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Protecting Your Intellectual Property from Infringement

For many businesses, intellectual property can be a main asset that increases business value and market potential. However, the value of intellectual property can only be preserved if intellectual property rights are enforced and instances of infringement are dealt with when they arise.

Many inventors and business owners believe that their job is done once they have been granted or have registered their patent, trademark, copyright or industrial design. However, issuance or registration is just the beginning. While grant or registration does give the owner exclusive rights over the intellectual property, the rights lose value if they are not enforced. The owner must monitor whether third parties are infringing their rights and, if so, take action to stop them. However, an enforcement strategy that involves litigation to force a competitor to cease its operations can be costly, time-consuming and frustrating. As such, one of the best methods of protection is to actively discourage your competitors from copying or using your intellectual property in the first place.

Below we describe strategies for discovering intellectual property infringement and dealing with instances of infringement.

Discouraging competitors from infringement

When commercializing an intellectual property asset, it is important to make your rights clear to competitors to discourage infringement. Using notices or marking to indicate patent, trademark, design or copyright ownership can deter infringement because competitors will be put on notice that you have exclusive rights and that you are willing to enforce them. There are several ways to visually identify intellectual property rights in Canada.

  • For patents, patent no. followed by the patent number or "patent pending" in cases where an application has been filed but not yet granted may be used.
  • For trademarks, the "®" (registered trademark) mark or its French equivalent, "MD" (marque déposée) should be used when the trademark in question has been officially registered by the Canadian Intellectual Property Office (CIPO). For unregistered trademarks, the "™" (trademark) symbol in English or the "MC" (marque de commerce) symbol in French is used to signify ownership.
  • For copyright, the symbol "©" followed by the name of the copyright owner and the year of first publication is commonly used to denote copyright ownership. Copyright does not have to be registered with CIPO for the copyright owner to use the "©".
  • For industrial designs, a lesser-known indication is an encircled letter “D” followed by the name of the design’s owner.

You can also help prevent infringement or misuse before you have solidified your intellectual property rights. To accomplish this, any confidential information relating to your intellectual property or your business should be kept confidential. If you need to disclose ideas or works in progress that are not yet protected, then it is important to ensure that all recipients sign a non-disclosure agreement and that commercial contracts with business partners have appropriate non-disclosure and intellectual property protection clauses.

Monitoring intellectual property use by competitors

Methods of detecting infringement include: (1) using traceable detection measures, and (2) checking relevant channels to see if there have been products made and distributed that infringe your intellectual property rights.

(1) Traceable Detection

The first method involves marking your intellectual property in a unique and traceable way to be able to pinpoint it if it is ever used or copied without your permission. Depending on the type of asset in question, there are different ways this can be done. For copyrighted materials, such as photographs and videos, a watermark can be placed on copies to highlight ownership and trace infringement if it occurs. Audio watermarks also exist for copyrighted audial works, which can be traced at specific frequencies if necessary.

Another type of protection, which is sometimes used for printed reference materials, is the inclusion of fictitious entries, or deliberate misinformation within the body of the work to trace copying by competitors. Using such methods is helpful because infringers will often try to change some part of the work before releasing it to the public for profit – copying will rarely be exact and may thus be more difficult to detect without obvious red herrings.

(2) Monitoring Competitors

The second type of protection is focused on discovering infringement through relevant industry channels. Make sure to check the new products and services advertised by competitors to see if any of them are using your intellectual property. A good place to start may be competitor websites or social media. If you are unsure about whether a competitor's product is infringing, you might consider purchasing the product or having someone else purchase it for you so that you do not alert the potential infringer to your investigation. You can also attempt to catch infringement early at events such as trade fairs and industry shows. For patentable products, you can monitor technical publications that discuss newly developed products.

Further, make sure to keep tabs on new applications filed for intellectual property rights in your jurisdiction. If you think a proposed trademark would be confusingly similar to your own trademark or trade name, you may be able to oppose it before it is allowed and registered. Oppositions are quasi-judicial proceedings typically initiated in the two-month period after a proposed trademark is advertised in the Trademarks Journal published by CIPO – for further discussion, please see our article on trademark opposition proceedings.

For all proposed trademarks that have not yet achieved registration, you also have the option of filing with CIPO a Notification of Third Party Rights, which alerts the Registrar to select information that may affect the registrability of a proposed mark. There are only three appropriate grounds for filing a Notification of Third Party Rights. First, the trademark in the pending application is confusing with a registered trademark. Second, the applicant is not the person entitled to the registration of the trademark. Third, registered trademark(s) are being used in the application to describe goods and/or services. While the Registrar is not required to consider the notification, the procedure may, in some instances, be a time- and cost-effective alternative to pursuing opposition proceedings after the mark is advertised. Note that filing a Notification of Third Party Rights does not extend the time for filing a notice of opposition.

There are also advantages to monitoring the patent filings of competitors. While, in general, patent infringement can be time-consuming to monitor for and difficult to detect, the filings of competitors may alert you to potentially infringing products or processes. Further, if you think that a patent application describes an invention that is simply an obvious variation on your own invention, you may provide a written protest and/or prior art to CIPO during examination of that patent application before a patent is granted. Monitoring the patent filings of competitors may also help you identify appropriate licensing opportunities earlier than you otherwise might.

Potential infringements may also be reported by customers of the intellectual property holder. Providing your customers with an easy way of contacting you about infringement issues can be a simple and effective way to monitor infringement.

Online tools to monitor infringement

With the advent of the Internet and social media, the online sphere has simultaneously become a useful medium for competitors to access and take advantage of intellectual property and a method of infringement detection for owners. On top of digitalizing some of the techniques used for tangible intellectual property, such as digital watermarking for copyrighted photographs, the Internet also provides several useful search functions.

For example, you can set up search engine alerts and keyword notifications, which can be particularly helpful for detecting trademark infringement. You can also set up similar alerts to track whether keywords appear on competitors' social media pages, or whether a certain image has been copied or shared. If you do find instances of potential infringement through these methods, make sure to take screenshots that clearly identify the issue and the date, as this information may be deleted once you have informed your competitors of your discoveries.

Website archives can also be helpful to establish timelines of when the content was shared on the page and can help pinpoint the contact information of the individual or company behind the infringement.

If you have registered trademarks, make sure to check for the use of domain names that are similar to your trademarks to see if any activity on those websites constitutes trademark infringement. Consider checking not only the most common domain extensions in your jurisdiction (e.g., .com, .ca), but also other available domains (e.g., .org, .info).

Finally, outsourcing monitoring responsibilities is also an option. Numerous entities offer services that range from the use of dedicated software to detect online acts of infringement to the monitoring of filing activity in relation to a specific intellectual property asset. The latter may include, for example, monitoring of new trademark applications for confusingly similar marks. However, be aware that some bad actors have taken advantage of the demand for such services – in particular, seek intellectual property counsel before engaging with entities that solicit you with suspicious offers relating to trademark renewal or “international registration”.

Requesting Assistance from the Canada Border Services Agency (CBSA)

Copyright and registered trademark owners have a unique additional means of monitoring for infringement of their rights – Canada’s IP border enforcement program.

The program enables owners of copyright or of registered trademarks or geographical indications in Canada to request the assistance of the CBSA in the detection and detention of counterfeit goods or pirated works.

To take advantage of the program, rightsholders should complete and submit the Request for Assistance form to the CBSA. The application will include contact information for the rightsholder as well as information relating to the registered trademarks or the copyright in issue, including descriptions of the authentic goods and a list of authorized importers thereof. Any known distributors of illegitimate goods may also be listed. Once enrollment in the program is confirmed, a rightsholder will be notified of any suspected counterfeit goods or pirated works intercepted by the CBSA and given the opportunity to take action. More specifically, customs officials having detected a shipment suspected of containing counterfeit and/or pirated goods will contact the rightsholder and provide them with details relating to the shipment including the nature and number of the suspected goods, photographs thereof, and the identities of the parties involved. If the rightsholder decides to take action, the CBSA can detain the goods until the action is settled or a court renders a judgment in the matter.

What to do if infringement is discovered

If you have discovered that your intellectual property is being unlawfully used by competitors, acting immediately is key. It is up to you to enforce your intellectual property rights.

The first thing to do is familiarize yourself with your rights, which depend on the type of intellectual property in question. For trademarks and copyright, common law protection does exist for unregistered rights; please read further on the protection available for unregistered trademarks. You should also determine if there are any legal defences or exceptions that may make the potential infringer's use permissible. Finally, you should ascertain whether the infringement has occurred in a jurisdiction in which you have a claim to the monopoly of the intellectual property in question; registration of trademarks, patents and industrial designs in Canada does not entitle you to any rights in other countries unless you have also obtained independent protection there. Your copyright in an original literary, artistic, musical or dramatic work, however, may be enforceable outside Canada without you having ever registered the copyright in another country. Thanks to the Berne Convention for the Protection of Literary and Artistic works, works originating in any one of the signatory countries are given the same protection in all of the other signatory countries as those countries give to works originating therein. In other words, a copyright-eligible work originating in Canada is, given the same protection in. for example, Australia as a copyright-eligible work originating in Australia. Of course, the specifics of that protection will vary from country to country and Canadian copyright owners should consult intellectual property counsel before asserting copyright ownership and attempting to enforce copyright abroad.

Once you have determined that you do have enforceable rights, it is time to act. What you do next depends on what you want. If you just want the infringement to stop, then you may consider notifying the infringer of your rights and asking them to stop their infringing activities. This often takes the form of a cease and desist letter (see our article on cease and desist letters). Some infringement matters can be resolved with little more than a cease and desist letter, especially when the infringement was unintentional. In circumstances where the infringer ignores your cease and desist letter or responds that they are not infringing, then you may need to proceed to litigation to seek an injunction and monetary compensation. See our dedicated resource for more information on responses to intellectual property infringement.

The enforcement process typically requires a lawyer so it may be best to get a lawyer involved when you first detect or suspect infringement to determine whether you have a valid infringement claim and to devise an enforcement strategy. If you would like our help with this, contact us for a complimentary and confidential initial telephone appointment with a member of our team.