark rights. The court held that the elements of a passing off action are goodwill attached to goods by association with “get-up” (container), misrepresentation by defendant, and damages suffered by plaintiff.

Recommendations, Guidelines and Policy

Under construction.

Articles and Books

Adams, W.A. “Beyond Trade Mark: Common Law Property Rights in Domain Names” (2003) 52 Intellectual Property Forum 10 – 19.
Bentley, L. and B. Sherman. Intellectual Property Law (Oxford: Oxford University Press, 2004).
Freedman, B. J. & Robert J.C. Deane. “Trade-marks and the Internet: A Canadian Perspective” (2001) 34 U.B.C. L. Rev. 345.
Jones, L.K. “Trademark.com: Trademark Law in Cyberspace” (1999) 37 Alta. L. Rev. 991.
Judge, E. & D. Gervais. Intellectual Property: The Law in Canada (Toronto: Carswell, 2005).
Kratz, M. Canada’s Intellectual Property Law in a Nutshell (Toronto: Carswell, 1998).
Landes, W. & R. Posner. "Trademark Law: An Economic Perspective" (1987) 30 J.L. & Econ. 265-75.
Ludlow, C. G. “Survey of Intellectual Property: Part III -- Trade-Marks (Enforcement)” (1996-1997) 28 Ottawa L. Rev. 203.
Scassa, T. “Intellectual Property on the Cyber-Picket Line: A Comment on British Columbia Automobile Assn. v. Office and Professional Employees' International Union, Local 378” (2002) 39 Alta. L. Rev. 934.
Vaver, D. Intellectual Property Law: Copyright, Patents, Trademarks (Toronto: Irwin Law 1997).

Other Types of Intellectual Property Protection

Legislation

Industrial Design Act, R.S., 1985, c. I-9.: Visit Site »
Industrial Designs Regulations, SOR/99-460.: Visit Site »
Integrated Circuit Topography Act, 1990, c. 37.: Visit Site »
Plant Breeders' Rights Regulations, SOR/91-594.: Visit Site »
Plant Breeders’ Rights Act, 1990, c. 20.: Visit Site »

Case Law and Commentary

60630 Manitoba Ltd. et al. v. McCarroll et al., (1995), 61 C.P.R. (3d) 572. (Man. Ct. App.).

(At issue is whether the defendant/respondent obligation not to disclose or use trade secrets was limited to two years after the termination of employment.) The appeal was allowed. The common law obligation of an employee not to steal employer's trade secrets is not subject to reasonable time limitations similar to a restrictive covenant in an employment agreement. It is not against public policy to protect trade secrets of an employer as long as they actually remain secret.

Apotex Fermentation Inc. v. Novopharm Ltd., (1995), 65 C.P.R. (3d) 190.

(At issue is whether the plaintiff Apotex Ferm. disclosed a trade secret by obtaining a patent.) The plaintiff was deemed to have revealed to the world the trade secret (Y-5 formula) because the plaintiff's patent disclosed the very trade secret for which it was seeking damages. The court held that the breach was not severe enough to warrant a new trial, but the trial should be re-opened to introduce the new evidence.

Belform Insulation Ltd. v. Toleks Insulation Ltd., (1998), 85 C.P.R. (3d) 160. (Ont. Ct.).

(At issue is whether the production method to manufacture and sell interlocking and insulating devices is a trade secret.) Permanent injunction granted. The method was held to be a trade secret and had been developed over significant time and cost. Even though the plaintiff did not use words such as "secret" or "confidential", the process was conveyed to the defendant as a trade secret. If the defendant had not worked for the plaintiff, he would not have been able to reproduce the manufacturing process.

British Industrial Plastics, Ltd. Ltd. v. Ferguson and James Ferguson & Sons Ltd., (1940), 58 R.P.C. 1.

(At issue is whether a third party can be enjoined from using a trade secret where the party purchased the secret for its value.) The court refused to enjoin the third party from using the trade secret where the third party purchased the subject-matter of the trade secret for its value without notice as to its confidential nature.

Consolidated Textiles Ltd. v. Central Dynamics Ltd., [1974] 2 F.C. 814 (Fed. Ct.).

(At issue is whether the defendant, Central Dynamics, entrusted with a trade secret by the plaintiff, Consolidated Textiles, can use the secret to the prejudice of the plaintiff.) The court granted the injunction restraining the use of the trade secret and confidential information by the defendants. A person who receives information in confidence pertaining to a trade secret cannot use it to the prejudice of the person who revealed the secret.

CPC International Inc. v. Seaforth Creamery Inc., [1996] O.J. No. 3393.

(At issue is whether the plaintiff’s former employee breached his fiduciary duty by passing on trade secrets regarding the manufacture of mayonnaise to the defendant, his new employer.) The court granted the interlocutory injunction preventing the defendant, Seaforth Creamery, from selling its product. There was a breach of employee confidentiality and fiduciary duty. CPC had treated its mayonnaise formula as a trade secret. The formula could not be identified by simple examination of CPC’s mayonnaise.

Dent Wizard International Corp. v. Long, [1996] O.J. No. 4702.

(At issue is whether the technique of paintless dent removal, acquired by the defendants during employment, is a trade secret.) The court held that the technique is not a trade secret as it falls under the category of generalized skills and knowledge, obtained through training and experience.

Di Giacomo v. Di Giacomo Canada Inc., (1989), 28 C.P.R. (3d) 77. (High Ct. of Just.).

(At issue is whether the process for making latex moulds out of real rock faces for constructing panels of artificial rock should be protected as a trade secret.) The court held that the process, which was communicated to the defendants, was developed by means of great time, effort and ingenuity. The process was unique and should be considered confidential, even though certain individual elements of the process were common knowledge. It was held a trade secret.

G.W.L. Properties Ltd. v. Les Industries Cafco Ltee/Industries Cafco Ltd., (1992), 43 C.P.R. (3d) 491.

(At issue is whether the defendant Cafco, who installed the plaintiff’s building insulation, is required to produce documents as to the process for insulation manufacturing and the combination of ingredients used.) The court held that the defendant is not required to produce such documents since the process and combination of ingredients constitute a trade secret. Both are closely held and guarded even within Cafco and the market for this product is highly competitive.

Genesta Manufacturing Ltd. v. Babey et al., (1984), 2 C.P.R. (3d) 32. (Ont. High Ct. of Just.).

(At issue are the subject matter of a trade secret and whether the defendant stole the trade secret from the plaintiff.) The court found no theft. The “know how” involved in producing a competing product and the knowledge of the product's costing and pricing as well as the knowledge of general office procedure are not trade secrets. The defendant was allowed to take with him any additional skill/experience, acquired during his employment with the plaintiff.

International Tools Ltd. v. Kollar et al., [1968] 1 O.R. 669.

(At issue is whether employees can be enjoined from using or revealing trade secrets.) The court held that where the employees learn their employers’ trade secrets by gaining access to secure areas for a limited purpose and covertly observing the workings, the employees can be enjoined from using or revealing such secrets. The injunction extends to partners of the employees if they learn the trade secret and know how it was acquired.

Merck Frosst Canada Inc. v. Canada (Minister of Health and Welfare), (1988), 20 F.T.R. 73. (Fed. Ct.), [1988] F.C.J. No. 290.

(At issue is whether the decision of the Minister of Health and Welfare to release portions of records relating to the applicant's new drug should be reviewed pursuant to s. 44 of the Access to Information Act.) The court dismissed the application. (1) The trade secret exemption under s. 20(1)(a) did not apply because information contained therein was repeated in the product monograph. (2) s. 20(1)(b) did not apply because the information that had not yet been released was not scientific, financial, commercial or technical in nature. (3) s. 20(1)(c) did not apply since a likelihood of financial injury was not established.

Morison v. Moat, (1851), 9 Hare 241.

(A secret formula was known only by two parties. It was used by the son of one of the parties who had divulged the confidential information. At issue is whether a third party can be enjoined from using a trade secret if the party was unaware of its confidential nature.) The court found that the third party can be enjoined from using a trade secret that was communicated to it even if the party was unaware of its confidential nature. The information should not be used to benefit another party.

R.L. Crain Limited v. Ashton and Ashton Press Manufacturing Company Limited, [1950] O.R. 62 (Ont. Ct. App.).

(At issue are the implied obligations of an employee.) The court held that an employee who acquires knowledge of a secret process during the course of employment has an implied obligation not to use that information after the employment concludes. The obligation exists even if the process was improved by the employee himself. However, if the information is not a secret, and was disclosed by someone other than the employee, to others in the same trade, the rules of trade secrets no longer apply.

Reliable Toy Co. Ltd. and Reliable Plastics Co. Ltd. v. Collins, [1950] 4 D.L.R. 499 (Ont. High Court).

(The defendant was a chemist who signed a secrecy agreement and who was hired by the plaintiff manufacturer of plastic toys. The plaintiff sued for the disclosure of trade secrets and it was proven that certain secret processes were disclosed by the defendant. At issue is the secrecy agreement and the confidential relationship of master and servant.) The court held that secrecy agreements are generally void as restraint of trade, but not in the context of a confidential relationship between employee and employer where the protection afforded by the agreement is reasonable. There must be proof of some damage when suing for disclosure of a trade secret.

Robin-Nodwell Mfg. Ltd. v. Foremost Developments Ltd. and Nodwell, (1966), 52 C.P.R. 244 (Alb. Sup. Ct.).

(At issue are and the onus of proof and the secrecy requirement.) The court dismissed the action because the onus is on the plaintiff to establish that a trade secret, which is in fact a secret, exists. Plaintiff’s deep-snow machine was not developed in secrecy, as many people were allowed at the plaintiff’s shop during its development. The development of the machine has to be carried out with a sufficient degree of secrecy in order to establish the existence of a trade secret.

Software Solutions Associates Inc. v. Depow et al., (1989), 25 C.P.R. (3d) 129. (N.B. Ct. of Queen’s Bench).

(At issue in the action for breach of fiduciary duty is whether the defendant used plaintiff’s trade secret, which the former acquired in the course of employment.) The court held that the defendants' system of office management used the plaintiff’s trade secret or confidential information. While an employee is entitled to make use of skills and general knowledge that he has acquired on the job, the plaintiff’s system cannot be reasonably characterized as general. The system is specific in nature.

Stevenson Jordan & Harrison, Ltd. v. MacDonald and Evans, (1951), 68 R.P.C. 190.

(The holding in this case relates to British Industrial Plastics. At issue is whether the owner of a trade secret loses the benefits of the secret where the secret was disclosed illegally.) The court held that the owner of the trade secret should not lose the benefits associated with it because of the illegal disclosure of the secret. The innocent purchaser should at least be required to maintain the secret as a trade secret for his own use. The purchaser should not be able to sell the secret or disclose it to the public.

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