Canada: International IP - Kate Swaine - Thinkhouse March 2016 (Video Content)

Last Updated: April 26 2016
Article by Kate Swaine and Clark Sargent

Most Read Contributor in Canada, October 2018

This ThinkHouse session is also available as a podcast.

Clark Sargent: In this session I am going to talk to Kate Swaine a partner in our IP team, and we are going to look at how you manage and control your IP in an international environment, looking at what territories are important, how to look after the brand and some key takeaways for general counsel.

So Kate, in the world of international IP what are the key issues for businesses?

Kate Swaine: The first thing really is to understand what your IP portfolio is and to appreciate what the international needs of your business are and do the two match? If you have got something that matches you've got the protection in the right place and the business is going to be far better equipped in order to deal with problems that come along down the line, it'll have basically the right toolkit.

Clark: And when we are looking at this, what sort of thing do we mean by brand?

Kate: Well, brand is how you are identified. So it is the name, it's the logo, it's the corporate colours, it's your advertising campaign. It's the things that consumers, your customers, your competitors identify you by, the things that inherently point to you and that's not just registered trademarks, brand is more that, it's all those unregistered elements as well.

Clark: And when you have got brand working for you in that way, what are the consequences if you are not using your rights all of the time?

Kate: Well, it's actually very simple if you don't use it you will lose it. So, there are two main examples where this comes in and it's in relation really to trademarks. So trademarks, and there are different provisions around the world, but broadly speaking if you don't use your trademark for a period of three or five years then it can be revoked for non-use and there are two scenarios typically where we see that happening.

One is where a company has applied for a trademark in relation to a very broad range of goods and services which is great at the time because they want all their options open. The problem comes when they're not actually using it in relation to that very broad range of goods and services they're only using it in relation to one particular category and then all of a sudden, and they're paying for it remember all the time, they are paying for this very broad mark they're not using and before they know it it's become vulnerable for non-use.

The other scenario we see actually, is where companies change their logos and companies do, they adapt their colours they adapt their logos over time and that's great but they don't necessarily seek a trademark of the new and refreshed logo and they're just assuming that the previous trademark they acquired will cover things. Well, it won't, if you are not using what's registered then that becomes vulnerable for non-use and what's more, if you're using something, a new version of which is not registered then that's vulnerable as well.

So, the key is to make sure you've got the right thing registered, that that is what you're using.

Clark: So you need to be watching it all of the time

Kate: You do you've got to keep up to date with these things, keep refreshing them.

Clark: And transliteration...

Kate: Yeah, that is a very important issue if you are a business and you're trading in countries, for example like Russia, China, the Middle East, you're not just going to be using the English language version of your mark. There is going to be a local language version as well. Invariably in a completely a different alphabet and the important point is that your consumers are going to be referring invariably to your brand, to your product by that particular name, you need to register it and a lot of companies miss this and somebody else goes out there and gets the name instead and you may well think well, the English language version of our name is the one that matters but it might not be the one that matters in that particular territory so don't get tripped up, make sure you do your research and understand what the people in that particular territory are going to be referring to your brand as.

Clark: Okay, so we've looked at the different languages, and what about if you choose not to file in certain jurisdictions?

Kate: Well there is a risk, the big risk is around first to file and what I mean by that is a lot of companies presume, well as long as we've been using the mark, the brand, the logo first we're fine, we're protected, we have got first dibs on that particular logo, mark, name. Unfortunately, it doesn't always work that way. So, a lot of countries have what we call a first to file system and a first to file trademark system means exactly what it says. If you don't get there first and file your trademark and somebody else does, you've lost it. You have got to be the first and this applies to countries such as China, Japan, Germany, Spain - see, these are important territories for business but you have to get there first and a lot of big brands have come unstuck by assuming that their use of the brand alone will be enough to give them priority. It isn't if you are in a first to file country you need to get in there and register your mark or even get in there and register the mark before you go into the country because if not someone else will beat you to it.

Clark: So that's quite a co-ordinated tie up.

Kate: Yeah, you need to be thinking ahead with all of these things. So, if you know that you are going to be moving the business into, for example the Middle East or moving the business into China, before you actually take that step you should be looking to get your trademarks in place and not just your English language ones remember, also your translated versions too.

Clark: It sounds to me like there are going to be a lot of territorial challenges in all of this. How do you address that?

Kate: Well I think there are some fundamentals that you can put in place that apply to anywhere that you are going to do business. The first thing is understand the territory you know, seek local counsel advice whether it's direct, whether it's through your local agents in that particular country or whether it's through your main legal advisors but understand, how does that territory work? What are the tools available to you? Also, appreciate cultural differences you know, different countries have different approaches to issues and if you can understand those and work with them you are going to be in a much stronger position and that comes down to adapting your strategy, you've just got to be prepared to be flexible between different countries and move with the requirements of that particular area.

Clark: So, in this internationally complex environment, what tools can you use to protect your brand from infringement?

Kate: Well make sure your IP portfolio is in a good state, so make sure that in those territories that matter you've got the right level of protection and you've got it in relation to the right things. So, that's a case of constantly understanding what the business needs, going back always to that touchstone of understanding, what do we need in that territory? What are we doing there? Where do we need protection... because that's what you're going to constantly fall back on, and then its tailoring it so, tailoring what you want to do in that particular jurisdiction to what the business needs and also looking at what is available to you in that jurisdiction so, is it going to be a civil action? Is it going to be an administrative action? Is there an opportunity to work with the local customs? You know, appreciating all of that will allow you to build the right solution in that particular territory.

Clark: And then I suppose... to summarise all of this, what are the top tips for general counsel in this arena?

Kate: I think there are a few essentials that any general counsel can do to put themselves in a pretty good position.

The first is, audit your IP portfolio, so actually stand back at and look at what you've got. Is it fit for purpose? Is this what you actually need? Have you got protection in the right places?

And secondly, taking all of that, create an IP policy so actually decide well, what are priorities as a business? Which brands are we really, we absolutely have to protect because they are the crown jewels of the business? Which aspects of IP actually tend to come and go because they are seasonal or perhaps it's just something we are trying out in that particular territory. So, create an IP portfolio that enshrines the business' priorities and how they dovetail with the intellectual property.

Having done that, know the countries you're in so you know, understanding whether it's through information from your distributors and agents, your local counsel, your customer services even - but everything you can do that means that you've got a good understanding of what the issues are that you face in that country.

And then the big thing is controlling costs. I think for any general counsel that's key when you've got an international portfolio. So, be prepared to push to fix fees, to cap fees, create an IP bible so that you have all the fundamental documentation whether it be settlement agreements, assignments, confidentiality agreements, information about your IP and the rights that you have, have all of that to hand so you are not constantly re-inventing the wheel every time you have an issue in a particular territory and then keep that level of communication going and constantly step back, look at your portfolio - is it still fit for purpose? Is it still what this business needs?

If you can do all of that, you're going to put yourself in a pretty strong position.

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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