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International Intellectual Property – Canada

posted 7 months ago

Author

Johanne Auger

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+1 514*****

All our clients face the same challenge: that of constantly breaking new ground to be industry leaders. Our team is made up of lawyers, patent agents, trademark agents and technical experts, offering a wide range of legal and scientific intellectual property-related expertise. We act as our clients’ ally by capturing, managing and maximising their value and innovations.

 

We assist in optimising the value of inventions as well as industrial designs by helping our clients establish best practices in protecting, defending and managing them, both in Canada and abroad.

 

In addition to identifying and protecting inventions and industrial designs, our team offers a complete range of services, including drafting and negotiating licences, implementing management programmes, assigning rights, performing due diligence reviews of patent and industrial design portfolios, as well as preparing patentability, validity, infringement and freedom-to-operate opinions.

 

Meanwhile, as well as providing opinions on registrability and availability of trademarks – including their protection and enforcement in Canada and abroad – our team drafts and negotiates trademark licensing agreements. We work closely with marketing teams to ensure that marketing strategies are in line with trademark law and labelling regulations applicable to products and services in Canada.

 

We handle all copyright matters, from issues associated with moral rights to open-source software, and draft and negotiate all forms of agreement related to copyright, such as licences and assignments.

 

Our team advises clients to determine if it is preferable to keep an invention secret, or rather, apply for a patent. We suggest appropriate measures to help maintain the confidentiality of trade secrets and other confidential information. We also protect clients’ rights – whether through contract or by resorting to other appropriate measures.

 

Distinct from civil or commercial litigation, intellectual property disputes possess unique nuances and subtleties, which our team comprehensively grasps. Often associated with the scientific, technology and computer science fields, intellectual property litigation requires knowledge beyond the legal field. Our team, therefore, consists of lawyers and specialised professionals, who ensure the litigation strategy to be adopted is aligned with the clients’ business objectives. This often involves much more than simply adopting a legal strategy.

 

With skills that connect the areas of intellectual property, commercialisation, taxation and finance, our team drafts and negotiates all types of contracts affecting intellectual property. These encompass: licensing, technology transfers, research and development, distribution, franchising, software development as well as outsourcing. From negotiating favourable terms, to implementing any agreement, our team recommends business solutions that take into account the realities of the business world, such as conducting due diligence reviews of intellectual property assets.

 

Our team advises on regulations applicable to the marketing, promotion, advertising or labelling of products and services in Canada. We revise product labels, packaging and marketing materials, including promotional contest rules, to ensure compliance with applicable laws and regulations; moreover, we advise on linguistic requirements specific to the Charter of the French Language and its regulations.

 

The team also assists clients in recalling products and negotiating with the relevant government authorities – as well as in matters involving notices of compliance regarding drug patents.

BCF Trademark Team ensures for the efficient protection of clients’ trademarks in the jurisdictions where they sell products and services, or manufacture products, from both a legal and strategic standpoint and with cost-effectiveness in mind. Our integrated approach begins with the identification of the client’s real needs, and considers both its short- and mid-term marketing plans so that its trademark protection strategy can evolve along with its business, all while maximising the value of its trademark portfolio.

 

In addition to trademark availability and registrability issues, we will see to the enforcement of the client’s trademark rights and will advise them on copyright, domain names, social media, online presence, labelling, advertising and signage issues. We also advise companies on the marketing strategy for their products and services, while always considering the applicable regulations in Canada.

 

In light of the above, the typical workflow of BCF’s Trademark Team consists of the following: Global trademark protection and enforcement strategy, including availability searches, filing/prosecution, monitoring, opposition and non-use cancellation proceedings, litigation, licensing, IP-related due diligence exercises as well as domain name portfolio management and global domain name and social media issues. We are also assisting clients with the drafting of various trademark use guidelines, including co-branding. Our team regularly offers customised trademark training sessions to our clients’ legal and marketing teams to assist them in their day-to-day operations.

 

We are highly active in the following fields: artificial intelligence, NFTs, aeronautics, information technology and pharmaceuticals. We also represent many clients in more traditional fields, such as agri-food, tourism, cultural, finance, manufacturing, textiles as well as retail industries.

 

Our firm handles more than 12,000 trademarks in more than 200 countries, with the assistance, of course, of foreign associates, whom we carefully select.

Keeping a global vision over the current and potential issues that may arise during the course of our clients’ business activities is certainly the most active and interesting challenge. Issues are to be monitored and assessed globally to capture, manage and maximise the value of our clients’ IP assets so that the protection strategy adopted is duly aligned with their business plans. Being flexible and alert to market changes is also of key importance. Therefore, in our mind, the above-mentioned areas of IP advocacy cannot be separately taken into account.

Analysing alignment of IP protection obtained, or being sought, in various jurisdictions for the client’s marketing plans – and proposing strategies for addressing deficiencies identified – presents a significant yet interesting challenge. Once deficiencies have been identified, we make sure to assist clients in prioritising and taking into account market opportunities, competitive intelligence and budget constraints – partnering with them in the decision-making process.

Globalisation of markets, social media and the growing list of domain name extensions generate a large volume of Internet-related issues. Our team helps clients chart their way through the legal maze that stems from use of global information technology networks. From the fraudulent appropriation of domain names, to Facebook conversations and Google Ad-Words, we ensure that the Internet works for, and not against, the client’s presence on the virtual world stage.

 

Monitoring third parties’ trademark use for clients active in the NFTs brings great challenges. Not only do we assist in monitoring the market, but we also enforce clients’ rights by sending cease-and-desist letters, negotiating agreements and, where required, instituting legal proceedings.

Knowing the client’s short- and mid-term global marketing plans and monitoring its main competitors’ IP assets is of key importance to provide the most efficient and global enforcement-related guidance. Enforcing rights is sometimes like playing a chess game: careful analysis of the next move to be made is required, given the various impacts it may have. Global monitoring services are highly recommended in this regard to properly address potential infringement issues, sometimes even before use begins, but also to determine where third parties’ new marks might constitute major obstacles for the client in penetrating potential new markets.

IP due diligence is of crucial significance when it comes to any acquisition clients might be planning. We not only offer legal expertise, but also business experience to provide more predictability as well as flexibility to adapt to the changing business market. Our unique and seasoned IP team possesses the required knowledge and business experience to assist in any type of transaction involving IP assets. We provide a clear assessment of the relevance and value of the IP assets and identify potential problems that could occur.

When it comes to rights enforcement, it is also essential to properly assess the strengths and weaknesses of the client’s position in order to best advise on the next steps, while also assisting the client in its decision-making process.

And of course, before using any new trademark, we will strongly recommend that availability searches be conducted in the countries of interest in order to avoid unpleasant surprises further down the road.

As the Head of the Trademark Group, I routinely attend international conferences, such as INTA, MARQUES, UNIFAB, WIPR and the like. Additionally, I am frequently invited to speak at conferences and participate/moderate discussion panels in various countries. I also regularly publish short articles on trademark-related issues.

AI-related issues will certainly bring new trends and challenges. We have, therefore, constituted a strong AI team, who are experienced both from a legal but also technical point of view, to assist clients’ growing needs in this regard. Adaptability and flexibility are required in order to navigate the numerous issues AI is and will be bringing.

Intellectual property issues are in a constant state of evolution. Heading the Trademark Group, which comprises a dynamic and seasoned IP team, not only makes my day-to-day practice highly engaging, but also fuels my passion for the field.

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