Intellectual Property
A business's most vital assets are increasingly intangible knowledge and information. Trade secrets, brand identity, and confidential business information are more challenging to replace than physical assets in a factory or office.
Businesses can use patents, trademarks, copyrights, industrial designs, domain names, trade secrets, and confidentiality agreements to protect intangible business interests.
We have experience managing and protecting diverse intellectual property portfolios for our domestic and international clients. In addition, we provide strategic advice to brands for effective intellectual property protection.
Trade-marks & Domain Names
Trademarks must be protected separately in each country. We have successfully applied for trademarks in Canada and have coordinated multi-national applications, particularly in Asia. For example, the intellectual property office in Taiwan uses our publication on protecting Chinese character trademarks for instructional purposes.
We also have considerable experience overcoming examiners' objections at the Canadian Intellectual Property Office ("CIPO") and other intellectual property offices. We are also skilled at responding to opposition proceedings brought by third parties.
We have experience enforcing trademark rights against infringers and counterfeiters through negotiations and Federal Court actions. We also have experience applying for and defending against Canada's so-called "official marks."
We have successfully defended trademarks that brands primarily use online and have experience acting on both sides of expungement proceedings.
We increasingly assist foreign clients with domain name issues in Canada and other jurisdictions.
Copyright
Internationally, treaties generally protect copyright, and a foreign copyright holder may enforce its rights in Canada without further formalities.
We have experience registering copyrights in Canada, preparing opinions, and advising clients on the scope of the protection afforded by copyright. In addition, we have acted for clients in cross-border disputes and enforcement actions against infringers
Patents
Although we are not patent agents, we have experience advising clients in patent disputes, including assisting a pharmaceutical client in successfully appealing to the Supreme Court of Canada to overturn the decisions rendered against it in the courts below.
We have also assisted clients in cross-border patent disputes, particularly with issues related to the abuse of patent rights or anti-competitive activities.
For our patent matters, we work with and share office space with PatentAxis Inc. and its patent agent and principal, Mr. Jaidip (Jai) Chatterjee. PatentAxis Inc. offers core patent services, including patent search and analysis, patent application preparation, patent prosecution and patent portfolio management.
Trade-secrets & Confidential Information
Unlike the United States, Canada does not have stand-alone legislation to protect trade secrets. Instead, the Canadian legal framework primarily relies on contractual provisions and the owner's conduct to protect confidential business information and trade secrets.
Advice in these areas is a regular part of our licensing, distribution and franchising practice. We also have experience in protecting trade secrets in China. We have assisted a European client using only trade-secret protection for their processes to establish a plant in the U.S.