Hunt Biggs LLP is a multi-discipline practice existing under the laws of the Province of Ontario, Canada and the Law Society of Upper Canada.

Size: px

Start display at page:

Download "Hunt Biggs LLP is a multi-discipline practice existing under the laws of the Province of Ontario, Canada and the Law Society of Upper Canada."

Sophia Gregory
8 years ago
Views:

1 Hunt Biggs LLP provides a full range of Intellectual Property Services. Our goal is to deliver personalized high quality Intellectual Property services in a direct, approachable and cost effective way. Hunt Biggs LLP is a multi-discipline practice existing under the laws of the Province of Ontario, Canada and the Law Society of Upper Canada. Hunt Biggs LLP provides a full range of Intellectual Property (IP) law services from availability searches and opinions through registration and enforcement of IP rights. The firm also represents clients in appeals and cancellation proceedings before the Federal Court and civil IP infringement actions before the Ontario and Federal Courts. We are located in Ottawa, Canada's capital, and are just minutes from the Canadian Intellectual Property Office (CIPO). We can readily access its information and people on behalf of our clients. We implement the efficient use of technology to reduce or eliminate bottom line costs to our clients. We prosecute most applications using the CIPO's electronic filing system. For those clients interested, we will correspond almost exclusively by . Furthermore, we can provide secure FTP servers to our clients to create virtual prosecution files which allow for secure communications without the time or size constraints inherent in traditional correspondence methods. Ultimately, we hope to completely eliminate administrative costs and fees for mail, photocopy, fax and couriers. We think this will help the environment too!

Hunt Biggs LLP is a multi-discipline practice existing under the laws of the Province of Ontario, Canada and the Law Society of Upper Canada.

2 PRACTICE AREAS TRADEMARKS Trade-Mark Clearance Searches The Canadian Trade-mark Act codifies a "first to use" principle meaning the registration of a trade-mark can be prevented by third party use of a confusingly similar trade-name or trade-mark. Accordingly, we recommend that at a minimum, thorough searches of databases containing the records of the Canadian Trade-marks Register be conducted prior to filing any trade-mark application. Additionally, "common law" usage searches should, ideally, be performed. Application Procedure Applications to register a trade-mark are filed electronically at the Canadian Intellectual Property Office. The application must identify the applicant, the mark, the goods or services in association with which the mark is to be used and whether the mark is already in use in Canada. Once filed an application proceeds through a number of steps at the Canadian Trademarks Office. First, the records of the Trade-marks Register are searched for confusingly similar marks then about four to six months later the application is examined for registrability. A trade-mark which is thought to be confusingly similar to an existing mark on the Register can not be registered. Furthermore, one cannot register a trade-mark which consists of a word which clearly describes or deceptively misdescribes the character or quality of the goods or services or is the name of the goods in any language. After examination, the application is approved for publication and then published in the Trade-Marks Journal for the purposes of giving notice to the public of the impending registration of a mark. Any person may oppose an application presuming they have some reason as outlined by the Act. If unopposed, the application is then allowed and the Certificate of Registration will issue after payment of the Official Fee and filing of a declaration of use, if necessary. The Registration is valid for fifteen years and renewable every fifteen years.

Accordingly, we recommend that at a minimum, thorough searches of databases containing the records of the Canadian Trade-marks Register be conducted prior to filing any trade-mark application.

3 DOMAIN NAMES AND INTERNET ISSUES A domain name is the address of a web site that is intended to be easily identifiable and easy to remember. Domain names are registered on a first-come, first-served basis in a registration process that is relatively simple and inexpensive. Nevertheless, care must be taken in adopting a domain name and before investing in a domain name it is prudent to ensure that you are not taking another trader's registered trade-mark. The use of another's trade-mark as or in a domain name is grounds for revocation of the domain name and may also subject you to a law suit. Use of another's trade-mark on a website is generally acceptable however care must be taken to avoid trademark usage that might cause confusion as to the owner of the web page as such use might infringe on another's trade-mark rights. Use of another's material, for example images, text and development script, code or applets on a web site is generally viewed as copyright infringement. Rather, all material should be original or obtained and used with the owner's permission. Care should also be taken when using links to another's site. Ideally, permission to use a link should be obtained.

Nevertheless, care must be taken in adopting a domain name and before investing in a domain name it is prudent to ensure that you are not taking another trader's registered trade-mark.

4 LITIGATION Intellectual Property rights do not confer a positive right to make, use or sell a product. Rather, holders of Intellectual Property rights are able to exclude other parties from infringing what has been validly protected. To be successful at trial, record keeping relating to the creative process is critical. In particular, where legal conclusions are drawn this should be done under conditions that will be protected by solicitor-client privilege. Organizations that intend to exploit their Intellectual Property should be prepared to defend their Intellectual Property rights; infringers should be put on notice quickly and, if necessary, action taken without delay. In Canada, both the Federal and Provincial courts have jurisdiction to hear patent, trademark, copyright and related cases however, the Federal Court of Canada is preferred, when available, as its judges are more experienced in this area and any judgment rendered will apply nationally. To the extent possible, avoidance of litigation is the best approach. Before launching a new product it is advisable to seek legal advice on whether the product infringes the intellectual property rights of other parties.

To be successful at trial, record keeping relating to the creative process is critical.

5 PATENTS AND INDUSTRIAL DESIGNS Patents In Canada, patents are given to the first inventor to file an application at the Canadian Intellectual Property Office and successfully prosecute it to issuance. Patent protection is available only through registration. Registration allows you to prevent others from making, working, selling, etc. the patented invention. In Canada you must file the patent application within one year of making a public disclosure. It is imperative not to advertise, display or publish information on your invention too soon. Industrial Designs Industrial Design protection is available only by registering the design with the Canadian Intellectual Property Office. Registration allows you to prevent others from making, importing, renting, selling, etc. any article to which the design or a design not differing substantially from the registered design has been applied. We have a network of independent Registered Patent Agents in a variety of scientific endeavours who we can refer you to or liase with on your behalf.

In Canada you must file the patent application within one year of making a public disclosure. It is imperative not to advertise, display or publish information on your invention too soon.

6 COPYRIGHT Copyright gives you the sole right to produce or reproduce your work, through publication, performances and so on, or to authorize such activities. Anyone who does such things without your permission is infringing, that is, violating, your rights. Copyright subsists in any original written and visual material including, dramatic, musical and artistic works, as soon as it is produced in a fixed form. In the case of computer software this information should, ideally, be on both the packaging and the opening screen(s) of the program for example. While marking is not strictly necessary to protect your Copyright in Canada, you should nevertheless mark your material with a followed by the name of the owner of the material and the year of first publication. Marking is also advisable as it is necessary in some countries and it serves as a general reminder to everyone that the work is protected by copyright. Copyright can be registered with the Canadian Intellectual Property Office however it is not mandatory to do so to have protection in Canada. Registration can be used to your advantage in the event that your work is infringed. A certificate of registration is evidence that your work is protected by copyright and is proof of ownership in the event of a legal dispute.

Copyright subsists in any original written and visual material including, dramatic, musical and artistic works, as soon as it is produced in a fixed form.

7 OUR PEOPLE Nicola M. Hunt Barrister & Solicitor Trade-Mark Agent Nicki brings over 15 years of trade-mark law experience to the firm. Nicki has extensive experience in a variety of aspects of Intellectual Property Law from prosecution of applications to enforcement of rights. Her experience covers diverse commercial areas from health and beauty products to alcohol and clothing to consumer electronic goods and pet supplies to automobiles. Nicki was called to the Bar in 1990 and has also been a Registered Trade-Mark Agent since that year. As a member of the Law Society of Upper Canada, she can practice in both the Ontario and Federal Courts. Nicki has argued cases before both the Federal Trial and Appeal divisions and has sought leave to appeal to the Supreme Court of Canada. Nicki is a member of the Intellectual Property Institute of Canada and is active on its Meetings and Seminars Committee. She has spoken on IP law at meetings in Canada and the United States. She also regularly attends international IP meetings. Nicki holds BA and LLB degrees from the University of New Brunswick. Nicki at nhunt@huntbiggs.com

Her experience covers diverse commercial areas from health and beauty products to alcohol and clothing to consumer electronic goods and pet supplies to automobiles.

8 Kerry L. Biggs Trade-Mark Agent Kerry became a Registered Trade-Mark Agent in 2004 after passing the Trade-Mark Agent s exam. Prior to commencing her training to become a Trade- Mark Agent, Kerry worked as a Legal Assistant in an Ottawa law firm. Kerry has extensive experience in all aspects of trade-mark prosecution before the Canadian Intellectual Property Office. Kerry at kbiggs@huntbiggs.com

9 Hunt Biggs LLP Suite 6, 5459 Canotek Road Ottawa, Ontario Canada K1J 9M3 Phone: Fax: mail@huntbiggs.com

World Book. Protection of IP Canada. www.plg.eu.com 1. TRADE-MARKS 1.1 INTRODUCTION 1.2 REGISTERED TRADE-MARKS

World Book. Protection of IP Canada. www.plg.eu.com 1. TRADE-MARKS 1.1 INTRODUCTION 1.2 REGISTERED TRADE-MARKS World Book 1. TRADE-MARKS 1.1 INTRODUCTION The Act relating to trade-marks and unfair competition (commonly known as the Trade-marks Act) governs trade-mark matters in and, as a federal law, receives application