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Canadian
Intellectual
Property Bulletin
Volume
10 - July, 2000
This newsletter is not intended to constitute a legal opinion on any of the issues
discussed. Readers should seek professional legal advice on issues of concern to them - we
would be pleased to elaborate on any of the articles herein and discuss how it might apply
to specific problems. Contact us for more information.
Workplace Confidentiality Agreements
Workplace protection contracts may attempt to protect
trade secrets, confidential information, client lists, or internal company
memorandums or to prevent employees from
competing with the employer both during and after the employment term.
The three general principles of workplace confidentiality agreements are
(i) employees should be free to earn a living without unnecessary restrictions
(ii) employers must be able to protect legitimate confidential business
information and (iii) certain employees will owe a higher duty to their
employers due to their position in the company or a confidentiality contract
they have signed. Whether or not a court will enforce the terms of these
agreements depends heavily on the specific facts of the case.
In many cases courts are reluctant to enforce confidentiality agreements or
restrictive covenants between parties of unequal power where the employee may
have had little choice but to agree to the contract terms.
However, parties of equal bargaining power are assumed to create
contracts that reflect reasonable judgments and thus are rarely disturbed.
In addition, the courts will only enforce restrictive covenants that are
reasonable regarding the interests of both parties and the interests of the
public. Agreements that
specifically outline factors such as the geographical area, duration and details
of the restriction are more likely to be enforced than those contracts that are
imprecise, over-broad or excessively far-reaching. Finally, employers should include an injunctive relief clause
in all confidentiality and non-competition agreements. Although not binding on the courts, these clauses
evidence that the employee was aware of the serious penalties and irreparable
harm that results from breaching the contract terms.
Clients requiring assistance in the
establishment of
workplace trade secret or confidentiality programs, or in the enforcement of
confidentiality provisions, are invited to contact us to discuss this further.
Patent
Law Treaty
The World Intellectual Property Organization (WIPO)
met in June of 2000 to create the Patent Law Treaty. This international effort was organized to ‘harmonize
patent laws with respect to matters concerning the formalities of national and
regional patent applications and the use of model international forms.’
Examples of the formalities addressed under this treaty include the
application and examination procedures, the
standards required to obtain a patent and the rights and remedies
afforded a patent owner. The Deputy Director General of WIPO has stated that the most
significant aspect of the PLT is that it sets guidelines and standards such as
the terms member countries can impose when determining a filing date.
For example, the PLT proposes to reduce the costs for an inventor seeking
protection in a number of countries.
This coordinated system may significantly benefit Canadian applicants
seeking to register in multiple foreign countries.
Domain Names
V.
Trademark Rights
Businesses are using the Internet more and more for
conducting business and it is becoming more and more important, especially the
World Wide Web, and more and more legal problems have arisen because of this.
One of these legal problems is the clash of Domain names and trade-mark
rights.
The Internet now uses addresses that are words or
domain names, however a problem quickly arose.
Domain names quickly started to clash with the Intellectual Property
rights granted to trade-mark holders. The
World Wide Web became an important information source for numerous businesses
and because of its anonymity it allows for easy infringement of trade-marks.
Anytime someone uses your trade-mark on the World
Wide Web in a domain name, there may be an infringement of your trade-mark
rights. The easiest way to tell if
someone is infringing your trade-mark rights is if they use your trade-mark as
their domain name and the website could easily be mistaken for your wares or
services. One of the main
characteristics of the World Wide Web is that it only easy misrepresentation to
the public.
On the World Wide Web, someone can impersonate a
large and well respected company with very little effort due to the general
public’s inability to see behind the curtain of the web page.
Web pages that can be misrepresented as associated with your trade-mark
are not the only way your trade-mark infringement can be interfered with on the
World Wide Web. Another common way
that trade-mark rights are infringed on the World Wide Web is through
“cyber-squatters”. A
“cyber-squatter” is someone who registers a number of trade-marks as domain
names in the hopes that he can sell the domain name to the owner of the
trade-mark or registers the trade-mark because they are in competition with the
owner of the trade-mark and wants to prevent the trade-mark owners presence on
the World Wide Web.
If your Intellectual Property rights are being
infringed by some else’s use of your trade-mark in a domain name, a series of
steps can be taken. The first step
is to issue a complaint through the register for the domain name.
ICANN has Alternative Dispute resolution policy that causes a domain name
to be transferred to a complainant if the complaint holds the domain name as a
trade-mark and the holder of the domain name has used it “abusively”.
This is a fairly easy and quick method in terms of legal action for a
holder of a trade-mark to protects his rights against certain domain name
practices. The limitations of this
method is that “abusive” use of the trademark is limited to certain
circumstances and the complainant must hold trade-mark rights to the domain name
or a similarly and confusing mark. The
use of ICANN’s Dispute Resolution Policy, no matter what the outcome of the
procedure is, does not prevent a complainant or the holder of the domain name
from seeking legal action. No
matter what the decision of the Administrative tribunal, the complainant is
still able to pursue legal action.
If the first step is not successful in stopping the
infringing use, then the next step might be to initiate court action.
Registration
under the Plant Breeders =
Rights Act
In Canada, plant varieties cannot be protected under
The Patent Act. The Plant Breeders’
Rights Act
was created so that growers would receive some form of protection over their
plant variety “inventions”. To be registrable, a variety must display all of the
following elements:
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New or novel
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Clearly distinct or distinguishable from all
varieties in common knowledge
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Stable with respect to its essential features
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Uniform or homogenous through cycles of propagation,
reproduction or multiplication.
If, after consulting the Act requirements, a breeder feels that they have
produced a variety meeting the above requirements, the application process
becomes the first step in obtaining protection.
In a similar manner to a patent application, a PBR
application will undergo examination, opposition and publication.
In addition to these common procedures, this type of application must be
accompanied by a deposit or reference sample of seed on an ongoing basis.
Specifics of the deposit requirements can be obtained from the Office.
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