Intellectual Property Information

By Vanessa DeDominicis

We would like to take this opportunity to provide you with important information about protecting your intellectual property rights.  This information is designed to assist you in evaluating your needs in that area.

WHAT IS INTELLECTUAL PROPERTY?

Intellectual property consists of original items that you have created, or that have been created for you, that are unique and that provide you with an economic benefit. Intellectual property includes inventions, designs, logos, trade-marks, original works of authorship and trade secrets. How you protect your intellectual property depends on what types of intellectual property you have.

Trade-marks and other intellectual property rights, such as copyrights, patents, industrial designs, and Internet domain names can be extremely valuable assets for your business – possibly among the most important it possesses. Your intellectual property can set your business apart from its competitors and offer customers something new and different. Further, not only will your intellectual property form an essential part of your marketing or branding, it can also be sold or licensed, forming a lucrative revenue stream. Consequently, losing the rights to these intellectual property items can devastate a business.

You may be surprised at how many aspects of your business can be protected under intellectual property law – its name and logo, designs, phrases, symbols, or a combination of words, phrases, symbols, or designs that identify and distinguish your business from other businesses can all be types of intellectual property.
 
WHY SHOULD I PROTECT MY INTELLECTUAL PROPERTY?

Trade-marks are becoming increasingly important to businesses in an era when the availability of goods and services is constantly increasing. A trade-mark will give your company a competitive edge by differentiating your goods and services from the goods and services of your competitors.
Further, a trade-mark will also benefit your consumers. Whether consciously or sub-consciously, it will provide them with a memorable way to identify your specific goods and services next time they need to purchase them. As with any successful business, consumers will begin to trust your brand name and your trade-mark will become associated with product reliability and service quality.

Trade-mark registration is not mandatory in Canada but does provide many significant advantages, including the following:

• Registration is direct evidence of ownership, and can be essential in protecting an internet domain name;
• In a dispute, the registered owner does not have to prove ownership; the onus is on the challenger. Use of an unregistered trade-mark can lead to a lengthy, expensive legal dispute over who has the right to use it;
• A registered trade-mark can be enforced throughout Canada, regardless of whether it is being used or enjoys goodwill in any particular area. An unregistered trade-mark can be enforced only in those areas where it has actually been used sufficiently extensively to establish goodwill;
• The owner of a registered trade-mark may initiate legal action for infringement proceedings. The owner of an unregistered trade-mark may not initiate trade-mark infringement proceedings, but must rely on common law "passing off" proceedings, which subject a plaintiff to a much more onerous burden of proof.

To exploit your intellectual property fully, it makes strong business sense to do all you can to secure it.  If you act now to protect your rights via registration on the Trade-marks Register, you can avoid financially devastating situations in the future where you may have to defend your unprotected intellectual property rights, with no guarantee of success.  Imagine if, at the end of a lengthy legal battle for your name, the judge decides in favour of the other party and you are forced by Court order to change your name. Think of the investment you will have made in the branding of your operation; marketing, stationary, business cards, advertisements, signage, goodwill, memorabilia and every other corporate aspect of operation. After 10 years of building up a successful business, you have to change your most important asset, your name. For example when the consumer nickname, "Coke," was officially adopted by the Coca-Cola company, a local business was stopped from selling "Koke-Up!" Any goodwill they had built up through years of carrying on business in their Community was immediately destroyed.

PROTECTING GOODWILL

Companies that offer valuable products and services at fair prices work hard to build consumer loyalty. When they succeed, consumer goodwill generates repeat business and referrals. Trade-marks guard goodwill and businesses who invest heavily in consumer goodwill must understand how to protect their investments via trade-mark registration. Well-chosen marks become more valuable as goodwill grows. Trademarks are often the most important assets of established businesses. For example, imagine the loss if the company that owns "Pepsi" had to give it up. The work and cost involved to re-market Pepsi with a different name and build up customer loyalty all over again would be enormous.

OUR INTELLECTUAL PROPERTY SERVICES

Pushor Mitchell LLP is proud to offer a wide variety of cost effective intellectual property legal services to our clients. It is never too early, or too late, to obtain protection for your intellectual property assets.  

In the event that you feel trade-mark registration is appropriate for your company, then the services that Pushor Mitchell LLP is able to provide to you are as follows:

• Opinions regarding the availability and use of trade-marks, certification marks and official marks;
• Draft, file and prosecute applications for the registration of trade-marks, certification marks and official marks;
• Conduct investigations and provide opinions on trade-mark infringement; and
• Protect and enforce trade-marks through litigation services before the Canadian Intellectual Property Office, The National Arbitration Forum and the Courts.

In the event that you feel copyright registration is appropriate for your company, then the services that Pushor Mitchell LLP is able to provide to you are as follows:

• Draft, file and prosecute applications for the registration of copyright;
• Conduct investigations and provide opinions on copyright infringement;
• Protect and enforce copyrights through litigation services before the Canadian Intellectual Property Office, The National Arbitration Forum and the Courts.

In the event that your company requires advice in relation to other intellectual property rights that you feel it may have, Pushor Mitchell LLP will:

• Obtain, leverage, protect and enforce all intellectual property rights, including industrial designs, distinguishing guises and Internet domain names;
• Draft and negotiate business contracts for licensing, acquiring or selling intellectual property;
• Conduct intellectual property inventories and audits;
• Provide advice on the management and protection of all intellectual property rights;
• Provide opinions regarding the availability and use of all intellectual property;
• Provide intellectual property portfolio management and strategic planning advice.

In the event that your company requires advice in relation to the creation of a website, Pushor Mitchell LLP can:

• Provide advice and assistance in the selection and protection of your domain name. Domain names function as the address for a web site, and disputes over domain names have become more common and more heated as the popularity of the Internet grows. Choosing a good domain name is increasingly important;
• Provide advice and assistance in protecting your domain name. In order to better protect a domain name and to avoid losing a domain name, we would advise that you obtain a trademark registration on your domain name; and
• Provide advice and assistance in drafting various on-line documents such as your website terms and conditions, your privacy policy, your linking permissions and your copyright notices.

COST AND TIME-FRAME

It is extremely inexpensive to register a trade-mark. The lump sum cost would be a minimum of $2,000 up to a maximum of $2,500. Registration provides protection within Canada for renewable 15-year periods. In other words, to protect your intellectual property rights for that duration, your minimum investment would be $150 a year and your maximum investment would be $200 a year.

Generally speaking, the period required to obtain a straight forward trade-mark registration is approximately 12 – 18 months.

U.S.A. AND INTERNATIONAL PROTECTION

Canadian trade-mark registration will not protect your rights in other countries. Your Canadian registration will simply protect your mark within Canada. Therefore, if your products and/or services are, or may be, sold/available in other countries, you should consider applying for foreign registration. Our office is able to process U.S.A. trade-mark applications and can assist you with the process in many other foreign jurisdictions. Please contact us if you would like more information on foreign trade-mark registration.

CLOSING COMMENTS

Determining whether a trade-mark is available for registration involves assessing a number of factors, including the similarity of the trade-mark to other business names, corporate names, trade-marks and domain names with respect to appearance, sound and ideas suggested.  Other factors are similarity of products and services, channel of trade and marketplace.  If you decide to proceed with an application, please keep in mind that the examination process is highly subjective and we cannot provide you with guarantees. 

If the information contained herein is of interest to you, please do not hesitate to contact one of our intellectual property lawyers who would be happy to discuss these matters further.

Blair Forrest at: forrest@pushormitchell.com or (250)869-1160
Vanessa DeDominicis at: dedominicis@pushormitchell.com or (250)869-1140