Smart phones are everywhere, on the streets, in
restaurants, in backyards, at airports, in offices, and in homes.
With the growing popularity of smart phones, comes the growing
popularity of mobile applications which run on smart phones. How to
address the challenges of intellectual property ("IP") in
the mobile world; was one of the topics discussed during the recent
International Trademark Association ("INTA") annual
meeting held in San Diego, United States.
INTA is a professional association of international
trademark practitioners. The annual meetings are attended by
thousands of IP practitioners from countries all over the world.
Topics of pressing concerns to these professionals and the
companies they represent are discussed at annual meetings. The
growing popularity of online and mobile technologies and the
challenges created by such popularity attracted attention at this
year's INTA annual meeting.
Traditionally, trademark rights have long been confined
within territorial boundaries. The laws in each country determine
the rights of trademark owners in that country, and also impose
different obligations and requirements in that country. However,
the mobile online world transcends these national borders and
brings new challenges in rights clearance, portfolio management and
right enforcements, among others.
For example, when a new technology company creates a new
smart phone application ("App"), one of the first things
is to name the App. Creating brand recognition for the App using a
carefully selected name can be crucial to the success of the
company. Naming an App and creating a brand, of course, fall
squarely within trademark law. In the traditional world, a similar
task such as naming a new restaurant would rarely require clearance
of the name beyond the local jurisdiction where the restaurant
would locate. This is not so for a new mobile App. The mobile App
may be simultaneously launched in multiple foreign markets, which
will require name clearance in all these jurisdictions. Failure to
properly clear the name in all these jurisdictions may
inadvertently infringe upon other's trademark rights, possibly
in a faraway jurisdiction, and bring litigation to a young
company's doorsteps. For a new technology company which faces
many different challenges already, this is one that could and
should be avoided.
Another topic discussed at the INTA annual meeting
and often faced by technology companies are the management of a
global IP portfolio. For example, it would be a tremendous
financial burden to register IP rights in all jurisdictions where
locals could possibly access the mobile App
online.Some may wonder, what would
be the consequences of not registering in a jurisdiction? There
might be many, one of them relating to whether to use trademark
marking. It is common to use trademark markings to provide notice
to others of the owner's trademark. Providing such notices may
be required in many jurisdictions for recovering damages. This is
often an easy decision, but not so east in the mobile world. In
some jurisdictions, there may be negative consequences for claiming
to have a trademark that you did not register there. Therefore, if
the mobile App uses trademark markings, this could lead to a
violation of local law in certain jurisdictions. This could be a
Similarly, rules governing trademark use and enforcement
vary from jurisdiction to jurisdiction. A technology company may be
based in Canada, but may have to enforce its trademark rights in
Asia. Trademark rights recognition and enforcement in a foreign
country may be different from those in Canada. Moreover, whether
courts will recognize and enforce your rights set forth in your
online terms and conditions may also be problematic and may depend
on how well your terms and conditions are drafted to follow local
laws and regulations. As one judge from China's Supreme
People's Court advised the audience at the INTA annual meeting,
"You have to follow (local) law if you want trademark
One take-away from the discussions and debates at the INTA
meeting is this: There will be new challenges associated with the
mobile world. Due to the diversity and complexity of these
challenges, there also will not be any one-size-fits-all solution.
With careful analysis and consideration, solutions can be found to
address these new challenges, one solution at a time.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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