By Alison Wong

Intellectual property protection fosters creativity by rewarding innovators. Since inventions and works based on original ideas ultimately benefit the public, an owner of a patent or copyright is granted temporary, exclusive rights to produce, manufacture, distribute, and sell the invention or work. In turn, the rights owner typically reaps economic benefits. Our current system of intellectual property protection is thus based on individual ownership of rights. But does this system function equally well when the rights to knowledge or information are held by members of a community rather than by identifiable individuals?

According to the World Intellectual Property Organization (WIPO), traditional knowledge is a “living body of knowledge” that often forms part of a community’s cultural or spiritual identity. It is collectively developed, sustained, and passed from generation to generation within the community. In a general sense, traditional knowledge refers to the “content of the knowledge itself” and encompasses traditional cultural expressions and their associated signs and symbols. More narrowly, traditional knowledge also refers to knowledge that results from “intellectual activity in a traditional context” and includes “know-how, practices, skills, and innovations.” Similarly, while there is no universally accepted definition of traditional knowledge, the Government of Canada considers indigenous traditional knowledge to be the “know-how, skills, innovations, and practices developed by indigenous peoples related to biodiversity, agriculture, health, and craftsmanship.”

However, because it is collectively owned, traditional knowledge is difficult to protect using current intellectual property strategies. WIPO notes that indigenous people, local governments, and local communities are currently seeking intellectual property protections that can be classified under two key categories. Positive protection involves granting rights to communities that would enable them to promote and control the use of their traditional knowledge, thereby protecting it against commercial exploitation. Defensive protection aims to stop people who are not members of indigenous communities from acquiring intellectual property rights over traditional knowledge. For example, the United States Patent and Trademark Office ultimately revoked a patent that had been awarded to researchers at the University of Mississippi Medical Centre for the use of turmeric to treat wounds. The properties of turmeric were well-known throughout communities in India and had been documented in ancient Sanskrit texts.

​WIPO’s Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore is currently undertaking negotiations with the goal of finalizing an agreement on an international legal instrument that would ensure the protection of traditional knowledge. The Committee recently concluded its 41st Session and recommended that WIPO’s 2021 General Assembly recognize the importance of the participation of indigenous peoples and local communities in the work of the Committee. It will be interesting to follow further developments in this area.
​
To read more about this topic, please refer to the following sources:
https://www.wipo.int/tk/en/
https://www.wipo.int/tk/en/resources/faqs.html
https://www.wipo.int/pressroom/en/briefs/tk_ip.html
https://www.ic.gc.ca/eic/site/108.nsf/eng/00007.html

By Nitin Gomber and Paula Clancy

Business owners assume that incorporating a company is enough to secure a name and/or brand.  Not so. NUANS searches done prior to incorporation only offer limited information as to potential trademark obstacles that could arise.  Also, securing a corporate name does not guarantee that the name is available for use as a trademark. Provincial Ministries shift the onus of clearing a corporate name for use in commerce to business owners and specifically note that the incorporation of a company is not a defence to an infringement claim.

If the corporate name you have selected turns out to be confusingly similar to a trade name or trademark that was already in use in Canada, you could run into issues.  A recent case provides some insight in this regard. In Hidden Bench Vineyards & Winery Inc. v. Locust Lane Estate Winery Corp. 2021 FC 156, an Ontario winery incorporated under the name "Locust Lane Estate Winery Corp." was sued by another winery, Hidden Bench Vineyards & Winery Inc., that had been selling wines under the brand "Locust Lane" for several years. Hidden Bench argued that while its LOCUST LANE trademark was unregistered, it still had common law rights by virtue of its prior use, and that the use of the trade name "Locust Lane Estate Winery Corp." would lead to confusion with Hidden Bench's goods in the marketplace.   

Although the case was decided in Locust Lane's favour because the court determined that "Locust Lane" had geographic significance (i.e. it was the name of the road on which both wineries were located), and therefore could not function as a trademark, this is nonetheless a cautionary tale for businesses.  Had the words not had geographic significance, the outcome would have likely been much different. Either way, both companies spent considerable amounts litigating this issue before the Federal Court. 

To avoid these types of issues, it is strongly advisable to conduct comprehensive trademark availability searches prior to adopting a trade name or trademark. Searches will help you identify whether there are registered and unregistered trademarks, trade names, domain names, social media handles or other problematic references that could lead to issues down the road. The thoroughness of a comprehensive trademark search, properly analyzed by a trademark lawyer, can help you avoid liability at a relatively nominal cost, when compared to the costs of litigation.

​For further information on trademark searching, please contact us.

​Intellectual property (IP) and IP rights can be difficult to understand since they are intangible business assets. Here is a brief guide of IP basics, along with resources to learn more in-depth about IP.
 
What is Intellectual Property, and why is it important?

• Intellectual assets are any original ideas, inventions, or designs by a creator. These assets are intangible and are considered the creator's intellectual property (IP). IP can be protected through various Acts under Canadian law. For more information, see CIPO. 
• Protecting your IP is essential for businesses, as it helps you leverage these valuable intangible assets and enable you to prevent unauthorized use.
  • For example: registering a trademark for your logo will prevent other companies from using your logo—more on this in the next section.
• It is also critical to conduct due diligence before embarking on a new business venture to ensure that you are not infringing upon a third party's IP.  This could be quite a costly mistake for business owners. 
  • For example: if you start a business and then realize your invention has already been patented, you could be sued by that company that has owns the legal rights to that idea.

 
Understanding the types of IP
The Canadian Intellectual Property Office (CIPO) is a special operating agency under the Department of Innovation, Science, and Economic Development that delivers IP services in Canada. They also provide many educational resources to help understand IP.
 

• Trademarks
  • A trademark is a combination of letters, words, or designs that distinguishes one company's goods or services from others in the marketplace.
  • Many things such as scents, sounds, textures, positioning, color, and so forth can also function as trademarks.  These are typically referred to as "non-traditional marks."
  • When you register a trademark, you gain the exclusive right to use it throughout Canada for ten years. Trademark registrations can be renewed in perpetuity (i.e., unlike other forms of IP, trademark rights never expire provided you continue to use your trademarks in commerce).
  • Full trademarks guide from CIPO

 

• Patents
  • Patents protect your original inventions. With a patent, the Canadian government gives you exclusive rights to make and sell your invention and the right to stop others from using it in Canada. The patent applies from the day the application was filled, for a maximum period of 20 years. 
  • Patents are granted on a "first-to-file basis." Whoever files the patent first gets the rights.
  • Click here to see more on patents from CIPO

 

• Copyright
  • Copyright gives you the exclusive right to copy, produce, reproduce, publish or perform an original literary, artistic, dramatic, or musical work.
  • Copyright exists for the creator's lifetimes and up to 50 years after their death.
  • Click here to learn more about Copyright from CIPO

 

• Industrial Designs
  • An industrial design gives you exclusive rights over a product's appearance or aesthetic features.
  • An example of an industrial design would be the distinct shape of a chair or water jug.
  • CIPO's industrial design guide

 
IP law applies to many areas of business and can be used to drive competitive advantage and distinguish your brand from others. Protecting your intellectual property ensures that you, the owner, can collect the benefits of your creativity and hard work.
 
For more information on the value of IP, visit CIPO, as they have many valuable educational resources to help you understand IP. Of course, we are here to help if you need assistance protecting your IP in Canada or anywhere in the world.
 
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Photo by Kimberly Farmer via Unsplash

Fast-fashion giants like Shein, Zara and AliExpress have often been accused of misappropriating designs from small businesses and independent fashion designers. With increasing social media usage, this problem is becoming more prevalent. On the other side, social media has also allowed small fashion brands to publicly call out these large companies for misappropriating their designs. 
 
Interestingly, in the U.S., the fashion industry is regarded as “manufacturing” rather than a creative industry such as film or music. Because clothing has a practical function, most garment designs cannot be protected by IP rights ownership. Elements of the garment, such as the print or a graphic, can be copyrighted; however, most small designers cannot afford to register a copyright for their design. What can and cannot be protected by copyright law in the fashion industry is subjective, leaving many designers vulnerable to having their designs copied.
 
Most small brands cannot afford to go through any legal action when their designs are used without their consent. Social media has proven to be a powerful tool for brand enforcement, as several designers have taken to Instagram to tell their followers about incidents of misappropriation. These have resulted in mass amounts of support and many posts condemning the company that stole the design. ​Read more about copying incidents. 
 
Intellectual property rights are a valuable asset for all companies, regardless of size. For fashion designers, their intellectual assets are the biggest driver of competitive advantage. Companies should respect the creative work of others. Maintaining this integrity is essential to your brand’s identity and helps create a business environment where small businesses can thrive.

Examples of Intellectual property assets for fashion companies:
 
Trademarks: logos, brand name, graphics
 
Patents: the technology involved in creating a particular fabric
 
Trade secrets: supplier lists, software tools for garment design

Read more about designs, branding, trademarks, patents and trade secrets in the fashion industry from WIPO.
 
The issue of integrity and respect also comes into question concerning cultural appropriation. This year, Mexico’s ministry of culture accused international fashion brands Zara, Anthropologie and Patowl of cultural appropriation. The incident was with these companies using patterns from indigenous Mexican groups without any permission or compensation to these groups.
 
The ministry of culture stated that Zara used a pattern belonging to the indigenous Mixteca community of San Juan. Read their complete statement from the government of Mexico translated to English here.
 
Zara’s owner, Inditex, responded to the Ministry of Culture, stating that the design was not intentionally borrowed or influenced by the Mixtec people of Mexico. Anthropologie and Patowl did not comment.
 
Cultural appropriation in the fashion industry has been a long-standing issue. This further emphasizes the importance of respecting other’s creative work and the cultural significance behind it.
 
Read more about cultural appropriation in the fashion industry from WIPO.

Photo by Charlota Blunarova via Unsplash

​On June 28th, the Government of Canada’s College of Patent Agents and Trademark Agents (CPATA) was established to implement a regulatory framework for the professions of patent and trademark agents. The College is a part of Canada’s Intellectual Property Strategy and aims to ensure the integrity of these professions. 
 
The CPATA is now responsible for: 

• agent registration and maintenance
• maintenance of the public-facing list of registered trademark and patent agents 
• agent examination 
• creating and maintaining an agent code of conduct and related discipline 

The Canadian Intellectual Property Office (CIPO) will no longer register patent and trademark agents and passed this responsibility onto the CPATA as of June 28th. CIPO will continue with a collaborative relationship with the college and the patent and trademark agent community. 
 
For informational resources, see below:

• CIPO’s article covering the following topics: 
  • What does an agent need to know until the coming-into-force day of the College?
  • What does an agent need to know after the coming-into-force day of the College?
  • What does an exam candidate need to know?
  • What do foreign patent agents and trademark agents need to know?
  • Transfer of agent information to the College
• CIPO’s FAQ on the CPATA
• CPATA’s website

 
Graphic by Clancy PC using: 
CPATA logo from CPATA's website
Photo by Maarten van den Huevel via Unsplash

​June 27 was Micro, Small and Medium-Sized Enterprises (MSMEs) Day. The United Nations (UN) started MSME Day in 2017 in recognition of the importance of small businesses to local and global economies. The UN also recognizes that MSMEs are crucial to achieving their Sustainable Development Goals (SDGs). 
 
As a small business ourselves, Clancy PC recognizes the importance of supporting other MSME to allow them to grow. In honour of this, we have put together a guide on how IP rights can build value and protect small businesses. 
 
“SMEs that apply for patents, trademarks or designs are more likely to grow quickly and succeed than those that do not.” – World Intellectual Property Office Magazine 
 
Quick Facts about small businesses from the Government of Canada Key Small Business Statistics 2020 

• Small businesses contributed 41.9 percent to gross domestic product generated by the private sector in 2016
• Of the 1.2 million businesses in Canada, 97.9% were small businesses with under 100 employees 
• Between 2014 and 2019, small businesses were responsible for 35.8 percent of the net employment growth

 
Protecting intellectual property rights (IPRs) can be essential to ensure the growth and success of small businesses. IPRs are very valuable assets that can be used and leveraged to create added value. The five most common forms of intellectual property are: 
 
Trademarks: Trademarks can consist of virtually any sign that allows one company to distinguish itself from its competitors. 
They can include words, designs, tag lines, scents, textures, sounds, tastes, motion marks, etc. Protecting your company’s trademarks is essential as it allows you to take swift action in cases where you spot unauthorized use that can lead to confusion in the marketplace. Moreover, by registering your trademarks, you ensure that the accrued goodwill in your brand inures to your benefit. 
 
Industrial Designs: Industrial designs protect the aesthetic features of a product, such as the shape, ornamentation, patterns applied to the product.  
 
Patents: Patents protect innovation and provide a monopoly period within which a business can monetize the invention. 
 
Copyrights: Copyright protects original literary, artistic, dramatic, or musical works and gives you the sole right to reproduce, publish or perform the works. 
 
Trade Secrets: Trade secrets can be any exclusive information that gives your company a competitive edge in the industrial, manufacturing or commercial sector. A very famous trade secret is the Coca-Cola recipe.
 
For more information about the various forms of IP protection available in Canada, visit CIPO  
​

• Attract investors

·       If you are a start-up business and require financing, having registered IPRs gives you a competitive advantage. Investors are more likely to invest in a company that has taken steps to protect its IP because there are fewer litigation risks and unfair competition.
 

• Create market recognition, loyalty, and goodwill 

·       Consumers tend to be loyal to brands. If they recognize your brand when making purchasing decisions, your sales will increase.  
 

• Avoid expensive and lengthy litigation

·       The registration of IPRs gives rise to a presumption at law that you are the rightful owner and that your IPRs are valid. Moreover, registration gives you access to powerful remedies against infringers and unauthorized users. Because your rights will be on public record, it may be less likely that conflicts will arise since third parties will avoid selecting marks or manufacturing products that infringe your rights.
​

References:
https://sagaciousresearch.com/blog/why-ip-protection-important-startups/ 

In the most recent issue of the International Trademark Association’s (INTA) Bulletin, Tracy Rengecas explores issues surrounding the unauthorized use of Traditional Cultural Expressions (TCEs).  TCEs include Indigenous names, words, symbols, songs, images and other expressions that are imbued with significant meaning, and even sacred value, for Indigenous communities. 

When a company adopts an Indigenous word or symbol and uses it for commercial gain, without authorization or context, this results in cultural misappropriation.  As Ms. Rengecas notes, citing a recent blog post by Wend Wendland: “… the tribal name of the Maasai, an indigenous community of East Africa, has been used without permission by 80 companies, including Jaguar Land Rover and Louis Vuitton.  The Maasai community continues to live in poverty and does not derive any income from the use of its name.”   Similar issues have arisen in the U.S. with Jeep’s use of the trademark GRAND CHEROKEE.

The use of derogatory or offensive words for commercial gain is a related issue.  The Washington football team recently dropped the use of REDSKINS, after significant pressure from sponsors and the BLM movement forced their hand. 

The Canadian Trademarks Act contains a prohibition against the registration of “any scandalous, obscene or immoral word or device” - Section 9(1)(j).  This section may be used to object to the registration of, or to expunge marks that are offensive to Canada’s Indigenous community. Nevertheless, this may be of limited value since the company may conceivably continue to ‘use’ the offensive word or design.

Article 31 of the United National Declaration on the Rights of Indigenous Peoples (the “Declaration”) recognizes the right of Indigenous peoples to maintain, control, protect and develop their cultural heritage, including IP rights in such heritage.  In December 2020, the Government of Canada introduced legislation to implement the Declaration. Bill C-15 (the “United Nations Declaration on the Rights of Indigenous Peoples Act”) received Royal Assent earlier this week (on June 21, 2021).  It will be interesting to see how the Government and Indigenous communities work together to fully implement the Declaration.

To read Ms. Rengecas article in the INTA Bulletin, click here.  To learn more about the Declaration, click here
​

Amazon’s IP Accelerator helps businesses gain access to valuable tools on Amazon’s Brand Registry platform. The IP Accelerator launched in Canada on April 26th, 2021, helping connect small-to-mid-sized businesses with third-party Intellectual Property (IP) law firms. These firms are curated by Amazon and are all trusted Canadian firms, including woman-and-minority-owned firms. Clancy PC one of eight service providers selected for the Amazon IP Accelerator in Canada. As the Ottawa Business Journal highlighted, this partnership between Clancy PC, a small firm, and the world’s e-commerce leader, Amazon, is a tremendous opportunity. ​

Clancy PC is delighted to welcome Nitin Gomber as an Associate Lawyer.

Nitin holds an LL.M. in Intellectual Property from the Franklin Pierce School of Law in the US and a B.A.LL.B. (Honours) from Panjab University in India. He is called to the bar in New York, as well as in Delhi, India. Nitin is fluent in English, Hindi and Punjabi.
 
Nitin has been in the legal industry for over a decade and has worked as a trademark lawyer, as well as an academic. As a lawyer, he has worked with the largest trademark filing law firms both in the US & India and brings a multi-jurisdictional perspective to the table for our clients. He has represented clients before the US Patent and Trademark Office, the Indian Trade Marks Registry, the Trademark Trial and Appeal Board, and the Santa Clara County Superior Court.
 
Nitin has also taught law at Jindal Global Law School in India that makes him particularly sensitive to the needs of people, with a strong ability to connect with them.

Welcome Nitin! 

Clancy PC is thrilled to announce that it has achieved WBE Certification! WBE Canada certifies Canadian B2B businesses that are at least 51% owned, managed and controlled by women and connects them to corporate and government supply chains. 

The WBE certification is built on global supplier diversity standards and is recognized by such giants as IBM, General Motors, Toyota, Accenture, top Canadian companies like BMO, TD Bank, RBC, TELUS, Rogers, Bell and others. 

WBE Certification helps Canadian women-led businesses by providing direct access to corporate and government supplier diversity leaders and buyers in organizations.  This is a very exciting achievement for Clancy PC.

If you are a woman-led business and would like more information about the WBE Certification process, visit https://wbecanada.ca 

By Trish Sawhney

​In an effort to speed up the trademark registration process in Canada, effective immediately, CIPO will begin accepting expedited examination requests in the form of an affidavit or statutory declaration. The affidavit or statutory declaration must clearly set out how one or more of the following criteria are met:
​

1. A court action is expected or underway in Canada with respect to the applicant's trademark in association with the goods or services listed in the application;
   
   
2. The applicant is in the process of combating counterfeit products at the Canadian border with respect to the applicant's trademark in association with the goods or services listed in the application;
   
   
3. The applicant requires registration of its trademark in order to protect its intellectual property rights from being severely disadvantaged on online marketplaces; or
   
   
4. The applicant requires registration of its trademark in order to preserve its claim to priority within a defined deadline and following a request by a foreign intellectual property office. Note that in such cases the request will need to be attached to the affidavit or statutory declaration.

Should the request be accepted, CIPO will examine the application as soon as possible, which reduces the current 24-28 month wait time significantly.

​If you believe your trademark application meets the requirements above, contact us today to see if we can expedite your application process!

By Trish Sawhney

We are delighted to announce that Clancy PC has been featured in the Ottawa Business Journal!

The article, written by David Sali, highlights our recent partnership with Amazon via the Amazon IP Accelerator program. This program aims to provide small and medium-sized businesses across Canada the opportunity to secure trademark protection for their brands on Amazon and the Canadian marketplace in a timely and cost-effective manner.

As one of only 8 firms in Canada to be chosen, we are honoured to partner with Amazon and eager to help Canadian businesses build their brands and protect their intellectual property. As stated by Paula Clancy herself, this is a tremendous opportunity and of national importance!  

Check out the article here: https://www.obj.ca/article/techopia/mark-ottawa-law-firms-join-program-aimed-protecting-amazon-merchants-ip

If you are interested in selling your products on Amazon, contact us today to learn more!

By Trish Sawhney

​The newly announced Federal Budget 2021 proposes a variety of amendments to ensure Canadian innovators, start-ups, and technology-intensive businesses can access proper capital to protect innovations and succeed in the long term. While further details have yet to be released, we have provided a snapshot of some of the proposed investments below:

To begin, Budget 2021 introduces a new measure, which will allow Canadian-controlled private corporations to immediately expense up to $1.5 million in eligible investments, including intellectual property.

Secondly, Budget 2021 proposes a variety of amendments to the Canada Small Business Financing Program (“CSBFP”). These changes are expected to increase annual financing by $560 million, resulting in support for nearly 3000 more small businesses.

For example, as it currently stands, the CSBFP does not provide financing to help small businesses protect intellectual property. However, Budget 2021 intends to expand the CSBFP’s loan class eligibility to include lending against intellectual property and start-up assets and expenses. Budget 2021 also plans to expand borrower eligibility to include non-profit and charitable social enterprises.

Lastly, Budget 2021 proposes to support Canadian businesses through the following investments:

• $90 million, over two years, starting in 2022-23, to create ElevateIP, a program to help accelerators and incubators provide start-ups with access to expert intellectual property services; and,

 

• $75 million over three years, starting in 2021-22, for the National Research Council’s Industrial Research Assistance Program to provide high-growth client firms with access to expert intellectual property services.

 
These welcomed changes are intended to further incentivize businesses to invest in assets like intellectual property, ultimately acting as a driver for innovation and growth throughout Canada.
 
If you would like to learn about other financing options that are currently available for Canadian businesses, please check out this resource from the Canadian Intellectual Property Office.
 
Interested in discussing strategies for protecting your intellectual property? Contact us today!

By Sukey Omran

The information in this guide has been provided by the Canadian Department of Industry. Please note that this guide does not constitute legal advice and is merely intended to act as an aid if you are considering global expansion.

Where is IP registered?
The European Union Intellectual Property Office (EUIPO) is the agency responsible for registering EU-wide trademarks and designs. The granting of EU patents is administered by the European Patent Office (EPO).

Trademarks

• Filing System:  There are two primary paths to trademark registration: (1) a European Union trademark (EUTM) provides protection in all member states of the Union (2) a national level trademark provides users with protection through the individual IP office of the EU country in which they apply.

• Registration Period: The term of an EUTM is 10 years and may be renewed every 10 years.

• Madrid Protocol: As a member of the Madrid Protocol, the EU can be designated in an international application filed via the Madrid System.

IP Enforcement
Enforcement is administered on a country-by-country basis. Therefore, you must monitor the marketplace for any unauthorized use of your IP. Enforcement of your IP rights is your responsibility.

You may choose to do the following in protecting your IP rights:

• Under the Directive, all EU countries have similar measures available for IP rights holders to defend their IP rights. IP rights can be defended by asking customs to seize goods suspected of infringing any IP. In order to do so, an “application for action” must be filed with the relevant customs department. Depending on your particular rights, the application for action can be national or EU-wide.
  

• Legal proceedings can also be started to enforce your IP rights. Mediation and arbitration, which are generally more informal, less adversarial, cheaper and settlement-focused, can be used as alternatives to going to court.

 
Interested in expanding your trademark protection into the European Union? Contact us today!

We’re so proud to be working with Invest Ottawa and Digital Main Street to bring the Future Proof program to our local businesses. The program helps shops, restaurants, skilled trades companies, and home-based artisans increase online sales and build more efficient, sustainable businesses –for free. We’re dedicated to making our neighbourhood the best place to shop, explore, and eat.This is our way of showing our dedication to OUR community. Visit our website today!  #LoveOttBiz #DigitalMainStreet208

Paula Clancy will be attending this year's virtual INTA Leadership Meeting from May 3-7.  We are looking forward to seeing friends and colleagues from around the world.  Connect with us today!

By Trish Sawhney

​The information in this guide has been provided by the Canadian Department of Industry. Please note that this guide does not constitute legal advice and is merely intended to act as an aid if you are considering global expansion.

Where is IP registered?
The Japan Patent Office (JPO) is the Japanese government agency responsible for granting trademark, patent, utility model and design rights.

Trademarks

Filing System: Japan follows a "first-to-file" system for trademark rights, which means that whoever registers a trademark first holds the exclusive right to the use of the trademark.

Registration Period: In Japan, a trademark is registered for 10 years and can be renewed every 10 years.

Non-Use: If you are not regularly using your trademark in the Japanese marketplace, it may be subject to a dispute or challenged for non-use. Cancellation may be requested if the trademark is not used for 3+ consecutive years.

Madrid Protocol: As a member of the Madrid Protocol, Japan can be designated in an international application filed via the Madrid System.

IP Enforcement
There are several ways to enforce your rights against unauthorized use of your IP in Japan:

• Japan maintains a strong framework of enforcement measures to protect against IP infringement. IP owners can send a warning letter to notify the infringer of their actions in hopes that the infringer ceases all wrongful actions.
  
  
• IP right holders can request a provisional injunction to prevent infringing acts from continuing until the case is resolved.
  
  
• The Japan Customs tariff law gives IP owners the option of filing for custom suspension of infringing goods. If the goods are found to be infringing, the company may face a fine of up to USD 100,000.
  
  
• Japan also provides the option of ADR processes, such as mediation and arbitration. ADR processes are generally more informal, less adversarial, cheaper and settlement focused. They can be used before or as an alternative to going to court.

Interested in expanding your trademark protection into Japan? Contact us today.

We are thrilled to announce that Paula Clancy has been appointed as a DMS Ambassador for Invest Ottawa's Digital Mainstreet Program.The program aims to future-proof businesses by offering a variety of services for digital transformation. To find out more about the program, click here. #iLoveOttBiz 

By Sukey Omran

The information in this guide has been provided by the Canadian Department of Industry. Please note that this guide does not constitute legal advice and is merely intended to act as an aid if you are considering global expansion.
 
Where is IP registered?
Trademarks, copyrights, patents, and designs are granted under the authority of the Office of the Controller General of Patents, Designs & Trademarks (also known as Intellectual Property India), operating under the Department of Industrial Policy & Promotion.
 
Trademarks

• What is it: An Indian trademark distinguishes your company’s goods and services from those of others in the marketplace and may be composed of letters, words, numbers, and/or designs. Colour combinations and three-dimensional shapes are also registerable in India if indicated on the application. Sound marks may also be registered if capable of being represented graphically and are found to be distinctive through use. The registration can take different forms namely word mark, label, logo and device mark.
• Filing System:  Trademark applications must be filed with the Trademarks Registry in the regional office in which your business is situated. Registration may be based on the proposed use of a mark. It is therefore important to apply for registration as early as possible to ensure protection.
• Registration Period: A trademark is registered for 10 years in India and may be renewed indefinitely for periods of 10 years.
• Non-Use: A registration for a trademark that has not been used in India for five consecutive years may be subject to cancellation.
• Madrid Protocol: As a member of the Madrid Protocol, India can be designated in an international application filed via the Madrid System.

IP Enforcement
India offers several ways to enforce your rights against unauthorized use, including customs seizures and civil litigation.
 
You may choose to do the following in protecting your IP rights:

• All types of IP may be protected by the Indian Central Board of Excise and Customs which acts to prevent the import of allegedly infringing goods into India, as long as the IP has been registered or granted by the appropriate IP office. Registration is for a period of at least one year.
• Civil suits are possible for all types of IP infringement. Relief may include temporary or permanent injunction, damages or accounting of profits, delivery up of goods and/or legal costs.
• India’s Copyright Act and Trade Marks Act provide for penalties including imprisonment for a period of up to 3 years, as well as a fine of up to 200,000 rupees.

 
Interested in expanding your trademark protection to India? Contact us today!
​