Legal news and trends for Canadian in-house counsel and c-suite executives
Issue link: https://digital.canadianlawyermag.com/i/50894
www.bakernet.com Logo mark for example. "If Apple wants to make sure no one makes a fake iPod and uses its logo," says Aide, "it as a first step, had better register that trademark in every major country in which it may have sales. And it had better to do so before anyone else. (And, of course, it has)." Most companies don't realize the difference between trademark protection in civil law countries — most of Europe, Latin America and Asia — and the English-speaking com- mon law countries (like the UK, Canada and the US). Under the common law, a company that uses an unregistered trademark still has some legal protection if it is the first to use the mark. But under civil law, registration determines ownership, even if the trademark is not immediately used. Aide points to one North American client that failed to do a proper trademark search in Europe and learned too late that a small family-run business had already registered the identical mark for the identical products trade- mark. It cost the company millions of dollars to settle the matter. "That kind of money will buy you a lot of trademark searches," says Aide, who learned about the European market first- hand during five years in Baker & McKenzie's Frankfurt office. Patent registration regimes to protect an invention, product or process operate in most jurisdictions. Research in Motion learned the hard way about the power of patent registra- tion when it paid $612.5 million to settle a U.S. patent infringement suit from a small com- pany that claimed to be the first to develop a BlackBerry-type e-mail technology — and had a patent to back up its case. Together, registering patents, copyrights and trademarks offer much more than a shield from competitors. They are also legal tools to pursue counterfeiters. And they are a valuable asset when seeking third party financing. Says Aide: "A lender or investor wants to make sure you are protected for your IP, especially if it's your key business asset." Aide takes his clients through all stages of the IP protection process. Say a Canadian drug company has a new asthma pill it wants to manufacture and market in the U.S. and Europe. Aide will first coordinate necessary patent, copyright and trademark clearances, using Baker & McKenzie's network of local U.S. and European attorneys to do so. Companies conducting such searches on their own have fewer resources and likely would not obtain the same comprehensive results or expert local guidance. Registration is the next step. But that's not as simple as merely filling out some forms. "It should be part of an overall global strategy," explains Aide. "Where are the competitors going? How do you want to develop your assets to be attractive to investors and generate the most revenues?" Other strategic questions: "What is the most ben- eficial corporate structure? What is the best tax structure?" And, "Should the intellectual property be given to a subsidiary or a licensee for offshore manufacturing?" With its global reach and internationally renowned business experience, Baker & McKenzie is able to answer these questions, and more. Says Aide: "My job is not only to protect my clients' IP assets, but to make each such asset as valuable as possible." Intellectual Property The fight against counterfeiting can seem like a lost cause. But a well executed programme can make the difference. Baker & McKenzie can help you create and enforce a truly global anti-counterfeiting strategy to protect your assets. Jim Holloway +416 865 6914 jim.holloway@bakernet.com Christopher Aide +416 865 6926 christopher.m.aide@bakernet.com Baker & McKenzie LLP Brookfield Place 181 Bay Street, Suite 2100 Toronto, Ontario M5J 2T3 +416 863 1221 Global experience across a broad range of industries Practical and results-oriented advice Unique border enforcement products, including Borderwatch and BorderResponse Expertise where it counts most Asia Pacific IP Firm of the Year 2007, 2006, 2005, 2004 (Asialaw) www.bakernet.com/IP Baker & McKenzie International is a Swiss Verein with member law firms around the world. In accordance with the common terminology used in professional service organizations, reference to a "partner" means a person who is a partner, or equivalent, in such a law firm. Similarly, reference to an "office" means an office of any such law firm. C ANADIAN Lawyer INHOUSE JUNE 2008 17