Author: Marsha Simone Cadogan
One of the important dynamics of a business strategy involves taking stock of the proprietary interests in the business and ensuring that adequate legal safeguards are in place to sustain its worth. This is where using intellectual property rights law (IP) and strategy can make a difference. Read on for a summary of the main types of IP and how they can be used to protect your products or services.
The intangible right in products and services
Ideas cannot be protected as IP. However, the ability of the mind to generate innovative ideas and to bring these to reality in skilful ways has an essential cornerstone in IP rights. The creative ways we express ideas and their forms help explain what IP embodies. Creativity and innovation are commonplace themes in the notion of an IP right. Most products and services originate in creative and innovative outlays. Whether in the form of musical compositions, the human mind behind algorithmic configurations, developing a business’s logo and its name or inventing green technology to mitigate climate change matters, consumer markets are increasingly defined by forms of innovation.
Once ideas take on a physical form (as a product or service), IP law helps creators, inventors, and entrepreneurs to exercise exclusive rights over how their output is commercialized and otherwise shared with the public. Framers of early IP legislation believed that exclusive rights and prospects of earning from protected products and services would incentivize right holders to produce content that would stimulate economic growth. Even today, the ties between economic growth and IP remain relevant, although challenging. A registered or protected IP does not give rise to rights in perpetuity. With most forms of IP, requests can be cancelled, expunged, or expire after some time.
Rights are also territorial in nature. This means that when a rights holder obtains IP protection in Canada, safety does not extend to another country. The caveat to this is the case of well-known or famous trademarks, which, because they are well known to consumers, the law of a foreign country (under international law) may allow an otherwise unregistered mark to be protected against infringement or acts of unfair competition. However, as the McDonald’s Big Mac (for sandwiches) trademark expungement in the European Union shows, a well-known mark will be placed under the microscope to determine if it is well-known to consumers in specified markets.
Types of Intellectual Property
Depending on the types of products or services involved in business transactions, rightsholders use six main IP types to safeguard their proprietary interests. All six are not always relevant to every product or service. However, rightsholders can have a diversified IP portfolio of different rights protecting one product or service. To explain the relationship between IP and products/services, a hypothetical example is used below:
P manufactures and distributes food and beverage products and developed a specific name and logo for her food and beverage business. P uses a secret ingredient in her baked goods lines, giving her baked goods a unique taste. P wants her products to appeal to customers, so she has designed novel packaging for her baked goods. In addition, to boost sales, she has written sales and distribution manuals for her employees.
Trademarks: To distinguish her food and beverage products from that of her competitors, P can use a brand to protect her product’s name and logo. A trademark is an indication of the source and serves two functions. First, it provides consumers with source information about what they have purchased and who made the product or created the service. Second, if managed well, trademarks can be used to leverage brands in consumer markets, thereby building brand loyalty and revenues along value chains. In Canada and most countries, registered trademarks are granted ten years of protection and are renewable each time for ten years.
Trade secrets: Trade secrets are not registrable as intellectual property. However, they can be protected as intellectual property if they fit the criteria for protection. In keeping with its commitments under the Canada-United States-Mexico Agreement (CUSMA), Canada updated its Criminal Code to codify protection for trade secrets on July 1, 2020. If P’s secret ingredient is not generally known in her trade, has an economic value, and reasonable efforts are made to keep the information a secret, it is likely protectable as a trade secret. P may use a non-disclosure agreement to specify the terms on which she discloses the secret ingredient to employees and how this information will be safeguarded from unauthorized disclosure.
Design Rights (Industrial designs):
Design rights apply to features of shape, ornaments, pattern, configuration (or a combination of these) that appeal and are judged solely by the eye (Industrial Designs Act s. 2). If the design is novel, has not been disclosed to the public and does not entirely relate to a functional aspect of the product. It may be registrable as an industrial design. In our example, if P’s baked goods packaging fits the criteria for protection, she can apply for a design rights registration for her design. Successful registration gives P ten to fifteen years of exclusive use of the design in her business.
Copyright Protection: Copyright subsists in original and creative expressions created by humans. Registration is not required for copyright protection to be granted to creations. Examples of works that copyright protection exists are our films, sound recordings, computer programs, paintings, drawings, video games, books, and manuscripts. If P’s manuals are her original writings and were compiled with some creativity, copyright will likely subsist in her work. Therefore, she has exclusive rights over how she shares, uses and deals with her work about others (in commerce or otherwise). This right lasts for the duration of her life, the remainder of the calendar year in which she died, plus fifty years after the end of her death.
The last two types of IP in this note were not discussed in P’s example but are explained below.
Patents: A patent is an exclusive right given to an inventor to make, construct, sell, license, and use an invention. This exclusive right is granted for twenty years. Not all inventions are patentable. Patentable subject matter must be novel and relate to a new and valuable art, a process, the machine, manufacture, the composition of manufacture, or any new and useful improvements on these inventions. Example of products for which patents may be granted includes software applications, pharmaceuticals, semiconductors and robotic devices.
Geographical Indications (GI): If you have eaten FETA made in Greece, drank Champagne from France, used Argan Oil from Morocco in your hair, brewed Colombian coffee, or drank Quebec’s Ice wine, then you have consumed origin-based food protected with a GI designation. GIs are words or symbols used on products (or their packaging) to convey a direct relationship between a product and where it is grown or produced. This may relate to the product’s quality, reputation and characteristics. This relationship must be essentially attributable to the human or natural factors in the product’s territory. While wine and spirit GIs have been protected in Canada against infringements and unfair competition for many years, food and agricultural GIs have only been registrable since June 17, 2019 (based on changes to the Trademarks Act). GIs are not renewable but remain protected if they are not cancelled from the registry.
The notion of creativity, innovation and growth are almost constants in talks about IP, business continuity and growth. As the above points show, IP protection has many aspects – this comes from what the right embodies in the first place. Once prospective rights holders have a solid understanding of their business model, incorporating IP protection into a business strategy can be a progressive step forward.
This article is for general information purpose only and is not intended to be legal advise.