In-house counsel adopt defensive strategies for protecting IP rights in challenging times
Protecting intellectual property rights has never been so critical as pandemic-induced court closures and delays in setting up remote hearings have presented opportunities for IP infringement in Canada.
“Defendants in IP infringement cases have had a little bit of a vacation. We’ve had a few clients who have been really frustrated, but what we have advised them to do is seek injunctive relief,” says Matt Norwood, a partner at Ridout & Maybee LLP. “It’s just a matter of deciding if getting that injunction, at least for now, is sufficient. Knowing you can get that relief in less than a year does provide a backstop on those kinds of negotiations.” Filing a note of application may result in a hearing within six to nine months for trademark matters, Norwood says. Several of his clients have taken this route and were able to get some relief from the courts relatively quickly.
With the Canadian Intellectual Property Office essentially on pause for several months as a result of the pandemic, filing trademark applications resulted in delays, therefore creating vulnerabilities. Doing defensive work to assess competitor applications is a strategy used by Andrew Kaikai, senior legal counsel, intellectual property at global cannabis company Cronos Group.
“Our biggest strategy has been to overlap and look at trademarks, copyright and industrial designs to cover all our bases instead of focusing on just one kind of IP,” says Kaikai. While trademarks and industrial designs have been slow to process, copyright registrations are less severely impacted and, therefore, can be used as an interim solution.
“We also do a lot of defensive work where we assess our competitor applications and then tailor what we do to make sure we’re not getting ourselves in trouble that way,” says Kaikai. As in-house counsel, Kaikai is privy to the entire company trajectory, which enables him to make decisions in the most cost-effective way.
As the cannabis industry starts to mature, Kaikai notes that competitors are starting to get into trademark infringement battles.
“We’ve started to see the first skirmishes of trademark and IP battles in the cannabis space, so that’s a trend we’ve been monitoring in Canada,” he says. In the U.S. market, Kaikai is carefully monitoring political developments and the potential impact on federal legalization of cannabis, as well as subsequent changes that may be needed to Cronos Group’s IP strategy.
At TD Bank Group, a strategy is in place to capture innovations and secure their rights — but the pandemic has created obstacles to this process.
“It has been a bit more challenging in the COVID environment where people are all working virtually, to capture those innovations,” says Josh Death, associate vice president, intellectual property and patentable innovation at TD. “That being said, our volume is higher than last year, but I think it would have been even higher had we not had the COVID situation.” Registering and securing the rights and marks that are materially valuable to the business is a top priority for Death.
Patents are an emerging space in the banking industry, so developing expertise across the enterprise to identify, capture and harvest patentable innovation is another important focus.
“Other industries like the tech industry have been patent-centric for a long time, but banks are still learning how to better develop the ability to capture innovation and crystalize those rights,” says Death.
At Dorval, Que.-based computer hardware and software company Matrox, the legal team has not changed its strategy for protecting IP rights as a result of the pandemic, although a remote working environment has made certain aspects more challenging.
“Resources need to work in synergy, which is not always evident in a remote working situation, but nonetheless, we’ve kept our programs going,” says Nathalie Rizcalla, senior vice president, legal affairs at Matrox. Financial resources have been reallocated accordingly, she says.
“Matrox is in a privileged position, so whenever we’ve seen a threat, we’ve been able to act. Whenever there is a slowdown, we try to catch up on rebuilding our IP. We have worked relentlessly to strengthen the marks and the loopholes,” says Rizcalla.
A slowdown in activity caused by the pandemic allowed more time to tackle trademark issues and to beef up trademarks worldwide.
Rizcalla and her team plan to devote more time to building infrastructures around open source technology.
“I think it’s something that’s going to be used exponentially, and the framework needs to be set in place at different levels in the engineering teams, so that it’s properly managed within a company, because there’s a lot of value in open source,” she says.
Norwood has noted a large volume of machine learning and artificial intelligence portfolios coming into the patent space.
“It will be really interesting to see how those portfolios shake out. It might end up being much like the cellphone and smartphone patent portfolios that were litigated 10 years ago in the U.S,” he says.