A trade secret is, broadly speaking, any confidential business information which provides a business with a competitive advantage. The precise definition of a trade secret varies depending on the specific laws of a country. However, the following three factors are generally common to all such definitions:

•  The information is not generally known to the public
•  It confers some sort of economic benefit on its holder
•  It is the subject of reasonable efforts to maintain its secrecy

The following types of information are often considered trade secrets:

•  Unpatented inventions
•  A special recipe or chemical formula
•  Methods of doing business, techniques, and training manuals
•  Marketing and customer information

Unlike patents or trademarks, a trade secret is a type of intellectual property for which the holder does not seek registration or a grant from the Canadian Government. Currently, no province in Canada has enacted any special trade secret legislation. Trade secrets are therefore protected primarily by common law in Canada, with the exception of the province of Quebec. In Quebec, there are a few articles in its civil code which address some aspects of trade secrets.

The primary rule for trade secret protection is that the trade secret must really be a secret. It must be information that is not generally known to the public and would not be ordinarily available to competitors. The greater the degree to which the information is disseminated to others, the less likely it will be a protectable trade secret. Therefore, business owners should be very careful about the type of information that they provide to outsiders. Unless a trade secret owner takes diligent steps to try to preserve the secrecy of its information, courts may be reluctant to provide assistance to that owner if others learn about it.

We assist entrepreneurs and start-up companies with determining the best business structure (sole proprietorship, partnership, and corporation), taking into account the type of business, how many people are involved, the size of the operation, and liability and taxation considerations. We also provide guidance on various business issues related to their intellectual property, including:

•  Preparing and performing IP-related due diligence in all forms of business transactions
•  Negotiating, preparing, and managing licensing and technology transfer agreements, franchise contracts, and non-disclosure agreements
•  Advising clients on passing off (knock off imitations), parallel imports, and unfair competition matters
•  Helping clients meet applicable regulatory and competition law requirements
•  Educating businesses on the legal requirements and consequences of online activities
•  Assisting foreign companies with their relocation for expansion of their business to Canada
•  Supporting the needs of high-tech clients by assisting with financing transactions such as equity, debt, and convertible security transactions with angels and venture capital investors

With increasing competition in all sectors, the protection of intellectual property is becoming increasingly important. Today, the intellectual property assets of a business may include patents, trademarks, trade secrets, copyright, and industrial designs. When IP infringements occur, businesses need to act quickly and retain experienced counsel who are familiar with the judicial system and can vigorously enforce the company’s IP rights.

Nelligan O’Brien Payne LLP is a leading litigation firm in Ottawa with a proven reputation of excellence across Ontario and Canada. We are dedicated to providing legal services of the highest quality in both a timely and cost-effective manner, using the right resources and team members. In addition, we are at the forefront of the drive to develop alternate dispute resolution (ADR) methods, which complement more traditional methods of adjudication.

In situations of patent infringements or other intellectual property disputes, our litigation lawyers work with the firm’s intellectual property lawyers, IP consultants, and patent and trademark agents to provide the most cost-effective representation.

The technical description of an industrial design or design patent can be described as the visual features of shape, configuration, pattern, or ornament (or any combination of these) applied to a manufactured article. The shape of a toy, chair, desk, lamp, or even a car are all examples of industrial designs.

If you want to protect your products in Canada, you should consider obtaining a registration for an industrial design that will give you exclusive rights for ten years.

Your design may also be considered an artistic work, whereby it may also be automatically protected by a copyright and should be registered as such. However, it is best to check with a patent agent, trademark agent, or IP lawyer to ensure you obtain the appropriate protection for your unique designs.

New brands are popping up every day. Entrepreneurs, small and large companies, and even government offices are all creating new products and services that could potentially result in new domain names. If left unprotected, these domain names provide competitors or tech-savvy malcontents an easy way to damage a company’s reputation and brand.

Our intellectual property lawyers and trademark agents prefer to err on the side of caution. We take steps to prevent, or make difficult, domain name disputes by having both trademark applications and domain name registrations in place. It is always more beneficial and less costly to contest a domain name registered by others if your mark or name is registered as a trademark.

While it may be too costly to register all possible combinations of your domain name, a strategy can be developed to protect top priorities, which vary with each situation.

Other considerations include registering for:

•  Common top-level domains such as dot.ca and dot.com
•  Domains such as dot.org or dot.biz
•  Commonly misspelled version of the domain
•  Both a non-hyphenated version (e.g. NelliganOBrien.ca) and a hyphenated version (e.g. Nelligan-OBrien.ca)

If a dispute does occur, our intellectual property group has the necessary experience to guide you through any required domain name dispute resolution process, such as ICANN’s UDRP or CPRD.

Patents, trademarks, and copyright are all different forms of intellectual property and are protected by law. A copyright is the protection provided to an original expression, such as dramatic, musical, artistic, and literary works. Computer software and websites also fall under copyright protection.

Though optional, in most situations if copyright registration is desired, a separate application is required for each country where protection is sought. Our intellectual property lawyers and agents assist individuals and businesses to secure copyright protection in Canada and worldwide with the assistance of our network of foreign associates. We also encourage our Canadian copyright owners to consider copyright protection in the United States, given our close trade ties.

Our Intellectual Property group provides a wide range of advice on issues related to ownership, licensing and usage policies, due diligence, registration, permissions, fair dealing, and infringement. We also review copyright provisions and agreements.

We represent our clients on enforcement issues and dispute resolution in the courts or copyright tribunals for a broad range of works, including multimedia and Internet, technology, software, design, advertising, and publishing.

Many small and mid-sized businesses do not consider securing trademark registrations for their business names for different reasons. Some feel that since Canada is, by and large, based on common law, business names are protected by common law even without registration at the Trademarks Office. Others simply don’t know that business names and trademark registrations are two very different types of protection.

While it is true that, in some sense, unregistered trademarks are given some limited “common law” protection, registered trademarks, on the other hand, will provide far better certainty and protection to a business’ goodwill, with relatively small expense.

Our intellectual property lawyers and trademark agents regularly assist businesses and government offices with protection of their valuable trademarks.

Trademark registrations provide 10 years of protection, can be renewed indefinitely, and the territorial scope of the protection covers the entire country. Thus, even if a multibillion-dollar business comes to Canada and tries to use the same or similar business name to operate its business, the Canadian trademark owner would be able to stop it for trademark infringement, provided their trademark is registered and in use.

Trademark registration for logos and tag lines

If your organization or business uses a logo design or tag line, you may also wish to consider obtaining proper trademark registration. For a relatively small cost, the trademark registration helps you to avoid expensive lawsuits down the road and to avert redoing all of your company’s signage, business cards, advertising, and brochures.

Nelligan O’Brien Payne LLP’s intellectual property lawyers and trademark agents have protected hundreds of trademarks, including some top brands, locally, domestically, and internationally. Here are a few examples of the types of products and services that can be protected:

•  Telecom devices and services
•  Data communication devices and services
•  Pharmaceutical products
•  Cosmetic products
•  Apparels
•  Machinery parts and devices
•  Medical devices
•  Foods, alcoholic, and non-alcoholic beverages
•  Kitchen and bathroom wares
•  Retail services
•  Services of national associations
•  Union services, retail services, and restaurant services

Patent protection may be available for your inventions. To apply for a patent, full information about your invention must be supplied to the patent office of the country in which you require protection. Your applications are then reviewed by patent examiners. Upon publication or issuance, the information is made available to the public.

After the expiration of the patent protection period, which in Canada and the U.S. is 20 years, competitors may copy the invention legally.

Our intellectual property lawyers and patent agents assist entrepreneurs and businesses to secure patent protection in Canada and worldwide with the assistance of our network of foreign associates. We also provide patent audits and related strategies to ensure our clients are adequately protected in various countries, addressing current needs and future growth.

In situations of patent infringements, we are also able to provide the most cost-effective representation.