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Protecting Intellectual Property And Trade Secrets (Oct29.08)
- 6. INTELLECTUAL PROPERTY LAW OVERVIEW
- 7. Intangible Business Assets Case study: www.amazon.com
- 17. How Many Trade-marks Can Be Registered To Protect This Product?
- 18. DISTINGUISHING GUISE: REGISTRATION: TMA355239 REGISTRATION: TMDA051412 TRADE-MARK: REGISTRATION: TMA562648 (Color is claimed) TRADE-MARK: REGISTRATION: TMA290252 (shape of the box) REGISTRATION: TMA164635 (tread design) TRADE-MARK: TOBLERONE TRADE- MARK:
- 20. Licensing Intellectual Property Grant of License. Licensor hereby grants to Licensee, for the internal use of the Licensee only, a non-exclusive, non-transferable, revocable and royalty-free license (the “License”) to use the Intellectual Property for the purpose of providing software development to clients exclusively located in the United States of America, with a focus on the provision of micro payment services in connection with corporate clients in retail. Unless prior written approval is obtained from the Licensor, the Licensee shall not use the Intellectual Property for any other purpose.
- 30. Teresa Cheung LL.M. (Intellectual Property) LL.B. [email_address]
Notes de l'éditeur
- I want to thank ACCE for inviting me to speak tonight. I’ve been asked to make the presentation short and exciting. So I’ll do my best to give you an enlightening presentation on several common themes involving Intellectual Property and Intangible Assets that entrepreneurs in my law practice deal with. First an introduction about myself – commercial lawyer and civil and commercial litigator. I have a Masters of Law in Intellectual Property. I choose to obtain my Masters in Intellectual Property law after handling many commercial transactions and litigation cases involving Intellectual Property issues. They just came up again and again – whether they be in trade-mark applications and licensing, exploiting copyright or patent licensing.
- Here’s an overview of my talk tonight. First, what is an “intangible business asset?” What are its characteristics What are some examples Second, how do we protect and extract revenue from intellectual property in the market place? Third, how do we protect intangible assets from people close to us – those potential competitors, that being our employees, our JV partners, our service providers that we have to work closely with
- What is an intangible asset? Intangible – not bricks and mortar, not land, not personal property such as equipment, inventory Intangible means easily reproducible with or without technology in mass quantities (think counterfeit goods, and similar trade-marks) Just as rights are acquired when a building, land or machinery is purchased, intangible assets are recognized in law and courts to be property Owner can use and exploit the assets as in using a trade-mark, licensing a patent to a mfg Owner can protect asset by excluding others from using or exploiting the property for their own benefit and gain Owner can exploit the asset for gain by assignment and license Intellectual property has been described as a negative right to exclude others from claiming use of an intangible asset.
- in order for the Court to grant a remedy, the asset has to be capable of being valued accounting of profits or assessment of damages
- Traditional forms of intellectual property governed by statue and common law Patents Act – protects inventions that are new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any of those Copyright Act – protects works of expression – does not protect an idea but the expression of an idea Trade-marks Act – registered and non-registered trade-marks – protects the mark identifying the source of a good or service Industrial design Act – lesser used – protects industrial designs The branches of Intellectual property law created by statute are generally known as patents, trade-marks, copyrights. There are also industrial designs, integrated circuit topographies and plant breeders' rights created by statute. Copyright protects only original work that originate from the author with a minimal intellectual effort. Copyright law protects the expression of an idea, not the idea itself. Copyright protects against copying. Another person who creates a substantially similar work independent of any copying is not infringing on copyright. Generally applicable to artistic work, industrial creations such as database compilations and software programs are protected by copyright. The term of protection is life of the author plus 50 years. Patents are granted for inventions or improvements to inventions that satisfy three criteria: new, useful and unobvious. Patents The term of protection is 20 years after filing. This period of protection gives the inventor a head start to develop and market his invention to the exclusion of competition. The inventor is able to recoup the investment made in research and development of the invention during this monopoly period. The exclusive monopoly is also the incentive for the inventor to invest in innovation. Trademarks are accorded protection to identify the source of products and services. For example, when we The law of trade-marks protects investment corporate and brand identity. Trade-marks can be registered or non-registered. There are different categories of trade-marks:
- Three other IP statutes not commonly known: Industrial Design Integrated Circuit Topography Plant Breeders Rights
- How many intellectual property assets do you see in this business? 3, 5, at least 10 Trademark Amazon Domain name Amazon.com Arrow mark Shopping Cart patent 1 click patent Copyright of Database of books and products Copyright of product description Copyright of look and feel Co-branding arrangement with Intel Licensing of the Blog technology
- This is the definition of TM in the TM Act The important word here is “distinguish” To distinguish goods and services between the owner of the TM and the products and services of others – original purpose was to protect consumers so that consumers know where the product comes from and therefore safe for consumption - evolved to protect manufacturer and owner – cases in which the brand is protected – the auto mfg Jaguar recently sued a luggage mfg for depreciation of goodwill Eg. Coke v. Pepsi v. cott Certification mark – indicates that the good or service meets a certain standard - eg. woolmark, CSA, VQA Distinguishing Guise – the shape of the products indicates its origin – eg. Coke bottle, Toberone chocolate bar "distinguishing guise" means ( a ) a shaping of wares or their containers, or ( b ) a mode of wrapping or packaging wares the appearance of which is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others; certification mark" means a mark that is used for the purpose of distinguishing or so as to distinguish wares or services that are of a defined standard with respect to ( a ) the character or quality of the wares or services, ( b ) the working conditions under which the wares have been produced or the services performed, ( c ) the class of persons by whom the wares have been produced or the services performed, or ( d ) the area within which the wares have been produced or the services performed, from wares or services that are not of that defined standard;
- This is the definition of TM in the TM Act The important word here is “distinguish” To distinguish goods and services between the owner of the TM and the products and services of others – original purpose was to protect consumers so that consumers know where the product comes from and therefore safe for consumption - evolved to protect manufacturer and owner – cases in which the brand is protected – the auto mfg Jaguer recently sued a luggage mfg for depreciation of goodwill Certification mark – indicates that the good or service meets a certain standard - eg. woolmark, CSA, VQA Distinguishing Guise – the shape of the products indicates its origin – eg. Coke bottle, Toberone chocolate bar
- Example is Cnd trade-mark owned by Cdn business; and an US business with a similar mark tries to expand its market share into Canada. The U.S. business tries to register the name in Canada. The Canadian business didn’t register its TM in Canada. The two businesses are competing in the same region. Canadian business has to deal with consumer confusion. 12. (1) Subject to section 13, a trade-mark is registrable if it is not ( a ) a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years; ( b ) whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin; ( c ) the name in any language of any of the wares or services in connection with which it is used or proposed to be used; ( d ) confusing with a registered trade-mark; ( e ) a mark of which the adoption is prohibited by section 9 or 10; ( f ) a denomination the adoption of which is prohibited by section 10.1; ( g ) in whole or in part a protected geographical indication, where the trade-mark is to be registered in association with a wine not originating in a territory indicated by the geographical indication; ( h ) in whole or in part a protected geographical indication, where the trade-mark is to be registered in association with a spirit not originating in a territory indicated by the geographical indication; and ( i ) subject to subsection 3(3) and paragraph 3(4)( a ) of the Olympic and Paralympic Marks Act , a mark the adoption of which is prohibited by subsection 3(1) of that Act. Idem (2) A trade-mark that is not registrable by reason of paragraph (1)( a ) or ( b ) is registrable if it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration.
- 12. (1) Subject to section 13, a trade-mark is registrable if it is not ( a ) a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years; ( b ) whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin; ( c ) the name in any language of any of the wares or services in connection with which it is used or proposed to be used; ( d ) confusing with a registered trade-mark; ( e ) a mark of which the adoption is prohibited by section 9 or 10; ( f ) a denomination the adoption of which is prohibited by section 10.1; ( g ) in whole or in part a protected geographical indication, where the trade-mark is to be registered in association with a wine not originating in a territory indicated by the geographical indication; ( h ) in whole or in part a protected geographical indication, where the trade-mark is to be registered in association with a spirit not originating in a territory indicated by the geographical indication; and ( i ) subject to subsection 3(3) and paragraph 3(4)( a ) of the Olympic and Paralympic Marks Act , a mark the adoption of which is prohibited by subsection 3(1) of that Act. Idem (2) A trade-mark that is not registrable by reason of paragraph (1)( a ) or ( b ) is registrable if it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration.
- Seek legal advise when choosing a trade mark. 12. (1) Subject to section 13, a trade-mark is registrable if it is not ( a ) a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years; ( b ) whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin; ( c ) the name in any language of any of the wares or services in connection with which it is used or proposed to be used; ( d ) confusing with a registered trade-mark; ( e ) a mark of which the adoption is prohibited by section 9 or 10; ( f ) a denomination the adoption of which is prohibited by section 10.1; ( g ) in whole or in part a protected geographical indication, where the trade-mark is to be registered in association with a wine not originating in a territory indicated by the geographical indication; ( h ) in whole or in part a protected geographical indication, where the trade-mark is to be registered in association with a spirit not originating in a territory indicated by the geographical indication; and ( i ) subject to subsection 3(3) and paragraph 3(4)( a ) of the Olympic and Paralympic Marks Act , a mark the adoption of which is prohibited by subsection 3(1) of that Act. Idem (2) A trade-mark that is not registrable by reason of paragraph (1)( a ) or ( b ) is registrable if it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration.
- One of the important considerations is not only what your trade-mark represents today but in the future. Interesting to note that other than sports related products, NIKE may go into the music downloading business. REGISTRATION: TMA576630
- In the U.S. sound can also be claimed Think about the Intel and Microsoft Windows
- certification mark" means a mark that is used for the purpose of distinguishing or so as to distinguish wares or services that are of a defined standard with respect to ( a ) the character or quality of the wares or services, ( b ) the working conditions under which the wares have been produced or the services performed, ( c ) the class of persons by whom the wares have been produced or the services performed, or ( d ) the area within which the wares have been produced or the services performed, from wares or services that are not of that defined standard;
- Now that we’ve identified different types of intangible assets and IP, how do we protect and exploit the assets for revenue? Transfer or assignment or License Agreement
- Example of a License term Non-exclusive (can grant the license to another party) Non transferable Revocable Royalty free or license fee Geographical region is United States Use – software development focusing on micro payment services in retail
- Restrictions: In U.S. only Not outside JV
- Other non-tangible assets not covered by patent, copyright, trade-mark, industrial design or any statute may be protected if considered confidential information Under confidential information – we will find “trade-secrets” – eg. a formula, recipe for Coke, compound, customer lists or book of business, knowledge acquired, developed or discovered that is not in the public knowledge that the owner does not want others to know “ Not all information can be property; only confidential information can. This view is fully consistent with the essence of other intellectual property rights, patents, copyrights, industrial designs, trade marks, or even personality rights, the value of which lies not in their possession but in the owner's ability to exclude others from exploiting them .” Cadbury Schweppes Inc. v . FBI Foods Ltd. (SCC) 1998 This quote of the Supreme Court of Canada touches on the unique characteristics of intellectual property and the challenges of in the development of statute and case law to protect intellectual property assets. Information, ideas, and knowledge cannot be “possessed”.
- What are the elements in this Non-solicitation clause: Reasonableness – balance protection of the Company’s proprietary interests with the preventing restraint of trade Time - during term of Agreement and for one year thereafter
- Time period - 18 months Restriction - approach clients and employees
- Elements: Define type of business Period of time – 18 months Geographical radius – 50 kilometers of Toronto
- Non Disclosure Covers summary and analysis of information On termination of relationship – confidential information is returned, destroyed (this is important requirement for complying with privacy legislation) Excludes information already known to the recipient prior to relationship; already in public domain; independently developed; disclosed lawfully.
- The Lesson learned is: if the clause is not drafted properly, it will not be effective. Seek legal advice. Test for Enforceability of Non-compete and Non-solicit: Did the employer have a proprietary interest entitled to protection Are the temporal or spatial features of the clause too broad 12 to 18 months, and maximum is 24 months The length of time depends on the industry and circumstances which would enable the employer to protect the clients without restraining the employment of the employee Geographical region is generally limited to the region in which the employee originally conducted business (eg. if the employee had customers within the region of Waterloo, restricting activity to all of Canada is too broad) Is the covenant enforceable as being against competition generally and not limited to prevent solicitation of clients of the employer? The Court will protect the employer’s proprietary interest Non-competition is more drastic than non-solicit – use non-solicit if that is sufficient to protect the employer’s proprietary interest Non compete will be enforced in exceptional circumstances (eg. when owner sells his business and stays on as a consultant or employee; when the employee manages all of the employer’s trade connections, has a relationship of influence with the clients)
- RBC Dominion Securities Inc. v. Merrill Lynch Canada Inc. et al [2008] SCC 54 Supreme Court of Canada (local RBC office defecting in Merrill Lynch office virtually leaving the entire office empty of staff and clients) Ash Temple Limited v. Croney, Gootveld and Healthco (Canada) Ltd . [2000] Ont. C.A. (dentist with influential contacts at dental equipment supplier taking clients to competitor)