INTELLECTUAL PROPERTY

Increasingly the most important assets of a business are its intangible knowledge and information. The processes for making its products, the ideas for the products themselves, the name and logo that is used and the goodwill attached to these, the customer lists, and the service manuals may be harder to replace than the physical assets of the factory or office.

Various types of intellectual property rights can be used to protect these assets. They include patents, trade-marks, copyrights, industrial designs, domain names, trade-secrets and confidentiality. We have experience in all of these areas.

Trade-marks and Domain Names

Trade-marks must be protected separately in each country. We have experience in applying for trade-marks in Canada and in coordinating multi-national applications, particularly in Asia. We also have experience in overcoming the objections of examiners in the Canadian Intellectual Property Office ("CIPO") and other intellectual property offices, and in overcoming oppositions brought by third parties. One of our publications on protecting Chinese character trade-marks is used by the intellectual property office in Taiwan for teaching purposes.

We have experience in enforcing trade-mark rights against infringers and counterfeiters through both negotiations and Federal Court actions. We also have experience in both applying for and defending against Canada's so-called "official marks".

We have successfully defended trade-marks that were primarily used on a web site, have experience acting on both sides of expungement proceedings.

We increasingly assist foreign clients with domain name matters in Canada and other jurisdictions.

Copyright

Copyright is generally protected internationally by treaties, so that a foreign copyright holder may enforce its rights in Canada without further formalities.

We have experience in registering copyrights in Canada, and in preparing opinions and advising clients on the scope of the protection afforded by copyright. We have acted for clients in cross-border disputes and in enforcement actions against infringers.

Patents

Although we are not patent agents, we have experience in advising clients in patent disputes, including having assisted a pharmaceutical client in successfully appealing to the Supreme Court of Canada to overturn the decisions rendered against it in the courts below.

We have also assisted clients in cross-border patent disputes, particularly where the there are issues regarding abuse of patent rights or over anti-competitive activity.

Trade-Secrets and Confidential Information

Canada does not have a separate law protecting trade-secrets, as there are in the U.S., so this type of intellectual property is protected primarily through contractual provisions and/or the actions of the owner.

Advice in these areas is a regular part of our licensing, distribution and franchising practice. We also have experience in assisting a European client using only trade-secret protection for its processes to establish a plant in the U.S. and experience in protecting trade secrets in China.

Our Publications and Updates in this Area are available as Resources.