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Protecting Your Intellectual Property from Infringement

For many businesses, intellectual property can be a main asset, which increases business value and market potential. However, the value of intellectual property can only be preserved if the 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. If the enforcement strategy involves litigation to force the competitor to cease their operations, it 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 how to deal 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 a number of 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 in order for the copyright owner to use the "©".

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 fall into two main categories: (1) using proactive detection measures; and (2) checking relevant channels to see if there have been products made and distributed that infringe your intellectual property rights.

(1) Proactive 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. Audial watermarks also exist for copyrighted audial works, which can be traced at specific frequencies if necessary.

Another type of protection, which is used more rarely, but that may come in handy for printed materials, is the inclusion of fictitious entries, or deliberate misinformation within the body of the work which helps trace any 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 thus may 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 to check 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 tip off the potential infringer that you are investigating their activities. You can also attempt to catch infringement early at events such as trade fairs and industry shows, and, for patentable products, scientific publications that discuss novel inventions.

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 (see article on opposition proceedings). If you think that a patent application describes an invention that is simply an obvious variation on your own invention, you may provide prior art to CIPO during a examination of that patent application before a patent is allowed and granted.

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 a number of useful search functions.

With the help of search engines like Google, you can set up search 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 problematic issue and the date, as this information can be quickly deleted once you've informed your competitors of your discoveries.

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

Finally, 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 of the activities 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 domains that are available to be used (e.g., .org, .info).

What to do if infringement is discovered

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

The first thing to do is to familiarize yourself with your rights. This highly depends on the type of intellectual property in question. For trademarks and copyrights, 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 that the infringement has occurred in a jurisdiction in which you have a claim to the monopoly of the intellectual property in question; registration of trademark, patent and industrial designs in Canada does not entitle you to any rights in other countries unless you have also obtained protection there.

Once you have determined that you do have enforceable rights, it is time to take action. 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.

The enforcement process typically requires a lawyer so it may be best to get a lawyer involved at the outset when you first detect or suspect infringement to determine whether you have a valid infringement claim and to come up with an enforcement strategy.