With growing access to foreign markets, it’s no surprise that more Canadian businesses are looking to protect their trademarks abroad. In 2014, adopting an international trademark registration system was a distant and abstract concept. Now, following a series of changes to Canadian trademark laws, the Madrid Protocol is closer than ever to being implemented.
With increased access to foreign trademark protection on the horizon for Canadian businesses, what is the Madrid Protocol and how will it affect your business?
An International One-Stop Shop
The concept of the Madrid Protocol is simple: a business from a member nation can file one application and pay one set of fees to protect and manage a trademark in one or more of the 98 member nations through a centralized system overseen by WIPO.
Take for example a business in the United States that wants to expand its reach into the Singaporean market. The business has two marks: one is registered and the other is in the early stages of the U.S. trademark application process. Both of these can be submitted through the U.S. trademark office to the World Intellectual Property Office (WIPO).
WIPO reviews, approves, and records both applications. The U.S. business receives a certificate of the international registration for both marks. From there, the Singaporean trademark office has 12-18 months to review and approve or reject the applications. If the mark is accepted in Singapore, it is the same as if it had been registered directly with the Singaporean office.
Nerd Alert: I was into video games since as early as I can remember. I first remember playing early games long Pong, Breakout and Donkey Kong on the Atari 2600. I then remember when my dad got my brother and I the first generation Nintendo. We were lucky enough to have many games including all of the Mario Brothers games, Ice Hockey, Excite Bike, Zelda, Tetris, etc.
Through the years, my brothers and I ran through many consoles including the Sega Genesis, Playstation, Xbox, Xbox 360 and finally the Playstation 3. I also played video games on the computer! As my brothers and I got older, we were mostly into sports games but I also loved third person shooter games.
Despite loving games, I never thought I would have the opportunity to have my work intersect with the video game industry. Luckily, given my line of work, I have had the great fortune of being able to negotiate some very interesting video game licenses.
Whether strolling down Canal Street in New York City or searching for a bargain on Craigslist, many consumers have come across seemingly authentic luxury goods at a fraction of the original cost. As the saying goes, “if it is too good to be true, it likely is”. The knock-off Chanel purse or fake Beats by Dre headphones may look and feel real, but they are often made with inferior materials and break down relatively quickly. As such, counterfeit products that are passed-off as real can affect consumer confidence in both the primary and resale markets.
Under the Trade-Marks Act (“Act”), registrants must “use” their trade-mark or risk expungement (losing their registration). Under Section 4 of the Act, use is essentially deemed to include use on the packaging/marketing of wares at the time of transfer and when it is displayed and advertised in the performance of services, whether by the registrant or a licensee under Section 50 of the Act.
The purpose of this is to ensure that the Trade-Mark Registrar is clean from trade-marks that have fallen into disuse. It is not the intention of the Canadian Intellectual Property Office to allow registrants to “hold onto” trade-marks.
A trade-mark is a word or marking that is intended to distinguish the wares or services of one business from those of others. Typically a trade-mark is a word, design or combination of these elements. However, certain “distinguishing guises” (uniquely shaped goods or containers) and sounds can be trade-marked.
To keep a competitive advantage, businesses may maintain the secrecy of valuable information that cannot otherwise be protected by intellectual property rights. Trade secrets may include ideas, formulas, designs, methodologies, processes, financial matters, pricing policies, business plans, salaries or other compilations of information. To be considered a trade secret, the information must be used in business, not be known to the public, must confer some benefit to its holder and must be the subject of reasonable efforts to maintain its secrecy.
In Canada, trade secrets or confidential information that cannot be otherwise protected by intellectual property rights (such as patents or copyright) can be protected by a duty of confidence recognized by common law. The recipient of a trade secret or confidential information is under a duty of confidence when that person received notice, or has agreed, that the information is confidential. To evidence this notice or agreement, businesses should mark all confidential information as such and require that all recipients of confidential information enter into a non-disclosure agreement (NDA) prior to disclosure. A non-disclosure agreement (also referred to as a confidentiality agreement) is a written agreement where one party agrees to disclose confidential information on the condition that the other party limits their use and any further disclosure of the information to preserve the confidential nature of the information disclosed. Implementing non-disclosure agreements may be necessary when obtaining funding from investors or working with manufacturers, designers, distributors, consultants and independent contracts. Despite a tendency to use “standard” agreements, non-disclosure agreements should be tailored to the particular circumstances of each matter.
After several unsuccessful attempts to update the Copyright Act to deal with modern technology concerns, Bill C-11 “An Act to Amend the Copyright Act” (also known as the Copyright Modernization Act) received Royal Assent on June 29, 2012.
In an effort to align Canadian law with International Treaties, the Copyright Modernization Act balances the rights of both copyright holders and users.
Last night, in Game 5 of the NBA Finals, LeBron James and the Miami Heat delivered on their promise to bring home a championship by closing out the Oklahoma City Thunder, 121-106, in Game 5. LeBron was brilliant throughout the regular season, playoffs and especially the finals. In Game 5, LeBron registered a triple double, with 26 points, 13 assists and 11 rebounds, clearly cementing himself as the best player in the world and perhaps, one of the greatest players in the history of basketball.
While last night was a coronation for “King James”, it was an all around bad night for Kevin Durant. Durant, a 3-time scoring champ, led his team with 32 points, but also had 7 turnovers that contributed to Miami’s romp of OKC. While Durant may not affect the game in as many ways as LeBron, he is 23 years old, a deadly scorer and will only get better. I suspect we may see these two superstars square off in the finals several times within the next few years.
Last night, the hyper-athletic and talented Oklahoma City Thunder fell prey to the majestic passing and wizardry of Tony Parker and the San Antonio Spurs to drop to 0-2 in the NBA’s Western Conference Finals. The Thunder will return home on Thursday for Game 3 in OKC where they will rely on their passionate home crowd to will them to victory in what is surely a must win situation for them.
In addition to the usual scoring from their big-3 of Kevin Durant, Russell Westbrook and James Harden, the Thunder will need stellar defence against Tim Duncan by the combination of Serge Ibaka and the scowl-faced Kendrick Perkins.
Jeremy Lin became an international sensation when he became the New York Knick’s starting point guard in early 2011. During 12 starts before the All-Star break, Lin averaged a ridiculous 22.5 points and 8.7 assists, leading the Knicks (playing mostly without star Carmelo Anothony) to a 9-3 record during that time. His success led to many media outlets referring to the Jeremy Lin phenomenon as “Linsanity”, clearly a play on the phenomenon known as “Vinsanity”, which was used to describe the attention Vince Carter received when he was playing at an incredible level for the Toronto Raptors. Lin, Harvard graduate, was quick to understand his limitless marketing potential. Lin was not only the starting point for the world’s largest market in New York, he is also of Asian-American descent, a devout Christian, and by all accounts, a pretty nice dude.