Intellectual Property

Intellectual property can be for many businesses and charities one of its most important assets. Many businesses and charities invest heavily in IP and are increasingly understanding the importance of leveraging and protecting this asset. Blumberg Segal LLP can help you create and protect your intellectual property especially in the areas of copyright, trademarks, and trade secrets.

Trade Mark


A trade-mark is a word, symbol, design or logo used to distinguish a business or charity's wares or services from those of other businesses or charities. Trade-marks not only represent the wares or services of a business or charity but also its goodwill and reputation. A trademark can be the most valuable asset of a business. It is important to register trademarks in order to protect from misuse.

There are three basic types of trademarks namely "ordinary marks", certification marks (dealing with a defined standard) and distinguishing guises (which identify the shape of wares or their containers, or the mode of packaging wares).

A trade mark is not the same thing as a trade name. A trade name is a name under which a business or charity is operated and it provides almost no protection to those using the trade name. In fact many different people can use the same trade name at once.

It is true that one can have an unregistered trade-mark and in certain circumstances you can establish that you own a trademark in court under common law. This is a very expensive proposition and very difficult to predict whether you will be afforded such protection.

On the other hand a registered trademark gives a business or charity the exclusive right to use the registered trademark in Canada for 15 years. It is renewable every 15 years thereafter as long as it is still being used in Canada. Registration is prima facie evidence of your business or charity's ownership. In a legal dispute, the registered trademark owner does not have to prove ownership; the onus is on the challenger.

Unfortunately, trademarks are national in scope and if you wish to have trademark protection you need to seperately register it in each country that you are planning on using or are using the trade mark.

Many people think of trade marks as necessary to protect the name or logo used in association with their business or charity. However, one of the most important reasons to have a trademark is to in fact prevent someone else from getting the trademark and then requiring that you either stop using the name or logo or pay a licencing fee. As well it is important before starting a business if you are going to invest money, time and energy, in the name, logo and goodwill to have a proper trademark search conducted to try to determine whether anyone else has the right exclusively use a name or logo. If someone else has a trademark you are better off finding another name or logo.


There are a number of stages to obtaining a trademark:

Trademark Search – a search is conducted to ensure that no one else already has the trademark.

Prepare trademark application – a trademark application is prepared by the lawyer/trade mark agent in consultation with the client and reviewed by client.

Filing of trade mark application with the Canadian Intellectual Property Office with filing fee.

The Trade Mark office sends a proof sheet which is checked to ensure that the information on the trademark application they have put in their database is accurate.

The Trademark office assigns an examiner to examine the trademark application. The examiner advises as to why a trademark cannot be registered or what changes are required.

Advertising - After the examiner is satisfied with the application the trademark is advertised in the Trademarks Journal.

Opposition – individuals, business, charities etc. can oppose a trademark application within two months of advertising by filing a statement of opposition which the trademark application can contest.

Allowance – if there is no opposition or the opposition is unsuccessful then the application is allowed for registration.

Registration – if the trademark is an actual use application then after payment of a fee a certificate of registration will be issued. If the trademark is a proposed use trademark a declaration of use will need to be filed by the applicant along with the fee.

Do you require a lawyer or trademark agent to make the application? No you do not require a lawyer or trademark agent but most businesses or charities hire a trademark lawyer or trademark agent in order to deal with the increasingly complicated and important field of trademarks. If the application is submitted incorrectly, or if problems are later discovered it can result in the application failing or a dramatic increase in the amount of time to obtain the trademark. Many clients only realize how complicated the area is after they receive correspondence from the Trademarks office after examination. It is substantially more difficult and costly to fix an application compared to having it properly prepared in the first place.


How much does it cost to register a trademark? It depends on factors such as how complicated the trademark is, whether any opposition is made to the trademark and how much time is required. Even a simple trademark application takes 2-3 years. The costs involves disbursements such as $200-300 for a proper trademark search, a $250/300 application fee to CIPO and $200 for a certificate of registration to CIPO, if your trademark application is successful. There are also the costs of the lawyer or trade mark agents times dealing with the application which are typically between $1500-$3000.



Copyright

Copyright applies to all original literary, dramatic, musical and artistic works. In general, owning the copyright means the owner has the sole right to produce or reproduce a work or a substantial part of it in any form. Protecting your copyright material can be easily accomplished by proactively facing the intellectual property issues in your contractual relations including in non-disclosure, employment, licence, services, consulting and other agreements. Unfortunately, many businesses and charities find out after they have entered into or concluded for example a consulting agreements that unless the agreement provides for assignment of copyright then the copyright is held by the author, ie. the independent contractor. This is not the same for an employee.


Your business' trademarks should also be protected by applying for a trade mark registration with the Registrar of Trade Marks. At Blumberg Segal LLP our trade mark agents and lawyers can help you in a cost effective way with the application and examination process and in obtaining trade mark protection. Our firm can also assist with enforcing your trade mark rights.


If you are interested in protecting your intellectual property please contact Mark Blumberg at mark@blumbergs.ca or call 416-361-1982 x. 237