Business Venture Blog
This is where we post about business, ventures, law, and business venture law.
Anything interesting, really.
Anything interesting, really.
Registering Your .ca Domain Name
Millions of people, organizations, and businesses trust the .ca domain name to brand themselves as Canadian online. The .ca domain represents an important tool for companies operating in the Canadian marketplace, and therefore it is advisable to proactively secure brands as .ca domain names at the earliest opportunity.
Benefits of a .ca domain name
The .ca domain name is ideal for Canadian websites for many reasons, including:
There is a Canadian presence requirement (CPR) for individuals, organizations and businesses to register a .ca domain. This requirement is meant to reserve .ca domain names for Canadians. All .ca domain name registrants must meet at least one of the 18 CPRs, i.e., the individual, organization or business must be, for example, a Canadian citizen, permanent resident, corporation, trademark registered in Canada, partnership, etc.
Register your .ca
2. Choosing a Registrar
While CIRA manages the .ca domain name registry, the domain names are actually registered through online retailers called Registrars. Registrars are evaluated and certified by CIRA every year and there are over 150 of them. When you search for a .ca domain name on CIRA’s website their certified Registrars are displayed. The Registrar you choose is important as they will be the main point of contact for the registration and management of your .ca domain name.
3. Registering a domain name
Once you’ve chosen a Registrar, a fee of $9.50 per year is payable by the Registrar on the approval of an application by CIRA. Tips for registering and protecting your domain include: to always register the domain name yourself so that you will always have access to the account; choose a strong password; provide the Registrant with the correct administrative contact information for renewal purposes; choose a registration term length that works for you (auto-renewal can be set up).
Protecting/Recovering domain names registered in bad faith
The .ca domain name operates on a first-come first-served basis. However, if there was a delay in registering a .ca domain name, there is the potential that cybersquatters (a bad faith Registrant) would have had the opportunity to register the domain name corresponding to brands that have recently entered in the Canadian market and, for non-Canadian companies, brands that are expected to enter Canada. If you suspect that there was a bad faith registration, there is a specific .ca domain name dispute resolution process called the CIRA Domain Name Dispute Resolution Policy (the “Policy”). Before a complaint can be made, the Complainant under the Policy must meet the CPR for registering a .ca domain before it can initiate a dispute. In order to succeed in a dispute, a Complainant must prove that:
Amber Blair is a member of the BLG Business Venture Clinic, and is a 2nd year student at the Faculty of Law, University of Calgary.
 https://cira.ca/cira-domain-name-dispute-resolution-policy; http://www.smart-biggar.ca/en/articles_detail.cfm?news_id=166.
 https://cira.ca/cira-domain-name-dispute-resolution-policy; http://www.smart-biggar.ca/en/articles_detail.cfm?news_id=166.
The Emergence of Women Entrepreneurship in Canada
Historically, women faced greater barriers than men in entrepreneurship. To name three:
1. Access to education – generally, entrepreneurs require knowledge or understanding of the field they attempt to innovate within, and much of this knowledge is usually obtained through education – due to gender-based barriers, many women lacked this needed foundation to start their own businesses,
2. Social stigma – For much of history, women were expected to be caretakers and homemakers, not income earners, and
3. Greater difficulty raising capital – due to the gender pay gap, women historically earned less than men. It logically follows that if women earn less income, there would be fewer women with sufficient capital to start new ventures.
The first 2 barriers have been equalized or are slowly equalizing. Women are surpassing men in higher education and notions of “gender appropriate” careers is but a relic in the Western world.
The declining effect of the education and stigma barriers have contributed to a recent surge of women entrepreneurs, especially in Canada.
However, a major concern remains that Canadian women appear to be trailing far behind men in financing new ventures. The reason for this might stem from the gender pay gap which still remains an unsolved issue (although it is improving). Regardless of the reason, it’s important to realize that improved education for women and changing social norms won’t help women entrepreneurs be successful if they still lack capital to finance their ventures – a key component in building any business.
The Alberta Women Entrepreneurs – an organization that specializes in assisting women entrepreneurs find financing -- seems to be helping to improve the financing gap for women. Organizations like these may prove central to the future growth of the Canadian economy, especially if women are to take a more central part in that growth. (links below)
David Kim is a member of the BLG Business Venture Clinic, and is a 2nd year student at the Faculty of Law, University of Calgary.
A Guide to SR&ED
SR&ED (pronounced “shred”) stands for Scientific Research and Experimental Development. It is a federal tax incentive program used to encourage businesses to conduct research and development in Canada. The program is administered by the Canadian Revenue Agency (the “CRA”). Research by the Canadian Advanced Technology Alliance shows that the CRA provides around $3 billion in tax credits every year.
What are the tax benefits?
There are two main tax benefits of the SR&ED tax program.
Businesses, individuals, partnerships, and trusts operating in Canada can all gain tax benefits through the program. However Canadian-controlled private corporations (“CCPC’s”) get enhanced benefits through the program. Click HERE to see the requirements for what qualifies as a CCPC.
What kinds of research is covered
The Income Tax Act defines SR&ED in subsection 248(1). Broadly speaking, SR&ED means “systematic investigation or search that is carried out in a field of science or technology by means of experiment or analysis”. This covers: basic research (scientific work without a specific practical application in view); applied research (scientific work with a specific practical application in view); and, experimental development (work aimed at achieving technological advancement for the purpose of creating improving or creating new products, devices, materials, etc.).
The definition also coves work done by, or on behalf of the tax payer, with respect to “engineering, design, operations research, mathematical analysis, computer programming, data collection, testing or psychological research” where the work is commensurate with the needs and directly supports the above three (basic research, applied research, or experimental development).
What kinds of research is not covered
The government has made it clear what kinds of things they do not want to be covered with this tax incentive program. The following are not covered by the program:
To make a claim under the program, you have to file Form T661 along with your income tax return. Additionally, you must file either Form T2SCH31 if you are applying for a corporation, or form T2038(IND) if you are filing as an individual.
Along with the forms, you must provide additional documents to support your SR&ED claim. Depending on what you were researching/developing, this can include things like experimentation plans, data records, prototypes, projecting planning documents, records of trial runs.
The ability to apply for SR&ED will not last forever. Corporations have 18 months after the tax year for which the expenditures were incurred. Individuals have 17.5 months from this date.
What is on the horizon for SR&ED?
The SR&ED has seen its fair share of criticism. Some have said that program disproportionately helps big corporations and foreign subsidiaries. Media reports of SR&ED abuse in 2012 spurred the government at the time to provide the CRA with more resources to curb this abuse. In 2017, the Federal Budget stated SR&ED would be reviewed. As of today, we have not heard from the government if this review has occurred.
Rick Josan is a member of the BLG Business Venture Clinic, and is a 3rd year student at the Faculty of Law, University of Calgary
 Supra, note 1.
 Income Tax Act, section 248(1).
 Supra Note 1.
So you are an entrepreneur with a great business idea and you want to share it with potential partners/employees or contractors to scale your business. But you also don’t want those potential partners to steal your ideas, or those trade secrets that allow your company to work in a unique way. You need an NDA: Non-Disclosure Agreement.
WHAT IS AN NDA?
A Non-Disclosure Agreement is generally given to an employee or other person working with the company to protect the company’s intellectual property – particularly trade secrets. Trade secrets include information surrounding a corporation’s finances, profit margins, customer lists, technology know-how, current and future strategy, and R&D initiatives.
An NDA can:
The enforceability of an NDA is unpredictable and relies heavily on the judge that looks at it. Despite the uncertainty of enforceability, there are measures you can take to improve the chances of an NDA being successfully enforced.
1. Make sure you have Consideration
The difference between an NDA included with an employment agreement and a stand-alone NDA is “consideration”. Consideration is anything of value. In order for a promise to be enforceable, it must be made in return for something of value.
If an NDA is included in the employment/contractor agreement, the required consideration is the promise of a job. However, if an NDA is executed at a different time than the employment agreement, the employee/contractor must be given something else of value in exchange for their promise not to disclose information.
2. Be Specific
An NDA may be found unenforceable if it acts as an overly broad restraint on trade. The courts go to great lengths to ensure that employees are protected, thus the more limited the NDA is in scope, time, and geography the more likely they will be held up by a judge or a court.
3. Contractual Counterparties or Independent Contractors
A court will consider an employee or dependent contractor as dependent on the company. If the contractor however is a true independent contractor, it means that they operate like a business. They declare profits and losses, use their own tools and control their own schedule. Most importantly, they are free to subcontract work to other parties and are not financially dependent on a single employer. In these circumstances, the courts are more likely to uphold an NDA.
Overall, these agreements do not guarantee the protection of information that is deemed to be within the general skills and knowledge of that employee/contractor. The level of protection they provide largely depend on the nature of the company’s information, the scope of the position, and how the NDA is drafted to address these specifics.
Christina Hassan is a member of the BLG Business Venture Clinic, and is a 3rd year student at the Faculty of Law, University of Calgary.
Why did founders who sold their companies to Facebook leave?
Facebook was launched on February 4, 2004 by Mark Zuckerberg along with fellow Harvard College students and roommates. Over the years, Facebook rapidly expanded and most recently had more than 2.2 billion monthly active users as of January 2018. With that massive success, Facebook went on to acquire a variety of companies, most notably, Instagram, Oculus and WhatsApp. Each of these companies achieved a lucrative exit - Instagram was sold for 1 billion, Oculus for 3 billion and WhatsApp for 19 billion. Yet, in the past year, founders from all 3 respective companies left the social media giant. Why?
Kevin Systrom and co-founder Mike Krieger worked to create a social photo-sharing app named Instagram. It launched in 2010 and, less than two years later, was sold to Facebook for 1 billion. Yet, in September of 2018, both co-founders had announced their departure and resignation from Facebook. The duo, with a heavy dose of diplomacy, explained their resignation by stating that they required some, “time off to explore our curiosity and creativity again…” Publicly it seems that they had a friendly and mutual separation, but there have been reports about a brewing tension leading up to the founders' decision. A report by Bloomberg states that they had a disagreement about the direction the app would take, particularly around the time of Instagram Stories. If this were true, it could explain the substantial tension that led to the departure of the two original founders. I am sure that Kevin Systrom and Mike Krieger were aware that with the sale they’d lose control and direction of Instagram. It must’ve been difficult for them to make that decision but with a successful exit, Systrom and Krieger will no doubt be fine.
Brendan Iribe was a co-founder and former CEO of Oculus – a company that focuses on virtual reality (VR). Recently, Iribe announced that he was also leaving Facebook due to “fundamental different views on the future…” Much like the Instagram founders before the acquisition, Iribe had consistent controlon over the future of his company. However, after an acquisition by Facebook, he lost that control over the direction and future of Oculus. As a side note, both the founders from Instagram and Oculus have similar resignation statements like, “recharge, reflect and be creative.” Do they have the same publicist? This is just a side note, but it goes to show that many internal disagreements are not privy to the public eye. As with the founders of Instagram, Brendan Iribe will be fine and will no doubt come up with something new in the future.
The separation between Co-founder and CEO Jan Koum of WhatsApp and Facebook have been the most animated. Per the Washington Post, Koum left Facebook amid an argument over data privacy and the direction of the app’s business model. However, Koum suggested through his own press release that he took issue with Facebook’s approach to data as Koum is a devout privacy advocate. This point of contention seems to be one of the reasons why Koum decided to leave. Again, as per the other Founders, he had limited control over the direction of WhatsApp after selling to Facebook. Furthermore, the most notable point of their contention is when Koum tweeted, “it's time” along with the hashtag “#deletefacebook.” Koum out of all the previous Founders provided a little insight on the degree of conflict between the two parties.
The commonality between the founders of each respective company is that they had a substantial disagreement with the direction Facebook had with their original platform. Each left with a statement expressing their irrevocable differences with a diplomatic and filtered response. Though, with Koum, we could witness and extract the degree of conflict through his tweet. Furthermore, with the number of founders leaving in a relatively short period, it could indicate a possible issue with Facebook. Why aren’t they able to keep these founders? Is Mark Zuckerberg difficult to work with? Is Facebook struggling and in a desperation mode? All these questions are beyond the scope of this post, but they are valid questions for considerations by shareholders and the public. The purpose of this blog was to highlight the reasons why a founder may leave a conglomerate like Facebook after achieving a successful exit and acquisition.
Vikas Chadha is a member of the BLG Business Venture Clinic, and is a 2nd year student at the Faculty of Law, University of Calgary.
Breakdown of the Legal Services that a Growth Start-Up Requires – A Case Study: Carbon Engineering Ltd.
In July of 2018, Carbon Engineering Ltd. (CE) announced that it had raised $11M to commercialize its technology that creates fuel from air. This was the 4th round of financing in the company’s history dating back to 2012 and comes just after they were able to demonstrate proof of concept at scale. The company published research showing conversion of atmospheric carbon into transportation fuel for less than USD$100 per ton with their pilot-plant in Squamish, British Columbia.
CE has found significant success, as start-ups go, so far and is clearly a technology driven business. According to their website, CE owns 10 patents and patent pending applications as well as fully licenses 3 more. However many hopeful entrepreneurs may be surprised to learn just how much of a start-ups legal resources – time and therefore money – relates to the area of intellectual property law. According to Professor Tingle, Bryce C. Tingle, LL.B, LL.M, Associate Professor and N. Murray Edwards Chair in Business Law at the University of Calgary, a growth start-up will generally end up with a legal budget allocated as follows:
For a growth start-up, it is a race against the clock to secure the next round of financing before the current one runs out. In this regard, CE is no exception since it has existed for approximately 6 years and is only now entering the phase where it will commercialize its technology. Therefore it safe to assume that the company has not been generating any significant sales or positive cash flows so far and has only been spending money. In this situation, the work to seek and secure the next round of financing begins immediately after the last round has closed. Even for CE, this $11M of financing structured as a convertible loan bridge was “raised in anticipation of an equity financing, which is expected to be completed as soon as possible.” As much as the development of the technology and the business around it is the primary focus of the start-up, none of that can happen without the resources necessary to do it. Therefore financing is antecedent and its importance is reflected in the legal budget of a growth start-up, taking up the major share.
General Solicitor Work
For CE, partnerships continue to be crucial to the development of their technology as they’ve designed it to incorporate existing industrial equipment and practices to deliver a product that is both cost effective and scalable. Examples of this include:
With the success CE has had, the company has also experienced increases in its headcount. Within the last six months, they have seen a 33 per cent rise in full-time staff with new positions in virtually every department and the company plans to continue building its employee base in 2018 as it accelerates towards commercial deployment. One can therefore understand how the general solicitor type work for a startup grows at a rate equal to the company overall and dictates a significant share of their legal budget.
For many growth start-ups, the technology lies at the heart of the business and is a critical component in need of protection. However intellectual property matters tend not to carry the fully repetitive nature of other legal matters. There may be an ongoing need to defend the company’s intellectual property from numerous challenges or repeated infringement. However, patent applications only need to be filed once and the company will not produce patent worthy ideas at the same rate it grows in terms of size measured in dollars spent or headcount. Therefore the weight that intellectual property law matters impose on the legal budget of a growth start-up generally pales in comparison to the other types. However, that is not to imply that they are less important.
CE may actually be exceptional in this regard. It would not be unreasonable to estimate that 20 per cent of its legal resources would be needed for intellectual property law matters, given the large number of patents related to the technology. The company also provides a topical Canadian example to examine the breakdown of the legal services that a growth start-up generally requires.
Colin Patterson is a third year student at the Faculty of Law, University of Calgary, and is a JD and CPA candidate.
Protecting the Name of Your Business
There are basically three ways to protect your business’ name:
Passing-off is the common law action that can be used in court to enforce the right to operate under a particular trade-name without unfair competition. By common-law one also possesses copyright and moral rights to the logo they created for the business. The government of Canada allows concurrent copyright and trade-mark protection. In order to be successful, the business that wishes to retain the right to operate under a trade-name and/or logo is the plaintiff in court and has the burden of proof, on a balance of probabilities, that:
Confusion arises if the consumer believes the businesses using the same trade-name are affiliated. The court will consider:
Another company can incorporate with the exact same name as your trade-name, the statutory laws of Alberta and Canada only protect an incorporated company’s name from being copied. Another sole proprietor may operate with the exact same name as your trade-name.
Incorporating the business provincially or federally and extra-provincially
Incorporating federally will protect the corporation’s name across Canada. This protection is not as broad as registering a trademark federally. If you choose to incorporate federally as a Canadian corporation then you must follow by registering extra-provincially as a provincial corporation in Alberta. There will be annual renewal fees for both the federal and the provincial registration. If you register exclusively as a corporation in Alberta and subsequently someone else registers the exact same name as a federal corporation you will still be allowed to preserve your corporation’s name in the province of Alberta. Incorporating a business does not protect your logo.
Once a business is incorporated it is a separate legal entity and as such must file a corporation income tax (T2) every year with the Canada Revenue Agency even if there is no tax payable. Depending on whether you seek an accountant’s services, this may be expensive.
Register a trade-mark
A trade-name can be registered if it is used to distinguish your goods or services from those of others.
Trade-marks are registered federally and they will protect the name and logo across Canada for 15 years. The cost in 2018 is $250 for a filing fee, then another $200 for the trademark registration. When registering a trademark you can hire a trademark agent or a lawyer, or your can read through the Nice List of Classes to decide which classes of goods and services you wish to trademark your business under. Canada follows the World Intellectual Property Organization’s system. The same trade-name can be trademarked by different people under different Nice classifications.
The website http://www.wipo.int/classifications/nice/en/ has NCL (11-2019) available to download. This is a document that provides each of the Nice classifications and explanatory notes that will help you decide which Nice Classes best describe your work. A trademark agent may also be consulted.
Use the Canadian Trademarks Database to search if your name has already been trademarked in the classes that you wish to use. If the name is available, the next step is to file for the trademark, note this filing fee is non-refundable. The name that you file will be published in the Trade-marks Journal for two months so others could oppose your trademark. This journal is published every week in compliance with the Trade-marks Regulations (Canada). An opposition costs $750. The government of Canada’s webpage is very informative for registering a trademark. Call Canada’s Intellectual Property Office if you have any questions, 1-866-997-1936. If your name is protected by trademark, one of the corporate registries in Alberta may still allow a company to incorporate with that same name according to a specialist available at 310-000.
Additional information can be found at:
Government of Canada: Canadian Intellectual Property Office
Government of Alberta: Corporate Registry Service Alberta
Shannon Peddlesden was the 2018 summer law intern at the BLG Business Venture Clinic, and is a 2nd year student at the Faculty of Law, University of Calgary.
Is Your Business Protected?
Despite your best efforts as a business operator, accidents happen. There may be statutory requirements for your business to have insurance, but insurance has limitations and exclusions. Depending on the nature of your business, it may be appropriate to have clients sign a waiver or release of liability. This is generally accepted as a suitable defence to harms that arise from foreseeable risks, and may prevent the client from successfully recovering against you in negligence as well.
But what happens when your clients are minors? There are additional considerations involved when minors are asked to waive their right to recover in tort.
A waiver is based in the doctrine of volenti non fit injuria, which means “to a willing person, injury is not done”. At its heart, a waiver is a contract that asks participants to voluntarily assume specific legal risks and waive, or give up, certain legal rights.
In order for a waiver to be enforceable, it is generally accepted that three questions must be answered in the affirmative, they are: did the plaintiff (participant) know what they were signing? Is the scope of the waiver broad enough to cover the conduct of the defendant (business operator)? And third, should the waiver be enforced?
Waivers given by or on behalf of a minor
It is understood in the common law that a contract that is detrimental to the interest of a minor is voidable by the minor. A waiver of liability, or any document preventing an individual from recovery in tort, is certainly detrimental to that interests, and therefore if it is signed by a minor, it would be unenforceable. A waiver signed by a minor is contrary to that minor’s interests and therefore not binding. The perceived solution to this, would be to have the minor’s parent or legal guardian sign on their behalf. It is accepted that a guardian has the “plenitude of parental power”. Which gives the parent or guardian the power to contract and bind their child. Further, It was implicit in the judgment of Toews v Weisner that consent to a vaccination must be obtained from the legal guardian and specifically not the child (although in this particular case, the parent did not consent rendering the question moot). However, this interpretation has been challenged recently. In Wong v Lok’s Martial Arts Centre Inc the court was asked to determine the validity of a waiver signed by a minor’s parent. The teenage plaintiff was injured during a sparring match at the defendant’s studio. The defendant was relying on the waiver as an absolute bar to recovery. The court held that the waiver was unenforceable, but ultimately relied on British Columbia’s Infants Act.
The issue of whether or not a parent has the ability to waive a child’s right to sue in tort and recover has not been definitively adjudicated across Canada. However, it appears that the Courts are leaning towards not accepting these documents as binding.
 Crocker v. Sundance Northwest Resorts Ltd. (1988), 1988 CarswellOnt 962 (SCC)
 Thornton v. Shoe Lane Parking Ltd. (1970),  1 All E.R. 686
 Principal investments Ltd. v Thiele Estate (1987), 12 BCLR (2d) 258
 Swanson v Henkel Enterprise 1973 CarswellMan 53 (Man. CA)
 Anson v Anson; Young v Young
 Toews (Guardian ad litem of) v. Weisner 2001 BCSC 15
 Wong (Litigation Guardian of) v. Lok's Martial Arts Centre Inc. 2009 BCSC 1385
 Infants Act RSCB 1996 c 223
Kevin Major-Hansford is a 3L at the University of Calgary's Faculty of Law and will be completing his articles at Borden Ladner Gervais LLP.
Employment Contracts Part II: What to Include
This is the second part of a two-part introduction to employment contracts for start-up companies. Part I (Employment Contract: Put it in Writing) detailed the general function of employment contracts and emphasized the importance of early adoption of written employment contracts in order to establish the essential terms of the employment agreement between the employer and employee in order to reduce the possibility and impact of future dispute. This Part II explores in greater detail some practical considerations of what should be included in these written employment contracts for early-stage growth or start-up companies.
Employment agreements used by start-up companies should be kept relatively simple. This is because of the anticipated change in nature and character of the work required from early-hire employees as well as the need for the company to maintain a flexible structure that will allow it to grow most effectively and efficiently. As a start-up company grows, new experienced executives will be hired to advance the company’s goals, which may result in diminished or changed responsibilities of initial employees. For this reason, the description of job duties in employment contracts should be kept as general as possible. The contract should also state that because of the company’s anticipated growth, the responsibilities, job title, and position of the employee may change from time to time. Clearly stating this will help a company avoid a constructive dismissal action because the contract provides the company the power to make these changes from time to time.
Furthermore, employment contracts should avoid specifying vacation policies or benefit plans as these are likely to change over time. The contract should also explicitly incorporate by reference the separate agreements that form part of the contract for employment, including the stock option agreement, share subscription agreement, non-disclosure and non-competition agreements and any assignment of technology (as applicable).
Unless terminated for cause, when an employee is terminated, the company must pay the employee a certain sum, called notice. In Canada, the length of the notice period and therefore the amount of severance owed to that employee is established by two legal regimes. First, the various provincial Employment Standards Code legislation provide for a minimum amount of notice, which is dependent on the duration of employment. Second, and usually more important, are notice amounts established by common law (i.e., judge made law), which are regularly much higher than the minimum notice periods established by legislation—the basis of which are the judge’s estimation of what is provided for under the employment contract. Since this basis is contractual, an explicit provision in the employment contract that sets out the proper notice period and severance amounts will remove this discretion from the courts and give the company greater certainty, thus reducing risk.
Non-competition provisions serve to prevent employees from working for competitors and passing on intellectual property and know-how to competitors. These provisions are theoretically enforceable in Canada but are subject to restrictions that make them of limit use. This is because courts place a high value on ensuring individuals are not denied the opportunity to work for a living. That said, non-competition provisions can be useful if their scope is limited geographically, temporally, and with respect to job descriptions and specific competitors. By narrowing the scope of the non-compete, courts are more likely to find that the covenant allows the former employee ample alternative employment in their specialization without offending the covenant.
Often, a more effective contractual method of preventing employees from using company intellectual property and know-how to compete with the company is through the use of non-solicitation provisions. These provisions have the effect of barring former employees from contacting and soliciting the company’s current employees, investors, customers, business partners, and suppliers in connection with a competing business. While non-solicitation provisions are more likely to be enforceable than non-competition provisions, they may also be struck down if a court finds them too broad—this usually happens when the provision has the effect of significantly restricting an employee’s ability to find employment in his or her specialized field. Again, limiting the scope of the covenant will increase the probability that it will be found acceptable. First, this can be done by limiting the duration to one year or less. Second, a company should consider who the restrictive covenant applies to. By limiting the application of the provision to only contacts that the employee had contact with during his or her employment at the company, the courts are more likely to find that this is an appropriate application of non-solicitation to protect the companies interests and not used instead to prevent the employee from obtaining future employment. Finally, the non-solicitation provision should be clearly differentiated from the non-competition agreement because in the event that the latter is struck down, the former may fall with it if it is not distinct and separable. Additionally, a severability clause should be included in the contract so that in the event one clause is found void, the remainder of the contract will survive and remain in force.
Intellectual Property Ownership
There is a general expectation that employees will create valuable products and ideas at all times when employed by a start-up. Of particular relevance in the context of employment contracts are patents, copyright, and trade secrets.
First, any invention, whether or not potentially subject to patent protection, is presumed by law to be the property of the inventor employee; however, this presumption can be rebutted if the company can show that: (1) a contract exists between the parties that stipulates otherwise; (2) the employee is a senior officer or fiduciary of the company and the invention directly relates to the business engaged in by the company; or (3) the employee was engaged specifically for the purpose of inventing or innovating. Companies be proactive and take measures to avoid these future disputes. This is best done by contractually characterizing invention ownership and including contractual obligations for employees’ assignment of rights and administrative duties related to patents and patent applications.
Second, unlike inventions subject to patent protection, products that are subject to copyright protection are presumed to be the property of the company employer, not the employee, provided the product was created during the course of employment. There is, however, risk that an employee will claim that work was performed outside of employment on personal time or that the product was developed, or partially developed, prior to the commencement of employment. To avoid this sort of dispute, a company should consider obtaining broad rights to all inventions and works developed by employees and related to the employer’s business. A company may also wish to include a requirement for the employee to disclose any innovations created to allow for timely determination of ownership and to chart the course for desired intellectual property protection.
Finally, though trade secrets are not technically recognized as a form of intellectual property in Canada, this information is often the most important type of information for stat-ups that requires protection. This is the information that an employee obtains only as a direct result of employment with the company, which can include both business and technical data. The common law will generally allow a company to prevent an employee from disclosing or using a trade secret if it can show that the information is a trade secret and the employee owes a duty of confidence to the employer. This duty of confidence arises automatically if the employee is a fiduciary (director or officer), but may also be found to exist if a lower level employee had information that would make the company vulnerable to disclosure. Rather than relying on the courts to make such determination, a company should include in its employment agreement or non-disclosure agreement (signed contemporaneously with the employment agreement) a duty of confidence on its employees. These restrictions should be limited in scope to only information that is special or peculiar to the company’s business because overly broad restrictions on disclosure may be struck down by a court and held unenforceable as restraint on trade.
For more information on particulars related to employment contracts and protecting your company’s interests and property, please contact the BLG Business Venture Clinic. One of the Clinic’s student will gladly detail the above and further considerations for drafting employment contracts and the ancillary agreements that form the contract for employment.
Ryan Logan is a 2018 JD Candidate at the University of Calgary and the University of Houston.
Registering trademarks in Canada
What is a trademark?
A trademark is a form of intellectual property. A trademark may be one or more words, sounds, or designs. It includes both logos and slogans. It is used to distinguish the goods and services of one person or organization from those of another. It is distinct from other forms of intellectual property, such as a patent, copyright, or industrial design.
There are three types of trademarks:
What is a trade name?
A trade name and a trademark are different concepts. A trade name is the name of the business and it can only be registered if it is also used as a trademark. This means that the name of the business must be used to identify goods or services. You should note that trade names are commonly used as trademarks even when they have not been registered as trademarks.
Difference between a registered and an unregistered trademark
The owner of a registered trademark acquires the sole right to use the trademark across Canada for a term of 15 years, and for additional 15-year terms, if the registration is renewed. This means that a registered trademark could be valid indefinitely, so long as the required renewal process is followed. A registered trademark is entered by the Registrar into the Register of Trademarks. The act of registration is direct evidence that the owner owns the trademark. This means that if a dispute arises, the burden to prove ownership falls on the individual challenging ownership. The registered owner does not have to prove they own the trademark.
Ownership over a trademark can also arise automatically at common law. This means that registration is not essential to protecting ownership over a trademark. At common law, the use of a trademark as a distinguishing mark for goods or services for a specific amount of time can provide a basis for ownership. However, if a dispute arises, both parties would be responsible for proving ownership (unless one of the parties was the registered owner). This may lead to a protracted and expensive legal battle. As a result, legal protection is strengthened with registration.
Enforcing a trademark
It is the responsibility of the trademark owner to enforce a trademark. Registration does not impact this responsibility. In order for a court to find that a trademark has been infringed, the trademark owner must demonstrate that confusion may be caused for the average consumer.
What cannot be registered as a trademark
The following cannot be registered as a trademark:
Clearly descriptive marks
Deceptively misdescriptive marks
Words representing a geographical location commonly known to be the place of origin of goods/services
Words in other languages
Words/designs that could be confused with a registered or pending trademark
Words/designs that look very similar to a prohibited mark
Duration and cost of registration
The duration of a registered trademark is 15 years from the date of registration. A registered trademark can be renewed every 15 years for an additional term of 15 years. There is no limit on the number of permitted renewals.
At a minimum, the cost of registering a trademark will include a filing fee of $250 and a registration fee of $200. There may be additional fees associated with registering a trademark depending on the circumstances, in addition to any fees associated with using a professional trademark agent, if applicable.
Steps to take before preparing a trademark application
You may wish to search the database of existing trademarks in Canada. This will help you determine if a similar trademark already exists. You may also wish to search trade names, but there is no central database of trade names in Canada. To do so, you may wish to engage a professional trademark agent. The trademark database does not include trade names (unless it is also a registered trademark).
Process for filing a trademark application
You will need to prepare a trademark application package, which includes the application for registration form, a formal drawing (if necessary), and the filing fee. A separate application is required for each trademark.
A formal drawing is required if the trademark encompasses anything other than a word or a combination of words. The formal drawing must be black and white and include a description of any colour or colours that are featured in the trademark. You should note that, in order to retain your registered trademark, you cannot change the colour or colours you have described as being featured in the trademark in your application. Finally, if the design is detailed, the drawing should be as large as possible, but within the limits of 22cm x 35cm or 8.5 inches x 14 inches.
Your application can be filed online or by mail. Once received, the application will be given a filing date, if it is complete. The filing date matters because it is the date used to assess entitlement to registration in the event that there are co-pending trademarks. The Registrar will then complete an examination, which entails: a search of the trademark records for any conflicts with pending or existing trademarks; an examination of the application to determine that it obeys the relevant laws and regulations; publishing of the application in the Trade-marks Journal to determine if there are any challenges to the application; and, if there are either no challenges or a challenge has been decided in the applicant’s favour, registration of the trademark. The processing time for an application ranges from several months to a few years.
For more information, please visit the following websites:
Natalie Holtby is a 3rd year student at the University of Calgary's Faculty of Law.