Domain names, trademarks and patents of medical devices

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Clear branding and patents have a huge impact on the success of a medical device launch. Michelle Nelles, Ed’s Fan and Grant Worden discuss how to pave the way for a smooth entry into the Canadian market, including:

  • Trademark and Domain Name Considerations
  • Patent registration factors
  • The impact of laws on the French language

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Video Transcript

Grant Worden (00:07): Hello and welcome to the next episode of Tory’s eight-part medical device series, “So, you’re coming to Canada, huh?” An overview of Canadian laws affecting the medical device industry”. My name is Grant Worden. I am a partner in the litigation department of Torys and lead the firm’s product liability practice. With me today are Ed Fan and Michelle Nelles, who will talk about medical device domain names, trademarks and patents.

Grant Worden (00:32): Michelle, let me start with you. What should a medical device company looking to establish itself in Canada think about in terms of branding and domain names?

Michelle Nelles (00:42): So if a company comes to Canada, they have to make sure that they are able to operate in Canada without, hopefully, receiving cease and desist letters and so on. So it is always very important to clear customs in Canada. This is not necessarily the case, of course, if something goes well in another country, it will be the same in Canada. So we would definitely recommend it as a first step. These would be your names, if you use specific slogans, design marks. Ideally, all of these things should be clarified to hopefully pave the way for a soft launch in Canada. When it comes to domain names, sometimes companies want to have a “.ca”, it is not essential. Many businesses will still want to operate with their “.com” and that’s fine. You know, assuming they’re able to do business in Canada with that name because that’s obviously where the clearance part comes in. But if a company was interested in a “.ca” there’s has 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 have need to have a predominantly Canadian presence, which would likely mean a Canadian company, or a registered Canadian trademark to meet this requirement. So it’s just something to think about if “.ca” would be interesting from your marketing point of view and selling products in Canada.

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

Michelle Nelles (02:17): Registration is therefore obviously not essential, but it is still recommended. Now of course having a registered trademark in Canada is no different than other countries or many countries say you are doing business in British Columbia but you have a registered trademark and there is a company in Newfoundland that is causing you problems. And because you have a registered trademark, even if you don’t operate a business in Newfoundland, you’ll have a much better chance of stopping them. So the listings obviously have value from that point of view. We have common law rights in Canada, so you can also sue for passing off. But they’re usually more cumbersome, and you’ll be more tied to your geographic area where you do business. So, you know, it’s basically an overview, it’s great to get a record. Now, it is also important to file and think about the process as soon as possible. First, the desktop is really slow right now. They try to speed things up, but it can take three years to even register and sometimes longer. So moving this process forward is good. Obviously if you throw it, it can increase the chances of someone else putting it down before you, which doesn’t necessarily mean you won’t have recourse, but it really puts you behind the eight ball and that can be quite boring. , so it’s good to think about depositing first. And then we have French language laws that will come into force in 2025 and even now we have them. But they’re really going to push people to have trademarks registered if you don’t want them translated on your medical device, let’s say the packaging, that sort of thing. And then the last thing I will say about registration is that in Canada you can certainly file very widely now because you don’t have to prove use when you get to the registration process. registration. So we used to do that, kind of like the US system, but we leaned more towards the European system in a way. So you could include – you would have your class ten like your medical devices, but you could potentially include pharmaceuticals, medical device information services, all of that in one app and potentially have that registered without having to show use in all these areas. So it’s something to think about.

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

Edward Fan (04:58): So Grant, in many ways, is similar to trademarks. As in, the first thing you might want to think about is customs clearance. Freedom of action. If you bring a medical device into Canada, can you import it into Canada? Can you sell it in Canada without stepping on or infringing on someone else’s patent rights? If you are planning to establish manufacturing in Canada, patents will also be important as the rights to manufacture, use and sell would cover all of this through patents in Canada. So useful to have the freedom to operate. However, it is important to think about it from a global point of view. If you’ve done freedom-to-operate clearance work before, especially in the US or Europe, a lot of that can probably be leveraged in Canada. Patent holders generally file their rights on a worldwide basis. The same family can be in Canada, the United States or Europe. So if you have identified patents of concern in other countries, the first step is probably to see if there are any matching patents in Canada. You can go to see the discrepancies or if the scope of the claim 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’ve done work elsewhere, that will allow you to focus your efforts much more in Canada.

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

Edward Fan (06:15): Yeah, so good question. Probably not as much as on the brands. So we’ll probably want to go back to Michelle. But for patents, I think the thing to realize is that Canada is a bilingual country, you are allowed to file your patents in English or in French, or in both languages. So while you’re doing your research, if your search, for example, is limited to English terms, that might not be the best thing to do. You may want to make sure you have French terms in your search as well. When registering, the time frame tends to be shorter than compared to trademarks in the sense that there are priority periods which are quite short. So if you’re not already in Canada, you might want to start thinking about what you currently have that is available for filing in Canada, whether it’s a PCT international application still in the national phase period or a provisional application that has not yet been converted into a regular application. You want to take inventory of that and then if you have something else that you think is good for your device, provides good coverage, you might not want to get the same size wallet in Canada that you could have in the US or Europe simply due to differences in market size. But you probably want a few key patents in Canada, especially as a tool in case you run into cease and desist situations, you want to cross-license, having your own patents can be very, very helpful.

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

Edward Fan (07:42): So it’s probably going to be something more for branding, so we should go back to Michelle. But the thing to remember about patents is that Canada is a bilingual country. Patents can be filed and registered in English or French. So if you are doing the clearance search, it would not be enough to just look at the English patents. English patents are by far the majority, but there are French specifications, so this should be considered as part of any licensing work that is done.

Grant Worden (08:12): And Michelle, taking Ed at his invitation to address this question to you, if you could elaborate on French language laws and their implication for trademarks and domain names.

Michelle Nelles (08:22): Sure. It is therefore very important to think about it if you intend to do business in Quebec in particular. We’re going to see big changes basically. Now if you have an English mark, the previous legislation basically dealt with a recognized mark, which quite often companies would still want to have a registration or an application, but that wasn’t necessarily as strict as it will be in 2025, where, in essence, you’ll have to have a trademark if you want to have English on your pack, on your device, if you’re going to use it. So with the backlog in the office that could be up to three years or even longer, I think it’s really important to think about filing as soon as possible when you come to Canada, basically. And there is a small nuance. I just want to clarify also that not only will you have to have a trademark, but if you have other words in that trademark that are really clearly descriptive, like your brand name, then like “fast beating heart device”, something like that, so those words, those clearly descriptive words would still have to be translated based on some of the language that came out of this new legislation. But the actual details of the nuances aren’t fleshed out yet. But the bottom line is, you know, to sign up as much as you can as this will definitely be helpful and we are monitoring this so it will be something to consider later.