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Cross-border law firm advising startups and game studios on California and B.C. corporate and technology law.

Expedited Trademark Examinations in Canada

The Canadian Intellectual Property Office (CIPO) recently announced that it will be accepting requests for expedited examination of trademark applications along with other measures to speed up the trademark registration process in Canada. Before the recent announcements, CIPO took approximately 24-30 months to issue an examiner’s report (also called an office action). The new measures are expected to greatly reduce delays in Canada. 

Expedited examinations may be requested by an applicant if one of the following conditions are met:

  1. a court action is expected or underway in Canada with respect to the applicant’s trademark in association with the goods or services listed in the application.
  2. the applicant is in the process of combating counterfeit products at the Canadian border with respect to the applicant’s trademark in association with the goods or services listed in the application;
  3. the applicant requires registration of its trademark in order to protect its intellectual property rights from being severely disadvantaged on online marketplaces; or
  4. the applicant requires registration of its trademark in order to preserve its claim to priority within a defined deadline and following a request by a foreign intellectual property office.

Other measures to reduce delays in trademark registration include:

  1. examiners providing fewer examples of goods and services that would be considered acceptable in examiner’s reports;
  2. faster examinations of applications with goods and services from CIPO’s pre-approved list of goods and services; and
  3. reduced number of examiner’s reports for each application and issuance of refusals in a timely manner. 

If you have a pending trademark application that has yet to be approved and you believe you meet one of the four conditions above, you may wish to request expedited examination for your application. If a request for expedited examination is accepted, the application will be examined as soon as possible. 

Please reach out to a member of Voyer Law’s IP team if you would like to request expedited examination for your trademark application.

Canada’s Start-up Visa Program

To attract foreign entrepreneurs to work in Canada, Canada has implemented the Start-up Visa Program. The program gives qualified business owners and their families an expedited track to permanent residency if they can meet the requirements.

To be eligible for the Start-up Visa Program, you must (1) have a qualified business, (2) obtain a letter of support from a designated organization, (3) meet the language requirements, and (4) have enough money to settle in Canada. 

1.         To have a qualified business, you must show that you own more than ten percent of the voting rights attached to all company shares. Additionally, applicants and the supporting designated organization must jointly own at least fifty percent of the voting rights shares. Upon receiving permanent residency, you must incorporate your business in Canada, an essential part of your business must take place in Canada, and you must provide active management of your business from within Canada.

2.         Applicants must also obtain a letter of financial support from a designated organization. These can be venture capital funds, angel investor groups, and business incubators that are pre-approved by the Canadian Government. You can find a list of these organizations here (https://www.canada.ca/en/immigration-refugees-citizenship/services/immigrate-canada/start-visa/designated-organizations.html). The letter of support: 

  1. describes the business structure; 
  2. identifies the applicant and their role in the business;
  3. describes the nature of the business;
  4. confirms the applicant has control over the company’s intellectual property;
  5. specifies the amount of the investment; and 
  6. that the organization performed a due diligent assessment of the applicant.

Lastly, the designated organization will send a commitment certificate directly to Citizenship and Immmigration Canada (CIC) that outlines its financial support. The CIC will use both the letter of support and the commitment certificate to assess your application.

3.         To be eligible to apply, you must also take a language test from an approved agency. To be considered for the program, you be able to show minimum proficiency in speaking, reading, writing, and listening in either English, French, or both languages. Upon receiving a score above Canadian Language Benchmark 5, an applicant should submit the results along with their application.

4.         Finally, applicants will not receive financial support from the Canadian Government, so they must provide proof of sufficient funds. You must show that you have enough money to support yourself as well as any dependents you plan on bringing to Canada with you. There are minimum requirements but the Canadian Government recommends that any applicant brings as much money as possible with them. 

If an applicant meets the eligibility requirements and submits and pays for a successful application, the process should take approximately twelve to sixteen months to complete. However, interested applicants can also apply for a temporary work permit while their start-up visa application is pending so they can start building their business in Canada. There are more specific requirements for such a work permit, but an applicant must have already received a letter of support from a designated organization. Finally, temporary work permits can typically be complete in a few weeks but times can vary depending on the country and other circumstances (Covid-19). 

If you can meet the criteria, the Start-up Visa Program can be an excellent opportunity to move your business into Canada while concurrently obtaining permanent residency.

Video Game Studio Intellectual Property Strategy

Recently we’ve seen an uptick in interest among video game studios looking to protect their intellectual property, with a focus on protecting characters and game/studio names.

Here is a list of priorities that should be considered when determining or developing a video game studio’s intellectual property strategy (in common order of priority).

1. Trademark protection for the game name and/or logo

With a successful game comes the risk that a competitor may produce a similar game and brand it with similar game title and/or logo.  Obtaining trademark protection of a game title and/or logo ensures your right to stop competitors from using the goodwill and reputation associated with your game title and/or logo.

2. Copyright protection for game characters

Obtaining copyright registrations is best suited for protecting the main character or characters of a game and can be used to stop unauthorized or unlicensed use of the character(s) on things such as t-shirts, plush animals, bobble head toys, clothing, hats, cups and mugs, etc.

3. Trademark protection for a studio name and/or logo

Finally, the studio should protect the goodwill and reputation associated with a studio name and/or logo through trademark registrations.

While a studio may not have financial resources to pursue all of the above at the start of development, it’s critical for the studio to at least develop an intellectual property portfolio strategy and plan to execute over time as resources permit.

Intellectual Property Rights for Video Game Studios

For our video game clients, protecting intellectual property is an important part of their business.   Intellectual property protection for a video game commonly comes in the form of trademark and copyright but may also involve patents and trade secrets

Trademarks can protect the titles and logos associated with a game.  Without a registered trademark, another studio could register a trademark that is confusingly similar to your existing game, thereby creating confusion, negatively impacting your ability to enforce trademark rights and potentially the complete loss of all trademark rights.

Copyright can protect game code, artwork, music and characters.  A copyright registration could be obtained on a particular character used in a game to prevent third parties from creating and selling plush toys based on the character.  

Patents can protect new and innovative hardware, systems, technical solutions, innovative game play or design elements and technical innovations such as networking or database design.  

Trade secrets can protect customer mailing lists, pricing information, publisher contracts, developer contracts, in-house development tools, and terms and conditions of any agreement the studio enters into.  Note that the enforcement of a trade secrets requires that a confidentiality agreement be put in place.

The following chart provides a helpful overview of intellectual property protection options:

Copyright  ProtectsTrademark ProtectsPatent ProtectsTrade Secret Protects
MusicStudio nameHardware systemsCustomer mailing lists
CodeStudio logoInventive game playPricing information
StoryGame titleTechnical innovations such as new software, networking or database designsPublishing contacts
Characters  Middleware contacts
Art  Developer contacts
Box design  In-house development tools
Website design  Deal terms

We recommend that studios become familiar with the range of intellectual property protections available and to prepare an intellectual property strategy for both the studio and its games.