Looking After Your Intellectual Property!

Whether you are a start-up, an established business, or an international conglomerate, keep innovating and look after your intellectual property!

In today’s global economy, it is more important than ever to keep one step ahead of competitors.  This requires, among other things, a consistent commitment to improve product quality, reduce production costs, and bring forward new and improved goods and services both to maintain existing customer loyalty and satisfaction, and to increase the customer base.  It is only innovative companies that strive to deliver greater value to customers that will succeed in the long run.  It is for this reason that intellectual property (“IP”) has, in essence, become the most important and valuable assets of a company.  Why? – various IP rights can, for instance:
  • Forge and protect a strong brand identity that communicates the value of your goods and services in the marketplace;
  • Prevent others from copying, making, using, selling or importing your innovations;
  • Be leveraged to obtain financing or capital to expand your business;
  • Be licensed to third parties to increase revenues;
  • Reduce the risk of you infringing the intellectual property rights of other businesses;
  • Provide a basis for collaborative research and marketing partnerships with other businesses, etc.
Unfortunately, many businesses do not understand the merits of protecting their IP.  The following gives a brief overview about various types of IP and the protection they afford so that you can determine whether such protection may be valuable to your business.

Copyright
In brief, copyright protects any original artistic and literary work (including computer programs/software, newsletters, books, manuals, artwork, advertisements, photographs, musical creations, movies, content on websites, packaging or labels, etc.) for the life of the author, the remainder of the calendar year in which the author dies, and a period of fifty years following the end of that calendar year.  The author of a work also has “moral rights” in the work – the right to the integrity of the work, and the right to be associated with the work as its author by name.

Copyright gives the owner of the copyright in the work the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever, to perform the work or any substantial part thereof in public or, if the work is unpublished, to publish the work or any substantial part thereof.  As a result, it is an infringement of copyright for any person to do any of these things without the consent of the owner.  In addition, it is an infringement of copyright for any person to, without the owner’s consent, sell or rent out, distribute, expose or offer for sale, exhibit in public, or possess or import into Canada a copy of a work for any of these purposes, which the person knows or should have known would infringe copyright.
Remedies for copyright infringement generally include damages (in general, lost profits) and a portion of the infringer’s profits [or alternatively, at the election of the owner, statutory damages in a sum of not less than $500 or more than $20,000 for each work], exemplary or punitive damages for egregious behaviour, an injunction (stopping the infringer from continuing his/her infringing activities), and delivery up of the infringing products.

It is important to note, however, that a copyright owner is not entitled to any remedy other than an injunction in respect of the infringement if the infringer proves that, at the date of the infringement, he/she was not aware and had no reasonable ground for suspecting that copyright subsisted in the work.  Such a defence is not available though if the copyright was properly registered at the date of the infringement … thus, a good reason to register copyright.

Industrial Designs
An industrial design is the features of shape, configuration, pattern or ornament, or any combination of those features, applied to a finished article, that appeal to and are judged solely by the eye.  Industrial design registration protects the form but not the technical function of the article to which the design is applied, and thereby contributes to aesthetic appeal and differentiation of goods in the marketplace.  It is therefore understandable that industrial designs are significant assets in the textile, fashion, automotive, consumer electronic devices, and consumer products industries, among others.  For instance, industrial designs can protect: game board designs; the shape and configuration of a cup lid, butter dish, bottle, or recycling bin; the design of a jacket, sunglasses or shoes; in-line skate designs; the shape of decorative molding; the pattern on a paper towel or fabric; the electronic icon ornamentation on a computer monitor; the shape and configuration of a portable multi-media device, or a case for carrying an electronic device; the shape, ornamentation and configuration of a tape measure or nail gun, etc.

To be eligible for registration, however, the industrial design must be original – it must not be identical with or so closely resemble any other design already registered so as to be confounded therewith.  Filing an application for registration of a design is fairly straightforward, and includes the submission of a sufficient number of clear and legible drawings or photographs (differing views) that show the entire article to which the design is applied in isolation.

Registration of a design provides the proprietor thereof with exclusive rights for a period of ten years.  In particular, without a license, no other person may make, import, sell, rent, or offer for sale or rent, any article in respect of which the design is registered and to which the design or a design not differing substantially therefrom has been applied.  Otherwise, punishment for infringement may include an injunction and the recovery of damages or profits, punitive damages, and the disposal of any infringing article.

Patents
A patent is granted for an “invention” - any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement thereof – for a period of twenty years from the filing date of a patent application, and grants to the owner of the patent, from the granting of the patent, the exclusive right, privilege and liberty of making, constructing and using the invention and selling it to others to be used.  But, in order to be granted a patent, an invention must be novel (never before published or publicly used), involve an “inventive step” or be “non-obvious” to a person skilled in the art to which the patent pertains, and be capable of industrial application (be functional and operative).

In Canada, patents are granted to the first inventor to file a patent application (which may be different from the first person to actually come up with the invention).  As a result, it is wise to file as soon as possible after completing your invention.  It is also important, however, that you not advertise, display, or publish enabling information about your invention before filing a patent application.  While Canada and the U.S. provide a one-year grace period for public disclosures before the filing of an application, other countries or regions (e.g. Europe) have a requirement of absolute novelty – any disclosure before filing negates the possibility of obtaining a patent (thereby allowing third parties to practice the invention in these countries without redress).
The patenting process itself is quite complex (and beyond the scope of this brief article), and requires both patience and usually a fairly significant outlay of money in order to be granted a monopoly by a given national/regional patent office.  However, the benefit of having a monopoly over the subject matter of the invention (as claimed) for a period of time is well worth the hassle, so to speak.  Remedies against infringing competitors may include an injunction (preventing them from making, constructing, using, selling, etc., the invention) and the recovery of damages or the infringer’s profits, punitive and exemplary damages, and the disposal or delivery up of any infringing products, etc.

In addition to the foregoing, it is very important to understand that patent databases themselves provide companies, executives, researchers, and other individuals alike with a wealth of information to better their business.  For instance, a proper search of patent documents can assist a business in:
  • Keeping track of what competitors are/will soon be doing/bringing to the marketplace based on their patent filings (thereby allowing you to “anticIPate” how you can address or work around competitor’s innovations);
  • Finding a solution to a technical problem that your engineers or researchers may be struggling with;
  • Obtaining new ideas for research in your industry and preventing duplication of research already undertaken by others;
  • Locating developments and trends in your industry to ensure you are keeping pace with innovation;
  • Locating patented subject matter that you could license from the patent owner for the purpose of improving your business, etc.
Trademarks
A trademark is, in general, a word (e.g. NIKE) or words (e.g. JUST DO IT), a design (e.g. the Nike swoosh or the McDonald’s arches), or a combination of these, that is used by a person or business for the purpose of distinguishing or differentiating his or her wares or services manufactured, sold, leased, hired or performed by him or her from those manufactured, sold, leased, hired or performed by others in the marketplace.  In other words, a trademark assists in advising customers and clients that a product or service comes from a particular source.  Registered trademarks are therefore essential assets (that last for perpetuity as long as a specified government fee is paid every 15 years from the date of registration) for the purposes of branding, marketing, and advertising to build trust and a relationship between a business and its customers or clients.

Of note, a trademark can also be a “distinguishing guise”, meaning the shape of wares or their containers (e.g. the unique COKE bottle), or a mode of wrapping or packaging wares.  Or, a trademark can be a “certification mark”, meaning a mark that is used to distinguish wares or services that are of a defined standard with respect to: (a) the character or quality of the wares or services; (b) the working conditions under which the wares have been produced or services performed; (c) the class of persons by whom the wares have been produced or services performed; or (d) the area within which the wares have been produced or services performed.  An example of a well-known certification mark is the CSA logo which identifies products that meet the Canadian Standards Association safety guidelines.

There are also newer types of trademarks, such as 3-dimensional marks, sounds, colours, short musical clips, and smells.  These “novel” trademarks often test the boundaries of what has traditionally been thought of as proper subject matter for a trademark.  That said, in Canada there is at least one trademark registered for each of these types of marks.

The trademark registration process itself is beyond the scope of this article, as is a discussion of whether a given trademark is even registrable.  For instance, the Trade-Marks Act pronounces that a trademark is not registrable if it is: “primarily merely the name or the surname of an individual who is living or has died with the preceding thirty years”; “clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares or services”; “confusing with a registered trademark”, etc.  Each of these factors involve legal tests that have been developed and applied by the Courts over time … thus the reason to use an experienced trademark agent.

About the author
Geoffrey North is an experienced intellectual property lawyer and is the founder of anticIPate Law, a leading intellectual property law firm in Canada (with practitioners in Toronto and Ottawa) that can assist clients of all sizes with all their IP needs on a cost-effective basis.