An article written by Fortunat N. Nadima, Lawyer, Norton Rose Fulbright
Bianca Pietracupa, Lawyer, Trademark Agent, Norton Rose Fulbright

Innovators, do you know your intellectual property (IP) rights? In a knowledge-based economy, technical and scientific innovation puts greater value on cutting-edge ideas, information and practices – and the rights attached to these assets.

IP rights protect intangible assets resulting from the inventive and creative activity of the human mind by allowing owners to protect themselves from unauthorized appropriation of their assets by a third party. These rights provide a competitive advantage as IP owners can enjoy a monopoly or otherwise commercialize their IP by selling or licensing it to others.

There are many different types of IP, each with its own specific scope of protection. More than one type of IP may apply to your assets. We have outlined some questions to help you identify IP assets in your business.

How does your business express its identity?

Competition is fierce, so you have crafted a unique identity to attract customers and build up the goodwill in your business. Your business’ name and logo could be subject to trademark protection. A trademark can include a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture, the positioning of a sign, or any combination of these, when they are used to distinguish the goods and services of a person or organization from those of others in the marketplace.

A good trademark has a high degree of inherent distinctiveness. The most successful trademarks are coined terms or words that have no meaning in relation to the product or service they represent. For example, the word and design for “Apple” used as a trademark in connection with technology and software.

Trademarks confer the exclusive right to use the mark in a territory in association with the products and/or services. Therefore, a trademark owner can stop third parties from using marks that are confusingly similar to his or her mark. As trademark rights are tied to the use of the mark, it is not necessary to register a trademark in order to benefit from trademark protection. However, registration provides certain advantages. The registrant is deemed to have the exclusive right to use its trademark all over Canada and can sue for statutory trademark infringement. A person relying on an unregistered trademark is restricted to suing for the common law tort of passing off, which cannot be brought outside the geographical area where his or her trademark is used. A trademark agent and/or an IP lawyer can help you evaluate the scope and strength of your trademark rights and how best to protect these rights.

What do you do that others don’t?

IP can be closely linked to the unique, creative output of a person or company. Arising from the creation of an original work, copyright provides authors with protection over a wide range of works, whether literary (including computer programs), dramatic (such as a script, video clip, or choreography), musical, or artistic (such as photographs, drawings or plans). Copyright protection extends to the form of the expression of an idea but not the idea itself, therefore the work must have a fixed form in order to be subject to copyright.

Copyright can be described as encompassing both economic rights, which allow the owner to benefit financially from the use of his or her work by others, and moral rights, which protect the link between the author and the work, and includes the author’s right to the integrity of his or her work. Copyright protection arises without the need for registration and lasts until 50 years after the author’s death. However, registration may be desirable as doing so creates a presumption that the copyright subsists and that the person who registered it is the owner.

Functional features of technical innovations can benefit from patent protection. Patents provide temporary exclusive rights over inventions in exchange for the disclosure of those inventions to the public. Patentable inventions include any new, non-obvious, useful art, process, machine, manufacture or composition of matter, or any new, non-obvious useful improvement. A single product can include multiple inventions covering different technical or functional features (e.g., a component of the product, the use of that component in the product, or the process for making that component). Disclosing the invention to the public is an important part of the bargain as it allows other innovators to improve on the latest technological advancements.

Patent owners can prevent others from commercially exploiting the invention without their consent. This protection lasts 20 years from the date of filing of a patent application. Unlike copyrights or trademarks, a patent must be registered to benefit from the exclusive monopoly on the invention. Note that if you believe your invention may merit patent protection, make sure to keep it secret until after the patent application is filed. In Canada and the U.S., inventors have one year to file their patents after disclosing their inventions to the public while in other countries, inventors may lose the right to file if they have disclosed their inventions publicly. A patent agent can help determine whether your invention is eligible for patent protection and an IP lawyer can assist if you believe your patent has been infringed.

Industrial designs protect visual features of a product, such as shape, configuration, pattern or ornament or any combination of these features. Think of the distinctive shape of an iPhone or a BlackBerry, or a unique design for a bike. For many products, value is attributed not only on what they do, but how they look. Unless you register your design, you cannot make a legal claim of ownership, and you have no legal protection to prevent others from making, importing, renting, or selling any article to which your design is applied. To be eligible for registration, your design must be original and must not include a functional element. Registration of industrial designs provides a 10-year protection, starting from the filing of an industrial design application.

What do you know that others don’t?

Does your business have scientific or commercial information that gives it a competitive advantage? Would this information lose its commercial value if it were made public? Then you may have a trade secret. This type of IP relates to confidential information that has commercial value or provides a competitive advantage because it is known by few. Some examples include technical information, know-how, formulas, recipes like that for Coca-Cola, or market research data. Trade secret protection lasts as long as the secret is not disclosed. It is therefore protected via a number of practices aimed at achieving that goal. Steps can be taken to put security measures into place such as password-protected networks to limit access to confidential information. Consider working with an IP lawyer to implement contracts preventing unauthorized use or disclosure of confidential information by employees or business partners. Protect your business by requiring former employees and independent contractors to enter into non-compete agreements. If adequate protections are put into place, trade secrets can continue to exist indefinitely.

IP forms an important part of any company’s commercial value, more so in creative and technical industries. Be sure to accurately identify and protect your intellectual property in order to capitalize on your intangible assets.

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