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February 27, 2020January 9, 2021

International brand protection

Glass Globe In The Shopping Trolley Concept

Expansion of products, product lines or services, or entering into new geographic markets with your products or services, present planning issues as well as opportunities for international brand protection. In an ideal scenario where the product development arc or the geographic market plan is known several years out with some certainty at the time of development of a new product or service, it is possible to plan for the entry into these new areas at the appropriate times. For example, ensuring that your selected trademarks will be available in foreign markets when you want them, to minimize the possibility you will show up in a new geographic market and not be able to use your brand. In some cases it may be desirable to rebrand for local market convention and again in those cases, having the appropriate IP protection in place so as to minimize business disruption from IP problems or risks is the preference for most businesses.

The issues associated with product line or brand extensions can include the fact that trademarks selected for use with that product line may have been available for your use on the existing or initial offering, but the expanded business may encounter previous users in the market in question such that your selected trademark or other IP position is not available to you.

Similar to risks and issues associated with brand extensions are the entry into additional geographic markets. IP rights are jurisdictional in nature and so it may be the case that your trademarks for example are not available in another country, or there may be patents that exist in a foreign market that block your entry in a way that is not anticipated from your knowledge of your domestic patent scenario. It is not possible to always perfectly plan for all of these scenarios, but again it is possible to take reasonable steps to minimize the possibility that IP risks will arise or inhibit the company.

In some cases with the benefit of lead time, your IP strategy can anticipate entry into new industries or markets, so that you do not need to do remedial or curative work on your IP portfolio as you enter these new areas. We can assist companies in the timing as well as the development of brand and market extension plans insofar as they impact your IP position. As well we can help to design the appropriate business workflow steps to integrate IP-related market and brand awareness issues into your day to day business operations.

It is not always possible to proactively plan and so some of the scenarios with which we assist clients are market or product extension scenarios with allegations of encroachment or infringement of third party rights.

Interested in exploring international protection for your brand? Let’s chat.

February 26, 2020December 28, 2020

Trademark usage guide

You’ve successfully registered your trademark and want to ensure it retains its value over the course of its registration. The trademark usage tips below will help.

A trademark must distinguish your products and services from your competitors. A trademark can become too successful and become generic or synonymous with a type of product or service. ESCALATOR, KEROSENE, CORN FLAKES, LINOLEUM, and SHREDDED WHEAT are all examples of trademarks that became generic terms through general or improper use.

The following guidelines will help to ensure that your trademarks remain protected for your benefit. These guidelines apply to advertising, product literature, packaging and labels and any other place where the trademarks are used.

1. TRADEMARKS ARE NOT VERBS

If you use your trademark as a verb, you risk your trademark becoming generically descriptive of the activity to which it refers. For example:

Right: “Please send this package out by FEDEX courier”

Wrong: “FEDEX this package”

Right: “Make six copies for me on the XEROX copier”

Wrong: “XEROX six copies of this for me”

Right: “Please use TURTLEWAX protectant on my car”

Wrong: “TURTLEWAX my car”

2. DO NOT PLURALIZE A TRADEMARK

Trademarks are adjectives which describe nouns, they should not be used in plural form. Rather than pluralizing the trademark, the nouns which they describe should be pluralized.

Right: “Two MOLSON CANADIAN beers”

Wrong: “Two MOLSON CANADIANS”

In the case of trademarks which end in an “S”, the treatment should be no different. The mark should not be adapted to imply the singular tense by removing the “s”. For example:

Right: “A BAGGIES plastic bag”

Wrong: “A BAGGIE”

3. TRADEMARKS AND TRADE NAMES ARE NOT THE SAME

Trade names are names that identity an organization, whereas trademarks identify a product and/or service. While some trademarks are trade names,, other trademarks bear no similarity to the owners trade name. Trade names are proper nouns which can be used in the form of a possessive and do not require a generic modifier, and should not be marked with a trademark symbol. For example:

Corporate Name: “These shirts are made by Tommy Hilfiger Ltd.”

Trade Name: “These shirts are made by Tommy Hilfiger”

Trade Name: “Tommy Hilfiger’s newest jeans are for women”

Trademark: “Are those TOMMY HILFIGER jeans?”

4. TRADEMARKS SHOULD NOT BE USED IN A POSSESSIVE FORM

Trademarks should never be used in a possessive way, such as by adding “ ‘s”, unless the trademark itself is a possessive mark, such as “WENDY’S restaurants”, “LEVI’S jeans” or “PEAR’S shampoo”. Trade names, unlike trademarks, can be used in a possessive sense.

5. AVOID GENERIC USE – TRADEMARKS ARE PROPER ADJECTIVES

Properly displaying your trademarks will distinguish your mark from the generic language with which they are used. For example, trademarks should either be used with Initial Caps, used with “Initial Caps” with quotes, or optimally CAPITALIZED COMPLETELY. Generic terms should always appear after the trademark – e.g. “LITTLE CAESAR’S pizza”. At the very least the generic term should be used after the trademark at least once in each written communication and where possible or appropriate also in all broadcast matter. Preferably this should be the first time the mark appears. Some examples of this are:

FORD car;
“Kleenex” tissues;
DELL computer; or
Kodak film.

Additional emphasis can be placed on trademarks by using the word “brand” after the mark – example, “SCOTCH Brand transparent tape”. Proper marking, discussed below, should also be considered.

6. SHOW PEOPLE THAT YOUR MARK IS IMPORTANT TO YOU

While there are no mandatory marking requirements in Canada, additional emphasis can be placed on trademarks by using one of the universally acceptable symbols or methods of indicating trademark status. Some of the marking methods are as follows:

™ can be used for both registered and unregistered marks.
® can also be used for registered trademarks, but this mark cannot appear on any products or on any marketing material for products and/or services in other jurisdictions unless it is also registered there.

Still have questions about trademark usage? Get in touch!

February 26, 2020January 9, 2021

Trademark registration process

Many companies are interested in knowing what the trademark registration process looks like, before embarking on a filing project. The following is a visual overview of the Canadian trademark registration process, and the approximate time frames associated with the various steps:

Trademark search: the first step in the trademark registration process is typically to conduct some clearance or searching, to determine if there are any previously filed or registered trademarks or other relevant items in the resources that are searched by the trademarks office that would pose problems to the registration of your trademark.
Filing a trademark application: if the results of the trademark search step are positive candidate is determined to proceed with the protection of your trademark, a trademark application is filed before the Canadian Intellectual Property Office. The trademark application outlines the details of your claim to rights in the trademark, including delineating the classes of products or services in respect of which you wish to protect the trademark, and the details of any prior use etc.
Examination of the trademark application: following the filing of a trademark application by an applicant, an internal examiner at the Trademarks Office will conduct an internal search of the records of the office to determine if in their view the trademark is registrable within the channel of trade outlined in the application, both in terms of the general registrability criteria outlined in the Trademarks Act, as well as in terms of any prior rights in the trademark register which may indicate a possibility of consumer confusion. If the Examiner determines there are issues in terms of registrability, they will issue an objection and the applicant has an opportunity to respond.
Approval and advertisement: following the examination of your application if the examiner is satisfied that the trademark is registrable for use by the applicant in respect of the wares and services outlined in the application they will issue an approval notice. Following the approval notice there will be some formalities completed to allow for publication of the application in the Trademarks Journal. Publication of the application provides public notice of the details of the application as well as the fact that the Office has determined the application and the trademark to be registrable.
Public opposition of the application: Publication of the trademark application provides an opportunity for members of the public who may feel that they have conflicting or superior rights to a confusingly similar trademark in the same channel of trade, or who feel that there other bases on which the trademark application is not registrable, to file an objection or an “opposition” to the application. There is a public opposition period of two months following the publication of the trademark application, within which an opposition can be filed. If an opposition is filed the opposition process can take at least 18 months to be resolved. If no opposition is filed, the matter will move forward to allowance.
Finalizing the registration: Following the expiry of the public opposition period in respect of a trademark application, the last step of the trademark registration process is for the applicant to finalize their registration by payment of any final fees and satisfying any other final formalities. Once the registration is issued by the Canadian Intellectual Property Office, it is renewable in 10 year terms.

You need to file your trademark application in whichever countries or regions you wish to be protected but there is some level of international cooperation between countries and regions in terms of providing priority rights etc.

FOREIGN TRADEMARK REGISTRATION FILING BASIS

In many countries it is possible to file application for protection of a trademark based upon registration or adoption and use of the trademark in a foreign jurisdiction – for example you can file a trademark application to protect a trademark in Australia that has to date been registered and used in Canada. This gives us the ability in certain circumstances to protect trademarks that are not yet in use and there is no particular market entry plan for a trademark in the foreign market, but you wish to preserve your rights in the trademark and seek protection as quickly as possible.

PARIS CONVENTION

What this international treaty allows is for us to file an application in Canada and to defer foreign filings for up to six months without losing your filing priority, since what we can do within that six month filing window is to file in other jurisdictions of interest and claim rights and priority based upon your earlier Canadian filing.

If you wish to be certain of the availability of a trademark in multiple countries and you plan on relying on a Paris convention filing strategy it is potentially relevant to seek to clear the trademark in all countries of interest at the time of initial searching.

WANT TO LEARN MORE ABOUT THE TRADEMARK REGISTRATION PROCESS?

Don’t hesitate to ask us!

February 26, 2020January 9, 2021

Patent filing process

The patent filing process begins once relevant searches have been carried out and the patent strategy has been determined.

GENERAL PROCESS

A patent application in its entirety needs to describe the invention in sufficient detail to be understood by a person with ordinary skill in the technical field to which the invention relates (this fictitious person is nominally referred to as a ‘person skilled in the art’). The claims define the scope of your patent. The remainder of the document needs to substantiate the scope and contents of the claims – anything which is claimed but not explained or enabled in the remainder of the patent application is not covered by the claims. It is the claims of your patent which are interpreted by a court in any infringement action.

In most countries, the first person to file a patent application for a particular idea is the individual entitled to patent protection, versus the first to invent.

EXAMINATION OF APPLICATION

Once a patent application is filed, the next stage in the patent filing process is examination by the Patent Office in each jurisdiction in which it has been filed. In Canada it is necessary to specifically request the commencement of examination of the application, which can be done at any time up for up to five years after the date of filing of the application. It is important to recognize that patent applications are not simply approved as filed – at issue is the grant of an important monopoly right which can be legally enforced against others to exclude them from making, using or selling the patented invention. Applications are therefore subject to careful scrutiny by the Patent Office, who may reject an application on numerous grounds.

Examiners in each Patent Office will review the claims and disclosure to ensure that claim is only made to subject matter to which you are entitled, and that various formalities are met. Additionally, the Examiner assigned to the case, who will be a person skilled in the technical field of the invention, will conduct a search of patent and non-patent literature to see what if anything similar has been done previously in the field. It is entirely possible that the Examiner will then object to the contents of the claims or the patent application on the basis that the invention is not sufficiently different from the prior art to be entitled to patent protection. Exchanges between an applicant/agent and the Patent Office will occur at this stage, the applicant/agent making arguments and effecting changes or amendments as necessary to satisfy the Patent Office. If the Patent Office should reject some or all of your application, there are usually avenues of appeal available as well. You should work closely with your lawyer or agent in the drafting and review of your patent application and throughout the patent filing process, as you know best just what the scope of your idea is and what it includes.

In some countries, the substantive examination of the patent application will be conducted automatically by the patent office in question in due course. In other countries, it is necessary to pay additional fees and to initiate a request for the commencement of substantive examination of a patent application before the document will be examined by a Examiner in the patent office in question. In the United States for example, examination of patent applications will take place in sequence automatically following the filing of the application.

In Canada it is necessary to request the commencement of examination of the patent application before the Canadian Intellectual Property Office and to pay an additional fee for that to take place. The request for examination before the Canadian office can be deferred for up to five years from the date of filing of the patent application. Practically speaking with this means is that an applicant can, once they get their application on file, simply let their application lie for a while if additional time is required to focus on other commercial aspects of their project. Other commercial reasons why examination might be deferred may be to further deferred the incurrence of additional significant costs in the examination process, or to stretch out to the greatest degree possible the length of the “patent pending” period if it is anticipated that there will be difficulties in obtaining an allowance of the patent application.

CONFIDENTIALITY PERIOD

In Canada, the United States and most other countries, there is an 18 month confidentiality timeframe following the filing of a first patent application, within which the contents of the patent application will not be available to the public. As such, following the filing of either a provisional/incomplete or a complete patent application, patent applicant can enjoy up to 18 months of secrecy around the contents of their patent application if they wish to do so.

February 25, 2020January 9, 2021

Computer Software

Closeup of programming code and language

Companies wishing to develop or exploit computer software, or e-commerce methods and the like, typically find themselves protected by copyright in their software code as well as by the possibility of filing one or more patent applications directed to their methods. I have assisted clients with the development of protection strategies around a large number of e-commerce and other types of computer software methods in the past. The patentability of computer software and business methods varies from country to country – in Canada and the United States there is some scope of protection available for many types of software and business methods in terms of patents, whereas in many other corners of the world this is not the case. We have experience in assisting clients with the creation of protection strategies for software and business methods across a variety of markets where different types of intellectual property protection is available.

Issues such as the intellectual property ownership of data and data structures also arise from time to time. For example, where a database company creates a new database software tool, do they necessarily also own the rights to the underlying dataset which is used. Other issues which arise quite often in the context of the computer software industry include issues of ownership around copyright and other intellectual property asset classes – since many times companies use contractors or other third parties to outsource parts of projects and that is important for all the parties to a particular transaction to understand what kind of ownership structure or restrictions might exist on work product which is created. Default statutory ownership provisions vary from country to country and intellectual property type and it is important for software companies to understand this and to capture any necessary information or documentation as projects are developed to ensure that they have whatever is necessary in the long term to enable their forward progress with their intellectual property intensive projects or assets.

Beyond ownership and asset types, other issues which can exist and a rise in the computer software context include trademark and copyright issues around website content. Websites or other computer software platforms or projects often include the creation of a large amount of copyright or trademark content and it is important to again have a proper framework and protective strategy in place for these assets. Conflicts between trade marks and domain names are sometimes encountered in the website development and design process as well and this is another aspect of emotional property legal advice with which we can assist clients as required.

We have assisted software companies with the creation of both locally hosted as well as ASP or SaaS business models and licensing arrangements and the implementation of IP strategies around these different client delivery approaches.

Let us know if you would like to learn more about IP protection for your software.

Tag: Status-AJH SEO Review completed

International brand protection

Trademark usage guide

1. TRADEMARKS ARE NOT VERBS

2. DO NOT PLURALIZE A TRADEMARK

3. TRADEMARKS AND TRADE NAMES ARE NOT THE SAME

4. TRADEMARKS SHOULD NOT BE USED IN A POSSESSIVE FORM

5. AVOID GENERIC USE – TRADEMARKS ARE PROPER ADJECTIVES

6. SHOW PEOPLE THAT YOUR MARK IS IMPORTANT TO YOU

Trademark registration process

FOREIGN TRADEMARK REGISTRATION FILING BASIS

PARIS CONVENTION

Patent filing process

GENERAL PROCESS

EXAMINATION OF APPLICATION

CONFIDENTIALITY PERIOD

Computer Software

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