intellectual-property, copyright, international, trademark, patentDo patents, trademarks, and copyrights transfer across borders?
I am starting a web company that will inevitably do business in multiple countries, and I would like to know how best to protect my assets against infringement internationally. Would registering the assets in my home country (Canada in this case) be enough, or should I also look into registering them elsewhere as well?
Patents and Trademarks are only valid in the country they are registered in. In the EU I believe there is a new product that allows you to patent / trademark across the entire EU.
But keeping it simple, if you trademark in the US, it isn’t trademarked in Canada or anywhere else.
Copyrights are mostly valid worldwide, without any registration needed, they are a different story. Many countries have signed on international copyright treaties.
http://www.copyright.com.au/get-information/about-copyright/international-copyright-treaties-and-organisations
So work you create will be copyrighted in other countries, unless that country doesn’t abide by for example the Berne Convention. I am not sure which countries don’t participate but the majority of the world does.
You can register the same company at different locations. That is not a problem…
Registering it in my country requires that the name be available in the official standard registrar of the government (not already taken, I mean).
In general, you need to check the WIPO registry, which is maintained across the globe. They also issue patents etc. It is specifically for such international businesses.
I know that I can, but does it actually provide me any benefit? For example, if I have a trademark only in Canada, can someone ins the US take my exact trademark and use it as their own? Or would US courts consider that infringement? – Comment by OP
Yep, and that varies from country to country. Each country has its own accords, and that is why, it is advised to register with WIPO only.
Wish you luck!
The answer is different for each form of intellectual property and the detail is complicated so the best I can do is give an overview.
Copyright This is a right that does not need registration in any country that has signed up to the Berne Convention (164 Countries, including Canada, the US and the EU). In the US it is still possible to register copyright and if you do it provides certain advantages (essentially you may be able to claim much higher damages for an infringement that takes place while copyright is registered) but as a general rule copyright is an unregistered right. It arises on creation (or in many jurisdictions “fixation” - the recording in permanent form) of the work.
Secondly, Berne countries have agreed to protect the copyright of other jurisdictions at least as well as their own. If you write a program in Canada and someone infringes copyright in that program in the UK you can sue in London for that infringement. There are subtleties such as where does infringement take place on the web and what if you want to sue for damage that takes place world-wide, but those are too complex to go into here.
The bottom line is that no particular steps are needed.
Trade Marks Generally when people talk about a “trade mark” nowadays they usually mean registered trade marks.
Again there are many subtleties here - for example most common law countries (Canada included) provide a right to sue for what is called “passing off” where another business “passes itself off” (i.e. appears to be) your business and attracts customers away from your business. That might well include misuse of marks associated with a business which are unregistered.
So, as a general rule, you need to register a trade mark in the jurisdiction that you want to protect it. In the EU it is possible to register what is called a “Community Trade Mark” (CTM) which works across the whole EU. This means that, in principle, you might have to pay for more than one registration (eg Canada, US and EU) which is expensive. Worse: trade marks are registered for use classes (this is how Apple the music company and Apple computers managed to co-exist for so long) and the more classes the more cost.
A good trade mark expert ought to be able to advise on the most cost effective way to do this.
Patents Like trade marks, patents are registered and they are (at the time of writing) restricted to individual countries such as the US, Canada, UK, France or Germany. The EU intends to set up a thing known as a “unitary patent” that would be a single patent across most EU countries and, in principle, cheaper and simpler for an EU wide business, but it does not exist yet.
To confuse things more there is a European Patent Office (EPO) that allows you to register a patent for countries in the European Patent Convention - a strictly larger set than the EU. An EPO registration gets you a sort of compromise situation. You have a patent which can be invalidated individually in some countries of the EPC and not others - so strictly speaking it is a bundle of patent rights - but administratively you only have to apply to one office.
In fact there is more international cooperation than this might appear. You can use the registration in one country’s office (or the EPO) to start an international process in other countries (though you still have to pay extra for more countries). The result is a little simpler administratively.
Each of those subheadings is a massive simplification I’m afraid, but I hope it gives the general idea.
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