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substantial part thereof in public or, if the work is unpublished, to publish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.
