By Alison Wong
Information is a crucial business asset. To cite a common example, the formula for the carbonated soft drink Coca-Cola™ is a well-guarded industry secret. This secrecy creates a monopoly over production and sale of the drink, which generates billions of dollars of revenue for Coca-Cola’s parent company each year. If the recipe for Coca-Cola™ became public knowledge, or fell into the hands of a competitor, the company would likely lose enormous sums of money because everyone would know how to make their own, identical version of the drink. In short, the commercial value of the information would be lost.
The Canadian Intellectual Property Office (CIPO) defines “trade secrets” as “any business information that has commercial value derived from its secrecy.” To qualify as a trade secret, the World Intellectual Property Office notes the following criteria, in that the information must be “commercially valuable because it is secret; be known only to a limited group of persons; and be subject to reasonable steps taken by the rightful holder of the information to keep it secret.” Encryption of valuable information and requiring business partners and employees of a company to sign non-disclosure or confidentiality agreements would constitute examples of “reasonable steps” to ensure secrecy of information.
Unlike patent and copyright which are protected by federal statutes, there is no equivalent statue in Canada for trade secrets. Instead, the law of trade secrets is governed by common law principles and is enforced through tort claims such as breach of confidence or breach of fiduciary duty. In deciding whether information is a trade secret and in determining compensation for misuse of a trade secret, CIPO notes that courts consider the following factors:
To learn more about trade secrets, please refer to the following sources:
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:
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?
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.
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.
Follow our social media to stay up to date on more IP blogs, news, and content!
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:
For informational resources, see below:
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
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
Why IP matters for your business
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.
How it works
It can take up to 3 years to register a trademark with the Canadian Intellectual Property Office (CIPO). Amazon’s IP Accelerator allows brand owners to access the Brand Registry program with a pending application, rather than having to wait until a registration issues. This means that brand owners can sell and be protected on Amazon within two weeks of filing their Canadian trademark application. The process is simple:
Clancy PC is an independent, woman-owned firm and proud to be a part of the Amazon IP Accelerator. An Amazon press release quoted Founder and Managing Attorney Paula Clancy:
“In today’s competitive marketplace, your brand is one of your most valuable assets as it represents your reputation in the eyes of consumers, directing them to your products and services. Brand protection on a store like Amazon, which reaches millions of customers worldwide, is essential, not only to prevent unauthorized use of your marks, but also to protect you from potential claims by third parties. Amazon’s IP Accelerator helps small businesses connect with trusted trademark professionals to protect their brands. Clancy PC is excited to be part of the program and to assist small businesses through the trademark registration and Amazon Brand Registry process.”
Clancy PC has received more than 100 trademark requests since the IP Accelerators launch. To read Clancy PC’s Amazon reviews, click here.
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.
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:
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:
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).
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:
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