The Economist recently commented on the low level of
Canadian patent activity, with Canada behind not only perennial
patent powerhouses South Korea and Japan but also most other
developed regions, according to the article "More Particle
Than Wave" in the April issue of the magazine.
Figures from the Canadian government and the World Intellectual
Property Organization show the same applies to trademarks:
Canadian trademark filings have remained relatively flat since
Canadians file fewer Canadian trademark applications than
Canadians file fewer applications abroad.
Canada's industries are regularly described as
resource-focused, but nationals in resource-rich countries of
comparable size such as Australia file at higher rates than
Canadians. An amazing 99 per cent of all Canadian businesses are
small and medium enterprises, according to "Key Small Business
Statistics" released in 2013 from Industry Canada. Competition
can be tough, and resources for intellectual property, including
trademarks, can be limited. Yet Canadian trademark filing costs are
currently among the lowest in the world ($250 for all
Trademarks and trade are how customers locate and remember
businesses, and it is important to set aside resources to ensure
innovation costs are not wasted by failure to register in Canada
and abroad. In Canada, the benefits of registration include:
Exclusive right to use the mark throughout Canada for the
registered goods/services, and to sue for Canada- wide
Notice of trademark status, ownership, and the goods/services
of interest. Business and brand name clearance strategies normally
involve a search of the Register of Trademarks, providing notice of
prior rights, and hopefully deterrence against adoption and use of
a confusing name/mark;
The Trademarks Office examines for prior rights, and may refuse
other applications without the original registrant having to do
Registrants can record their marks with Customs authorities to
prevent counterfeits; and
Registrations are identifiable business assets.
In most European and Asian countries, trademark rights are
totally dependent upon registration. Waiting to file can mean lost
rights or expensive and uncertain procedures to regain rights.
Early registration may also help to avoid trademark
"trolls" who register with the goal of extorting the
original brand owner. Prior third-party registrations can put not
only the Canadian business at risk of being sued for infringement
but also local partners such as contractors, retail customers,
exporters, importers, and licensees. Without registration,
businesses may be unable to stop unauthorized or counterfeit
activities or prevent registration of a confusing trademark. After
Canada, businesses should consider both where they intend to sell
and where their competition will come from:
Plan three to five years out so trademarks are filed/
registered before sales start;
For many, the most important markets will be the United States
and Europe. The European trademark system offers coverage in dozens
of EU countries with one filing;
Identify countries known as exporters of similar products, or
cheap knockoffs, where stopping infringement may require
Prioritize foreign markets based on projected sales and
competitive risks. The business may influence where protection is
sought — the focus for a hightech company may be different
for clothing, agrigoods, or pharmaceuticals.
International registration costs may seem high (filing fees of
$3,000 or more). Timing of expenditures can be managed by
staggering filings to take advantage of treaty provisions that deem
foreign filings to be made on the Canadian filing date. Canada is
also expected to become a member of an international filing system
(the Madrid Protocol), bringing further cost savings (and likely a
lot more filings from abroad into Canada).
Higher trademark filing rates by our global trading partners
suggest they recognize the benefits of national and international
trademark protection — such as exclusive rights, easier
enforcement, access to Customs protection, deemed validity, and
notice to others, plus less tangible benefits such as deterrence,
simplified licensing, and the peace of mind that comes with the
certainty of rights and remedies.
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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