Main Changes to Canadian Intellectual Property Legislation as a Result of the Agreement Establishing the World Trade Organization (WTO)

(effective January 1, 1996)

1. Copyright Act

Copyright protection is extended to "treaty countries" that are members of the WTO, in addition to those of the Berne Convention and the Universal Copyright Convention.

To satisfy the Agreement's national treatment requirements and the addition of new performers' rights, the WTO Agreement Implementation Act amends section 2 of the Copyright Act by changing the definition of "infringing" to include performers' performances. In order to eliminate confusion it also amends the definition of "performance" to exclude performers' performances. Definitions are added for "performer's performance", "WTO Member" and, in the French version, artiste interprète.

Several sections and subsections have been added:

Subsection 5(1.01) provides retrospective protection for pre-existing subject matter for nationals of WTO members. However, this protection is limited by new subsection 5(1.02) so as not to apply to works that have fallen into the public domain in their country of origin by reason of the expiry of their term of protection. Section 29 allows the Copyright Board to fix compensation for a person who entered into legal arrangements for the use of a work that, by the addition of subsection 5(1.01), infringes the rights of an author or copyright owner.

Section 14.01 provides protection for performers against the unauthorized fixation or subsequent reproduction of their performances in sound recordings and against the unauthorized broadcast of their live performances. Section 28.02 allows for certain exceptions to the performer's rights, such as fair dealing. Section 28.03 allows the Copyright Board to fix compensation for a person who entered into legal arrangements for the use of a performance that, by the addition of section 14.01, infringes the rights of a performer or owner of performers' rights. Section 43.1 imposes criminal sanctions against infringers of the new performers' right, and section 44.2 allows for border measures against the importation of infringing copies of performers' performances. Section 70.8 allows the Copyright Board to determine the compensation payable for restoration of copyright or performers' rights.

The provisions on compulsory licensing for books, including books in serial form, have been repealed.

2. Patent Act

The definition of the term "country" is added to section 2 of the Patent Act, so as to include a member of the WTO. This amendment allows for convention priority claims from WTO members who are not members of the Paris Convention. The Patent Act is also amended so as to restrict the compulsory use by federal and provincial governments of semi-conductor technology for public non-commercial use.

3. Industrial Design Act

The Industrial Design Act is amended to allow for convention priority claims from WTO members who are not members of the Paris Convention.

4. Trade-marks Act

A new definition of "country of the Union", in section 2 of the Trade-marks Act, now extends to WTO members the benefits (e.g. convention priority, protection of flags or emblems) previously given to applicants from countries who are members of the Paris Convention.

The Trade-marks Act is amended so as to allow for the expungement of a trade-mark after three consecutive years of non-use (previously two years).

Geographical Indications for Wines and Spirits

A number of amendments are made to the Trade-marks Act to provide a comprehensive code for protecting geographical indications for wines and spirits in Canada. Section 2 defines indications for wines and spirits that identify these products as originating in the territory of a WTO member, or a region or locality of that territory, where a quality, reputation, or other characteristic of the wine or spirit is essentially attributable to its geographical origin; and where it is protected by the laws applicable to that WTO member. Section 2 is amended to include definitions of "geographical indication"' and "protected geographical indication".

Several sections have been added:

Section 11.11 provides a definition of "responsible authority". Section 11.12 creates a list of protected geographical indications, to be kept by the Registrar of Trade-marks. This list will be published in the Canada Gazette, and possibly in the Trade-marks Journal. Section 11.13 provides for an objection proceeding for suggested additions to the list. However, the only possible ground for objection is that the indication is not a geographical indication, in accordance with the definition found in section 2 of the Trade-marks Act. The statement of objection to entry of the geographical indication on the protected list must be filed within three months of publication.

Sections 11.14 and 11.15 prevent the adoption or use, as a trade-mark or otherwise, of a protected geographical indication, in relation to wines or spirits. Section 11.16 provides for exceptions in the case of personal names and comparative advertising, and section 11.17 provides an exception for prior use by a Canadian with respect to wares or services in a continuous manner in good faith before April 15, 1994, or for at least 10 years before that date.

Section 11.18 provides for an exception for geographical indications that have fallen into disuse. New subsections 11.18 (3) and (4) contain important exceptions related to the generic names for wines (e.g. champagne, port, chablis, claret) and spirits (e.g. ouzo, sambucca, schnapps, bitters). This list may be amended by the Governor in Council.

Section 11.19 is also added so as to provide an exception to sections 11.14 and 11.15 where no action is brought to enforce the protected geographical indication for at least five years from registration or from knowledge of unlawful use.

Section 12 is amended to prevent the registration of protected geographical indications as trade-marks.

5. Integrated Circuit Topography Act

The Integrated Circuit Topography Act is amended to allow for protection for WTO members, without the necessity of a particular agreement or of publication of a notice of reciprocity in the Canada Gazette. In addition, the Act is amended by making it binding on federal and provincial governments and by specifying the terms and conditions under which governments may make compulsory public non-commercial use of layout designs for integrated circuits.