Business

Intellectual Property

Protecting your brand, your creative work, and your trade secrets through concrete legal structures is one of the many ways we help businesses and individuals at Boughton Law.

Owning the rights to your work is often critical for any business, contractor, or creative individual. Knowing what you need to do to protect your brand and intellectual property early on can save you from running into issues down the road. Should problems arise, Boughton Law can also help you resolve them in a cost-effective manner.

We offer a range of services depending on your requirements:

We advise on clearance and potential risks, recommend strategy, give opinions on registrability and infringement, prepare and file applications, respond to examiners, attend to registration, send cease and desist letters, start or defend against cancellation actions and oppositions, negotiate coexistence arrangements and settlements, draft and review agreements for licensing and transferring trademarks and trademark rights and, where necessary, enforce or defend trademark infringement or passing off actions against others.

We also assist individuals and businesses preserve and protect their trade secrets, confidential information and privacy rights by establishing protocols and crafting practical and effective confidentiality, non-disclosure, and non-competition agreements.

We have extensive experience reviewing, drafting and negotiating provisions and contracts involving intellectual property assets including licensing, marketing, distribution, technology transfer, franchise, partnership, technical support, branding, agency, service, manufacturing, design, consulting, research, development, evaluation, employment, independent contractor, option, testing, and evaluation agreements.

Boughton Law is a part of Meritas®, a global alliance of independent, full service law firms. With access to firms operating in over 230 markets worldwide, we can draw upon the expertise of trusted foreign legal advisors and even provide referrals if needed.

  • Confidential Information

    In highly competitive industries, it is imperative that businesses and individuals protect their trade secrets and confidential information. We assist with preparing confidentiality agreements, non-disclosure agreements (NDA), and trade secrecy agreements on your behalf. We can also provide counsel if there has been a breach of any of these agreements.

  • Software

    Regarded as some of the most competitive industries, the software, technology, and e-commerce sectors require that you have strong protection of your intellectual property and the right documentation in place. We provide a range of services to these clients which includes the preparation and negotiation of software development agreements, software licensing and distribution agreements, end-user licenses, call centre agreements, web-linking agreements, domain name protection, strategic alliances, and other contracts related to the commercialization of intellectual property.

  • Trademarks

    Registering for, enforcing, and protecting a trademark are key components securing your intellectual property. We have considerable experience advising clients about clearance, registration, monitoring, licensing, transfer, and the enforcement of trademarks.

    Some of the services we offer are:

    • Availability searches
    • Registrability opinions
    • Due diligence review
    • Chain of title investigations
    • Preparation, filing, and prosecution of Canadian applications
    • Oppositions and cancellation proceedings
    • Local and foreign registration
    • Maintenance and renewal
    • Assessment and management of international trademark portfolios
    • Enlisting watch services for both specific market sectors and on the internet
    • Advice on infringement and passing off matters
    • Representation in injunction and seizure applications
    • Advising, negotiating, and documenting the assignment, licensing, and control of trademark rights

    Frequently Asked Questions

    What is a trademark?
    A word or words, symbol, design or combination which distinguishes one product or service from another and identifies the source for purchasers (e.g. STARBUCKS for coffee.)
    Who can apply?
    Individuals, partnerships, companies, legal associations, and joint ventures.
    Why register?
    Registration in the Canadian Intellectual Property Office (CIPO) is proof of ownership, warns competitors of your prior rights, and is enforceable against infringers anywhere in Canada.

    Registration is not mandatory, but has some important advantages:

    • Others can search the register to avoid a conflict with your mark
    • The CIPO can refuse registration to a confusingly similar mark
    • It is enforceable anywhere in Canada
    • You can use it to claim priority in other countries
    • It is virtually incontestable after five years
    • It supports the registration and protection of a similar domain name
    • It can be an important intellectual property asset
    What does the process of registration involve?
    There are several stages:

    • Searches to identify any conflicts or problems
    • Preparing and filing the application
    • Examination by the CIPO
    • Advertisement in the Trademarks Journal if it is approved
    • Opposition if a third party objects
    • Allowance if there’s no opposition
    • Registration
    Does a registered business, trade, corporate, or domain name have the same legal effect as a registered trademark?
    No. A registered trademark will generally prevail over all of these if there is any confusion over similar wares or services.
    If two trademarks are confusing, which one has priority?
    The one that was filed or used first in association with goods or services in Canada.
    What trademarks are not registrable?
    • Marks which are confusing with an existing trademark.
    • Names and surnames, unless they are famous.
    • Words which are clearly descriptive or deceptively misdescriptive of the goods or services or where they come from, eg. MINTY for mints.
    • Prohibited marks such as the Red Cross emblem or the flag of a country.
    Why do a search?
    To anticipate and perhaps avoid a conflict with another confusingly similar mark later on, when the potential consequences can be expensive and disruptive.
    Does a trademark have to be used before an application can be filed?
    No, you can file based on proposed use, but it has to be used before registration will issue.
    How long does it take to get a registration?
    12 to 18 months from filing to registration if there is no objection/opposition and the trademark is in use, but the important thing is to file and establish your right to the trademark as soon as possible.
    How long is a registration good for?
    15 years, renewable indefinitely so long as the mark is in continuous use.
    Does a Canadian registration protect the mark outside of Canada?
    No, but we can help you to file applications to protect the mark in other jurisdictions.
    What information do you need to prepare and file an application?
    • Applicant information – your name and address
    • Trademark – if it is a design, submit a clear copy
    • How you came to own the trademark –  include the name of any party who owned or used it previously
    • Use of mark in Canada – describe how, since when and with what kind of wares or services
    • Who else will be using the mark – include how the mark is being used or will be used
    • Wares or services – describe any wares or services to be associated with the trademark
    • Pending applications outside of Canada – details of any pending applications/registrations for the same mark
    What should foreign applicants and associates take note of?
    • No power of attorney or other legalization is required
    • Canada does not follow the International Classification System so goods and services should be described in ordinary commercial term
    • Canada is a signatory to the Paris Convention so foreign applicants from other member countries can claim convention priority if the Canadian application is filed within 6 months of the original filing
    • The applicant does not have to sign the application
    • Filing in our local CIPO office has the same effect as filing in Ottawa
    • Vancouver is 3 time zones behind Toronto, Montreal and Ottawa, so we have an extra 3 hours to meet any urgent deadlines

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