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Acceleration of COVID-related Trademark Applications

It is now possible to seek expedited review of Canadian trademark applications for protection of COVID-19 related trademarks. Grounds to receive special treatment of an application include:

a court action is underway in Canada with respect to the trademark;

the applicant is trying to combat counterfeit products at the Canadian border; or

a Health Canada approval for use of the goods or services is in process or completed.

The recent CIPO Practice Notice is located here: http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04872.html

Given that regular examination of Canadian trademark applications is currently taking over 24 months, the ability to accelerate should be helpful for applicants in this fast-moving technology field.  Please contact us if you have questions or need assistance with this or other IP matters.

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Protecting your IP Assets as a Part of your Exporting Strategy

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Intellectual property (IP) rights include various types of intangible corporate assets which you will want to protect and use and exploit on a daily basis in your business.  These include trademarks and design rights, copyright, patents, trade secrets or confidential information, and other categories of rights. Even the smallest companies have such proprietary information and proper protection for these IP assets can enable companies to get the most out of their branding.  As you prepare to export your products and services, there are many considerations that go into the development of a fulsome exporting business plan, and you will want to be sure to have an international IP strategy in place that aligns with your commercial objectives. 

A starting business planning recommendation is to conduct an IP audit.  This consists of assembling a list of key IP items that your company already owns, or might wish to protect in the future, as well as some understanding of their relative importance. You can assemble a basic IP inventory on your own, or you can enlist the assistance of an IP lawyer to help you to assemble this information.  Regardless of how you build it, this will be an important asset for you in the understanding of the relative placement of IP in your company.  With an inventory in hand, international strategic planning can be started.

One of the things that exporters must keep in mind is that the laws of each country are different with respect to the protection of various types of IP.  Certain types of IP assets are protectable, or not, by statutory IP rights or registrations in some countries.  Presumptions of ownership can vary by IP type and country, and the like. For example, the patent law in Europe is different than the patent law in Canada and the US on the patentability of computer software.  In another example, assets registered as trademarks in some countries might be protected by copyright in others. Dependent upon the geographic footprint of your marketing plan, and the nature of IP assets to be protected, localized legal awareness is necessary to ensure that the right protection is understood and used.  Building an IP plan that accommodates local legislative requirements or options is a significant competitive advantage to your company.  This can also help in terms of prioritizing your foreign plan (since virtually no company has an unlimited legal budget and depending upon your overall export decision matrix and the relative strength of local laws, you can try to “get the most bang for your buck” in terms of your legal spend through such awareness).

Particularly where your IP assets are not ideally protectable locally under the law of the country in question, contracts with customers, distributors and other parties become paramount in importance as a supplemental layer of protection (even with respect to trade secrets and other confidential information – customer lists, corporate information etc.).  These are again subject to local law and should be considered with local legal counsel at the time of their creation.

Two other key planning factors in your international IP protection strategy are the timing of your overall market entry plan, local business model, as well as relative costs or budgeting.  Your IP strategy should accommodate your overall business timeline – for example if you plan to be in a particular geographic region in three years, and it will take two years to register and protect your IP assets there, these relative timing indicators can dictate the appropriate times for the triggering of foreign protective actions as well as being used to best inform your budgeting in terms of costs.  Knowing when things need to be triggered and finished, and understanding the nature of the relative timelines can help to develop a most accurate budget of costs and other corporate resources required in this area.  Another timing element to consider, particularly in the trade secret or patent space, is that certain home market decisions about disclosure, filing or otherwise can have positive or negative effects on your ability to protect in foreign markets at a later date, and this should be factored into your planning as well.

As the geographic footprint of your business expands, it is important to ensure that your have taken the appropriate measures in foreign markets to protect your IP assets in order to enjoy the maximum economic benefit of your intellectual creations.  Aligning your IP strategy with the remainder of your business plan, rather than simply protecting IP for the sake of doing so in a list of indeterminate foreign markets, will yield a plan this is more easily understood and executed throughout the organization.  You should consider consulting an intellectual property professional to put yourself in the best shape on these points.

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Branding & IP Protection in Export Transactions

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Branding & IP Protection in Export Transactions

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As an exporter there are many different legal issues which can arise as you sell your goods or services abroad, from trade finance issues to local warranty and customer protection laws in your export markets.  One of the key concerns for any exporter should involve ensuring that your brands, and other intellectual property (“IP”) assets of your company (patents, etc.), are protected as the geographic footprint of your business expands into new foreign markets.  Laws vary from country to country, so as a company stretches its wings into new markets or territories, an understanding of local IP laws and protections is key.  This article is intended to identify some of the areas in which exporters can avoid or minimize downstream problems with infringement or dilution of their brands or other IP rights.

 

IP Inventory:

One of the most important IP rights for any exporter to protect as you expand business outside of Canada are the trademarks used to identify your products and services.  You invest large amounts of time and resources into building brand awareness and equity and it is important to extend the protection of your brands in your foreign markets .  Thought of another way, what would you do if, upon arrival in a foreign market, you discover that you cannot use your product name because someone else is using the brand in that jurisdiction without your knowledge or consent?  Trademarks or brands which you might use and protect include your business name, product names, logos, slogans and the like.

Just as important is to determine what other categories of proprietary information or intangible rights you have which you may wish to protect.  These might include:

  • Patents, copyrights, trademarks or other registered or unregistered intellectual property rights;
  • Confidential information including customer lists, business strategy and documentation;
  • Business contacts and relationships; or
  • The IP of third parties which you have licensed or use, and for which you might have an extended obligation to protect.

Many of these rights can be protected by registration under the laws of the countries in which you are selling, and in cases where registration is not available other methods including contractual provisions and the like can be employed in an overall strategy.

 

 

It’s YOUR name:

From the trademark perspective, as well as with respect to other IP rights, there are certain steps necessary to maintain ownership and exclusive control.  For example, any in-market use needs to be properly licensed and controlled.  This can become particularly problematic if at some point your local distributor relationship needs to be terminated or re-aligned and the local partner has created by virtue of uncontrolled local use a conflicting or even superior position to the ownership of your trademarks by becoming associated with the brands in the minds of local consumers.  These are all things which can be addressed in your overarching IP strategy and appropriate written agreements.

Another advisable step to take on market entry is to register your trademark or other IP rights in countries of commercial importance to you.  A local trademark registration will often provide a good first line of protection for the defence and enforcement of trademark righs.  Particularly in light of the fact that registration can take months or even years to complete, it is advisable to pursue the process early and budget accordingly as a part of your market entry planning process.  Indeed, this advice is equally applicable across patents, copyrights and other IP rights in addition to trademarks as well.

Is there someone already using a similar trademark in the business, so that your market entry would infringe their rights and place you or your distributor or customers at risk?  Are there competitive patents or other IP positions in the local market than could affect your ability to do export business there – in certain countries a competitor with an alleged infringed IP position may even be able to have your goods stopped at the border by customs authorities.  How you proceed with your market entry is a business decision, but searches for these types of IP information can give you a better ability to fully weight any risk factors related to your IP position on market entry – not only from the perspective of someone else potentially infringing your rights but also from the perspective of avoiding infringing the rights of others.

Local market entry in foreign countries may also entail localized branding (i.e. through use of non-Latin characters, translation, etc.).  Before doing so, consider conducting local trademark availability searches.  Understanding how your proposed brand might be accepted either legally or in terms of local business custom should also be considered since there are many branding horror stories where a company innocently adopts a brand and later finds that it offends the principles, culture or custom of a local population, resulting in a re-brand, apologies, and loss of goodwill.  Trademark search and clearance activities are something that IP legal counsel can assist you with, and they can typically be completed time- and cost-effectively within the scope of your plans.

 

Contract issues:

Are you using a local partner or distributor, shipping directly to end customers, or some other hybrid approach?  Each type of relationship will require a slightly different contractual approach to protect your IP rights, and protect your channel and your customers.  Opinion of local legal counsel, sought at the right time(s) will be key to tackling any concerns.  For example, when establishing a “distributor” channel in a market it is important to seek the advice of independent local counsel, and not simply accept the advice of your proposed local partner since you will want to ensure that the advice you receive is unequivocally targeted to your protection since if the local relationship becomes tenuous or needs to be terminated  you will not want to be in a position where the validity or ownership of your IP rights can be impacted by your (former) in-market partner.  The amount of work which is done on some of these points may be dictated by the nature and size of your IP portfolio and your present or planned market presence, but it is always a sound business decision to consider these issues as part of your overall marketing and export plans.

 

The right IP strategy will fit your business plan rather than dictate it – some of the key business considerations in defining a proper export IP protection strategy include:

  • The countries of interest and the timeline for your market entry plans;
  • The nature of the products or services that you sell, or plan to sell in the future;
  • The type of distribution channel that you have or intend to establish; and
  • An inventory of the IP rights associated with your products or services for sale.

Seeking to register and protect your brands and other IP rights as you expand your business to other countries can protect you over the long term as you add the legal ‘weapons to your arsenal’ to deal with infringements or other problems that might arise.  An investment in careful diligence and IP protection strategies while  setting up an exporting framework proves the old adage that an ounce of prevention prior to market entry can save you a ton of headache later on.

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Restricting availability of time extensions in trademark cases

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Canadian trademark practitioners and trademark stakeholders of the Canadian Intellectual Property Office (CIPO) will be impacted by a recent policy change in the CIPO related to extensions of time for response to various office requirements.  A new Practice Notice was issued by the CIPO on January 17, 2020 which will have the effect of significantly restricting the availability of extensions of time for responses to various examination reports and requests for information from CIPO to trademark owners.  If you would like to read the Practice Notice in its entirety it can be found at:  http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04736.html

Extension
of time to respond to Examiners Report:

Effective
immediately, CIPO will no longer grant an applicant an extension of time to
file an office action response without demonstrating exceptional circumstances
supporting the request.  Failing a timely
complete response to an examiner’s report or a request for extension containing
demonstrated exceptional circumstances within the typically provided six month
deadline, applications will be considered in default.

The
practice notice outlines a number of categories of exceptional circumstances
considered by the CIPO to be satisfactory examples, including the following:

  • Recent
    change of trademark agent;
  • Circumstances
    beyond control (sickness, death, bankruptcy etc.);
  • Pending
    transfer of ownership which would overcome a confusion objection;
  • Opposition
    or Section 45 – cited trademark is the subject of a pending opposition or
    section 45 expungement proceeding;
  • The
    applicant is in process of actively negotiating a consent from the holder of an
    official mark;
  • The
    applicant is in process of division of the international Protocol registration
    on which an application is based and is waiting on IB confirmation of the
    divisional;
  • A
    single extension can be requested to provide more time to file a proper
    response to an objection in respect of an application which is subject of an
    indication of a potential refusal; and
  • A
    single extension can be requested to extend the available time to compile
    evidence of distinctiveness to respond to a non-distinctiveness objection.

Former
practice has been that a first extension of time of six months was typically
provided without demonstration of exceptional circumstances, for example in
cases where counsel were unable to receive instruction for an extended period
of time, or cases where international multi-party negotiations were
underway.  Practitioners will need to
adjust to the non-availability of such extensions, and it would even appear
that best efforts to at least partially respond to a report where a complete
response is not possible will not be considered acceptable insofar as the
practice notice indicates that a complete response is required to avoid the
default of an application.

No fee is payable
in respect of a request for an extension of time to respond to an office
action.

The new extension practice will only apply to
office actions issued after January 17, 2020.

Extension
of time to respond to s. 44.1 request:

Canadian trademark
holders recently began to receive requests from the CIPO pursuant to Section
44.1 of the Trademarks Act to apply the Nice Classification of goods and
services to listings of products and services contained in extant Canadian
trademark registrations.  This change in
extension of time practice will also apply to the response to these section
44.1 classification requests.

A response
to a s. 44.1 request is typically due in six months, failing which a
registration will be expunged. The only acceptable grounds for exceptional
circumstances listed in the practice notice with respect to this type of case,
which could result in the ability to justify a single six month extension of
time, are the recent change of the trademark agent of the owner, pending transfer
request related to ownership of the trademark, or circumstances beyond the
control of the person concerned (sickness, death, bankruptcy etc.).  There is a fee payable for request for an
extension of time of this deadline which is currently $125.

These changes will be of particular interest to trademark applicants and owners involved in multijurisdictional portfolio management or cases with complicated competitive matrices, where negotiations with third parties or multiple layers of instructing principals are present in cases extending the time required for instructions or response.

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IP Strategy in the Boardroom

Every corporation has and creates IP assets. Occasional strategic review and oversight of IP initiatives by the board of directors is appropriate and important.   The importance of the IP assets of the company fits within the larger context of enterprise strategic planning and the board should ensure that IP strategy is in line with the remainder of the corporate structure and plans.  

Factors defining IP risk profile:

The degree and nature of IP issues faced by a company can vary based on a large number of factors, including:

  1. Industry – companies in some industries will rely more heavily on IP than others and companies in IP-intensive industries will most appropriately see IP strategy and issues visit the boardroom more often;
  2. Competitive landscape – if the corporation is involved in a business vertical where competition relies upon IP protection and IP-based product or service differentiation;
  3. Innovative positioning of the corporation in relation to peers; and
  4. Importance of IP assets of the corporation to the profitability of product or service lines.

What are the questions to ask?

What are the key IP assets:

xxx

Clearance and avoidance strategy:

The sufficiency of IP clearance and avoidance measures and protective considerations in the new product development workflow of the corporation is also a strategic area in which the Board should gain reasonable assurance of management’s plans and operations.

Related to product development and other business development plans of the corporation is the general position which the corporation elects to undertake with respect to their IP portfolio and the IP assets of competitors. One analogy to consider is the placement of the corporation, in terms of the type of IP position taken, along a spectrum anchored at one end by a purely defensive strategy, centred around freedom to operate and avoidance of third party IP rights, to the opposite end of the spectrum in which a corporation elects to take a more offensive strategy centered around intensive capture, development and exploitation of IP assets to either provide more aggressive exclusionary or competitive options or to add value to the company through increasing the size and depth of the IP portfolio.  This analogy of “pinning” the corporation to a point along a strategy scale oversimplifies the issues but is demonstrative of one thinking approach which might be taken both by management in development of an IP strategy as well as by the board in providing oversight and critique of same.

Even in terms of product development and similar issues, if certain new product pipeline items have potential IP clearance hurdles associated with them such as proximity or threat of action from third parties based on pre-existing IP, if those threats approach or exceed the predefined risk appetite or parameters desired by the board, there should be opportunity for the board to consider these items and provide guidance.  These types of issues might occur more often in an “innovation intensive” enterprise, and this is not to suggest that the board should insert their decision making in place of management, but both the board and the executive of the corporation should condition themselves to have a constructive look at these types of items should they arise, and as important as the discussions themselves to identify the existence of the issues to trigger appropriate followup.

Brand threats:

Insofar as the directors bear responsibility to assist management in crisis management and have a responsibility as custodians of the brand of the corporation, the board should be advised when brand-threatening IP issues such as large scale IP litigation or the like arise. Using IP litigation as an example, given the costs as well as the materiality of the potential economic outcome either in terms of damages awarded against a defendant or as a potential revenue item for a plaintiff corporation, management should work with the board to ascertain and provide appropriate ad hoc or periodic reporting in this area.

Summary:

There are many ways in which boards can satisfy themselves that they are applying appropriate stewardship and risk management principles to the IP position of the company, including for example through assigning various IP strategy issues into the ongoing enterprise risk management and monitoring matrix.

The best likelihood of success for IP initiatives which require wide cultural adoption begins with tone at the top, and it will be important throughout a corporation to see and feel that the cultural requirements for an IP capture plan, tech transfer strategy or the like is adopted by and driven down from the highest levels of the corporate hierarchy into the operational corners below.  This begins with and includes initiative, direction and buyin at the board table.

Directors should provide their varied insight and perspective to the development of IP plans at a strategic level, and insofar as the board will ultimately bear responsibility for the value which is or is not generated in the corporation from IP strategy decisions it is also important to gain a level of assurance on management’s development and execution of intellectual property strategy and plans.

Furman IP can help you as a director, board or management to develop and implement strategic management of the IP elements of your corporate strategy.  Let’s chat if you have questions!