Medical device domain names, brands and patents

Grant Worden (00:07): Hello and welcome to the next installment in Torys eight-part medical device series, “So you're coming to Canada, eh? An overview of Canada's laws affecting the medical device industry”. My name is Grant Worden. I'm a Partner in Torys’ Litigation Department and lead the firm's Product Liability Practice. I'm joined today by Ed Fan and Michelle Nelles, who will be speaking about medical device domain names, brands and patents.

Grant Worden (00:32): Michelle, let me start with you. What should a medical device company seeking to set up a business in Canada think about with respect to branding and domain names?

Michelle Nelles (00:42): So if a company is coming to Canada, they should make sure that they are able to operate in Canada without hopefully getting any cease and desist letters and what have you. So doing Canadian clearance is always really important. It’s not necessarily the case, of course, that if something is going fine in another country that it also will be the same in Canada. So definitely we would recommend that as a first step for sure. That would be your names, if you’re using any specific slogans, design marks. All of those things really should ideally be cleared to just hopefully pave the way for a smooth launch in Canada. When it comes to domain names, sometimes companies want to have a “.ca”, it’s not essential. Many companies will still want to operate with their “.com” and that’s totally fine. You know, assuming that they’re able to carry on business in Canada with that name because obviously that’s where the clearance part comes in. But if a company was interested in a “.ca”, there are some Canadian presence requirements which basically means that—well first of all, you have to see if the domain name was available, obviously in the “.ca” space, but even then, you would need to have essentially a Canadian presence, which probably would mean a Canadian company, or a registered Canadian trademark to satisfy that requirement. So that is just something to think about if “.ca” would be of interest from your marketing perspective and product sale in Canada.

Grant Worden (02:14): And what about registration?

Michelle Nelles (02:17): So registration is obviously not essential, but it's definitely advised. Now of course, having a registered trademark in Canada it's not unlike other countries or many countries in that, let's say you're carrying on business in BC, but you have a registered trademark and there's a company in Newfoundland that's causing you some trouble. And because you have a registered trademark, even if you're not carrying on business in Newfoundland, you will have a much better chance of stopping them. So registrations obviously of value from that perspective. We do have common law rights in Canada, so you can bring a passing off action as well. But they're typically more cumbersome and you're going to be more tied to your geographical area where you're carrying on business. So, you know, essentially it's just, big picture, great to get a registration. Now it's important as well because to file and think about the process sooner rather than later. Firstly, the office is really slow right now. They are trying to speed things up, but that can be three years to even registration and sometimes longer. So to get that process moving is good. Obviously if you launch it can increase the chances that someone else is going to file it before you, which won't necessarily mean that you wouldn't have recourse, but it really does put you behind the eight ball and it can be pretty annoying, so it's good to think about filing first. And then we have some French language laws that will be coming into effect in 2025 and even now we have them. But they are really going to be pushing people to having registered trademarks if you don't want to have them translated on your medical device, let's say the packaging, that kind of thing. And then the last thing I'll say about registration is that in Canada, you can definitely file very broadly now because you don't need to prove use when you get to the registration process. So we used to have to do that, more kind of like the US system, but we've gone more to the European system in a way. So you could include—you'd have your class ten like your medical devices, but potentially you could be including pharmaceuticals, medical device kind of information services, all of that in a single application and potentially get that registered without actually having to show use in all those areas. So it's something to think about.

Grant Worden (04:49): Ed, let's turn to you and let's talk about patents. So what should a medical device manufacturer seeking to do business in Canada think about in terms of a priority?

Edward Fan (04:58): So Grant, in many ways it's similar to trademarks. As in, the first thing you might want to think about is clearance. Freedom to operate. If you are bringing a medical device into Canada, can you import it into Canada? Can you sell it in Canada without stepping on or infringing patent rights of others? If you're looking to set up manufacturing in Canada, patents will also matter because the rights to make, use and sell would cover all of that through patents in Canada. So, useful to have freedom to operate done. Important to think about that from a global perspective though. If you have done freedom to operate clearance work already, especially in the United States or Europe, a lot of that likely can be leveraged in Canada. Patent holders generally file their rights on a global basis. The same family might be in Canada as it is in the US or in Europe. So if you have identified patents of concern in other countries, likely the first step is to see are there corresponding patents in Canada. You can go look at variances or if the claim scope is the same. So you still want to do a search much like in trademarks. You want to do a clearance search, but if you have done work elsewhere, that will allow you to focus your efforts a lot more in Canada.

Grant Worden (06:06): And just thinking about the language laws that Michelle mentioned a moment ago, how do those language laws impact a medical device manufacturer’s patents?

Edward Fan (06:15): Yeah, so good question. Probably not as much as on trademarks. So we'll probably want to turn back to Michelle. But for patents, I think the thing to realize is Canada is a bilingual country, you are allowed to file your patents in both English or French, or in both languages. So as you're doing your search, if your search for instance, is limited to English terms, may not be the best thing. You might want to make sure you have some French language terms in your search as well. On registration the timing tends to be shorter than as compared to trademarks in the sense that there are priority periods that are pretty short. So if you're not already in Canada, you may want to start thinking about, well, what do you have right now that is available for filing in Canada, be it a PCT international application still within the national phase period, or provisional application that has yet to be converted into a regular application. You want to take inventory of that and then if you have something else that you think is great for your device, gives good coverage, you may not want to get the same size of portfolio in Canada as you might have in the US or in Europe just because of market size differences. But you probably want a few key patents in Canada, particularly as a tool in case you are faced with cease and desist situations, you want to negotiate a cross licence, having your own patents can be very, very helpful.

Grant Worden (07:35): And just picking up on a comment that Michelle made earlier about language laws in Canada, how are they relevant to patents?

Edward Fan (07:42): So this is probably going to be something more for branding, so we should go back to Michelle. But the thing to remember for patents is Canada is a bilingual country. Patents can be filed and registered in either English or French. So if you're doing the clearance search, it wouldn't be sufficient to just look at English patents. English patents are by far the majority, but there are French language specifications out there, so that should be reviewed as part of any clearance work that is done.

Grant Worden (08:12): And Michelle, taking Ed up on his invitation to direct this question to you, if you could expand on the French language laws and their implication for branding and domain names.

Michelle Nelles (08:22): Sure. So they're really important to think about if you're going to be carrying on business in Québec especially. We are going to see some big changes essentially. Now if you have an English trademark, the previous legislation basically dealt with a recognized trademark, which many times companies would still want to have a registration or application, but it wasn't necessarily as stringent is what it is going to be in 2025, where in essence, you're going to have to have a registered trademark if you want to have the English on your pack, on your device, if you're going to be using that. So with the backlogs in the office being up to maybe three years or actually it can even be more, I think it's really important to be thinking about filing when you're coming to Canada as soon as possible, essentially. And there is a little bit of a nuance. I just want to also clarify that not only are you going to have to have a registered trademark, but if you've got other words in that registered trademark that are really clearly descriptive, like your brand name and then like “beating fast heart device”, something like this, then those words, those clearly descriptive words potentially would still have to be translated based on some of the language coming out of this new legislation. But the actual nuance details are not yet fleshed out. But the bottom line is, you know, get as much registered as you can because that definitely will be helpful and we're watching that. So it will be something to consider later.