Here's an overview of the Canadian intellectual property laws we learned about during our February 25th virtual event with lawyer Czarina Pacaide. Plus, watch the replay!
There are few feelings like that gut punch of seeing another company blatantly ripping off one of your designs. “Hey, that’s mine!” you think. And then you start to wonder, “Is there anything I can do about it?”
As attendees of our February 25 event learned from lawyer Czarina Pacaide of Anahaw Law, there are several intellectual property rights that apply to handmade businesses. These laws can help you ward off copycats and thieves from stealing and profiting off your work. Here’s the lowdown on what Pacaide discussed, with some extra details from the very informative website of CIPO, the Canadian Intellectual Property Office.
What is intellectual property?
Intellectual property, or IP, is an intangible asset with value. As Pacaide explained during the live event: “You can bring it to an accountant and your accountant can value this for you. It can help increase the bottom line of your business in terms of your assets.” In a handmade business, things like your product designs, illustrations and logo all count as IP. Think of it this way: Without your designs or your logo, you wouldn’t have a business.
Because these assets are integral to your ability to make money, they are things we want to protect. “It’s important to protect them because they are valuable,” said Pacaide. Just as you protect your money by keeping it in a bank and shield yourself from disaster with insurance, there are various ways to safeguard your intellectual property.
But before we get to the how, webinar attendees heard from Pacaide about a couple of things that are important to know about defending your IP.
First, taking someone to court for every infraction may not be worth your while. For example, if a copycat published a blog post that plagiarizes one of your own (this is something that actually happened to Pacaide), you'd have to think, do you have the funds and emotional energy to battle them? Is the blog post core to your ability to make money? Whether you pursue legal action depends both on your resources and the extent of the damage to your business. As Pacaide put it, “What is the best business decision for you in terms of protecting your intellectual property?”
And while it might be fine to let some things slide, Pacaide said there’s a second consideration to keep in mind about your intellectual property assets. “The way we look at IP in Canadian law is that if you don’t use it, you lose it,” she said. Basically, if you’re not going to make the effort to protect what’s yours, the courts won’t either. “It’s important at the outset that we protect our IP rights because they can be captured by our competitors.”
But how do we maintain ownership over what’s ours? During our live session, Pacaide walked attendees through the five ways to protect your creative works in Canada. We’ve recapped the overview below, with additional info from CIPO, outlining each of the five IP rights, how to get them and how to protect them.
Paid members: Don’t forget you can watch the entire video replay of the event. Scroll down to find it at the bottom of this page.
The Canadian Intellectual Property Office
Before we get into it, there’s one central resource you should know about: the Canadian Intellectual Property Office, the government agency responsible for processing applications and granting certificates of ownership. This is where you go to get proof that you own what you made and — with a dashboard dedicated to each type of IP —where you’ll find manuals and guides for everything listed below. “If ever you do need information, the CIPO website is actually quite good,” said Pacaide.
What it is: As per CIPO, “Copyright is the exclusive legal right to produce, reproduce, publish or perform an original literary, artistic, dramatic or musical work.” Every sketch you draw, blog post you write or video you make is covered by copyright, as are any books, textile patterns or kit instructions. Governed by the Copyright Act.
How to get it: Copyright is automatically yours the moment you create something, so you don’t have to do anything to get it (other than make the work in the first place). However, Pacaide said it’s a good idea to apply for registration of a copyright to establish your ownership of important works like books, kit instructions or workshop handouts. For $50*, you can submit an application with CIPO, which will issue a certificate proving your ownership.
How to protect it: The simple first step is to add a copyright notice to your work. On any creative work where copyright applies, put the copyright symbol with your or your company’s name and the year. For example, write it in the footer of your website.
If you see someone using your work without permission, you’re within your right to ask them to stop using it, whether you’ve registered the copyright or not. However, registered copyrights are easier to defend. “If you have the certificate, it’s easier to send a cease and desist letter,” said Pacaide. “A cease and desist letter — that’s just a letter to say, Hey, this is mine, stop using it.”
If you spot someone using your work without your permission and don’t ask them to stop, the law views that as you giving them license to use your work — so speak up when you see it. “You need to show that you’re taking actions to protect your copyright,” Pacaide said. This holds true for other types of IP as well.
What it is: Industrial designs cover 3D shapes and 2D ornament and pattern. As per CIPO, “An industrial design is about how something looks. It protects a product’s unique appearance, not what it is made of, how it is made or how it works.” For example, if you create a uniquely shaped vase or a distinctive knitwear pattern, that would count as industrial design. Governed by the Industrial Design Act.
How to get it: Register your original work with CIPO within a year of the design being publicly available. “Keep the design confidential until you file,” recommends Paicade, who warns against sharing behind-the-scenes photos of your design on social media before you’ve applied. “It must be filed within one year of first publication of this design anywhere in the world.”
That’s because the key to a successful application is that the work is original. “What this means is that it’s substantially different from prior art, and not simply a variation,” said Pacaide. “It’s good to speak with a lawyer to figure out if [your design is] original enough.” A lawyer will also help you navigate the application process, which includes a five-year examination by CIPO after filing.
Fees start at $430 per application and upon approval, you’ll own the industrial design rights for up to 15 years. Industrial designs are not renewable, but they may be eligible for trademark protection.
How to protect it: Once you’ve filed to register your industrial design, you can add a tag to your items and online product descriptions with the industrial design code to show that it’s a protected piece.
What it is: As per CIPO, “A trademark is a combination of letters, words, sounds or designs that distinguishes one company’s goods or services from those of others in the marketplace.” This includes things like your logo (which can be covered by both trademark and copyright), a slogan or even a signature scent. Said Pacaide: “The key about trademarks is they must be a distinctive part of the source.” (Source meaning your company.) Governed by the Trademarks Act.
How to get it: Newsflash: You might already have your own own trademark. Canada has what’s called common law trademark, which means you can obtain trademark rights simply through use of a mark in Canada over time. However, registering a trademark offers more protection.
Trademarks are registered in the context of what category they fall under, so when you file an application with CIPO, you need to indicate the goods or services associated with the trademark. For example, you could have two companies with the same slogan — one selling woodwork products and one selling legal services — because the slogan would be registered in different classes for each company.
Applications for the registration of a trademark start at about $347, plus $105 for each additional class. Costs can add up quickly, so Pacaide suggested deciding which classes you want protected. (There are 45 different classifications for goods and services.)
Keep in mind that some things cannot be registered, such as surnames, places of origin and words in other languages. Pacaide used the example of the word pearl as something that a jeweller wouldn’t be able to trademark, because other jewellers make pieces with pearls.
“The reason we have trademarks is because we want to be able to protect the consumer, so that the consumer knows where a good or a service comes from,” Pacaide told attendees.
How to protect it: Upon successful registration, CIPO will send you a certificate of registration and your trademark will be in the Register of Trademarks. No one else will be able to register the same trademark for the same goods and services, and you’ll have the legal proof to prove ownership in court, should someone infringe on your IP. You’ll need to renew every 10 years. Note that there is no legal requirement to include ® or ™ with your trademark.
What it is: Patents apply to new, useful inventions — things that are functional. If you’ve created an innovative closure system for a bag, for example, or a machine to aid in production work, these inventions may be eligible for a patent. As per CIPO, “Through a patent, the government gives you, the inventor, the right to stop others from making, using or selling your invention from the day the patent is granted to a maximum of 20 years after the day on which you filed your patent application.” Governed by the Patent Act.
How to get it: You can file a Canadian patent application with CIPO, but you may also want to consider filing abroad for a patent for worldwide protection. Like industrial designs, the invention must be new and not disclosed to the public. “You don't want to be showing behind the scenes if you’re wanting to protect an invention,” said Pacaide.
Application fees start at $210 and you must pay a smaller annual fee to maintain your IP rights. We highly recommend getting a lawyer to assist you in making an application.
How to protect it: While the Canadian Patent Act doesn’t require that you mark items as patented, Pacaide said you may wish to mark your invention “patent applied for” or “patent pending” after you’ve filed your application. These phrases have no legal effect but will warn others that you’ll be able to enforce your exclusive right to make the invention once a patent is granted.
Note that it’s illegal to say an item is patented when it’s not. “For protection to apply, the patent must be registered with CIPO,” said Pacaide.
What it is: As per CIPO: “A trade secret can be any business information that derives its value from its secrecy.” And yes, you already have some. Newsletter lists, product recipes and any other internal company information count as trade secrets. “It's valuable because only you have it,” said Pacaide. Governed by the Criminal Code and case law.
How to get it: There is no formal process of registering a trade secret with the Canadian government. Trade secrets are automatically yours as long as the information is valuable to your company and you keep it secret and on a need-to-know basis with key employees, contractors or advisors.
How to protect it: The key is to keep the information secret. “It’s not like the other intellectual property that we talked about,” said Pacaide. “Trade secrets cannot be shared outside of the company.” (That is, you can’t sell someone else a license to use them.) You can protect trade secrets through things like nondisclosure agreements, confidentiality clauses, encryption and password protection and under physical lock and key, such as in a safe. Essentially, you need to have policies and processes for protecting confidential information — your trade secrets. “They are protected indefinitely, as long as you keep them confidential,” said Pacaide.
Legal disclaimer (because of course): This article and the content in the video is purely for informational purposes and in no way should be taken as personalized legal advice. Neither Workshop Magazine, Czarina Pacaide, nor Anahaw Law can be held liable for any actions that you may take based on information provided in the article or recorded webinar session. We recommend speaking with your own lawyer about your unique situation.
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