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Trade-marks and branding

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Meet the team

Our Trade-marks team works with clients to acquire, commercialize and safeguard their brand and innovations, including logos, product or container shapes and packaging. We advise on all aspects of the selection, registration, commercialization and protection of rights related to trade-marks and brands.

Clients consistently call upon our professionals for the following reasons:

  • Experienced team – Our team includes trade-mark lawyers and agents who assist our clients with the protection and enforcement of their trade-mark rights. From Canada, we manage a portfolio of approximately 63,000 trade-marks and file an average of 1,200 trade-mark applications per year. On the litigation side, our lawyers represent clients before all tribunals (including administrative tribunals) and courts.
  • Wide industry coverage – We act for a wide range of domestic and multinational organisations across the retail and brands sector. We also support various financial institutions as well as technology, transport, energy and pharmaceutical companies.
  • Large panel of services – On the prosecution side, we assist with branding strategies, portfolio management, trade-mark searches and opinions and filing and prosecution of trade-mark applications. On the commercial IP side, we advise on monetization of the value of brands (valuation of trade-marks, portfolio audits and due diligence, trade-mark aspects of corporate transactions, drafting and negotiation of various agreements) and on advertising and marketing of brands (regulatory matters, language legislation, social medias, regulations in specific sectors). Finally, regarding the protection and enforcement of trade-mark rights, our litigators help with anticounterfeiting, oppositions and trade-mark expungement proceedings in front of the Trade-marks Office, domain name disputes (ICANN or CIRA arbitrations), data privacy issues, drafting and negotiation of various agreements.
  • Global practice – We put the collective talent and resources of our global practice at the disposal of our clients when necessary. Our Canadian patent professionals can draw upon the breadth of experience of their colleagues in the United States, Europe, Australia, Latin America, Asia, Africa, and the Middle East. We also have an established and extensive network of foreign associates that contributes to our global coverage and ensures an efficient protection of our clients’ interests around the world.

Rankings and accolades

  • Chambers Canada, Nationwide: Intellectual Property (Band 1), Chambers and Partners, 2018
  • Chambers Global, Canada: Intellectual Property, Chambers and Partners, 2017
  • Legal 500, Canada: Intellectual Property, Legal 500, 2017
  • IP Stars, Canada: Trademark Contentious, Managing Intellectual Property, 2017
  • IP Stars, Canada: Trademark Filing and Prosecution, Managing Intellectual Property, 2017
  • WTR 1000, Canada, World Trademark Review, 2017
  • WTR 1000, Canada: Anti-counterfeiting, World Trademark Review, 2017

Select client work

Prosecution

  • Hermès, Chanel, Gildan, Hanesbrands, Louis Garneau, Visa, Heinz, Dr. Oetker, Henkel, Bridgestone, Volvo, Akzo Nobel, Desjardins, Royal Bank of Canada, Del Monte, Volvo, Hockey Canada, United Farmers of Alberta, Parasuco Jeans, RAD Industries (Procycle), Clarins and Total in managing their trade-mark portfolio and in filing and prosecuting trade-mark applications.

Commercial IP

  • Advising Hanesbrands and Suncor (Petro-Canada retail business) on various issues relating to the advertising of their products and services, the labelling of their products and on various promotions.
  • Advising Visa on its global restructuring of the Visa worldwide enterprise.
  • Advising Nortel Networks in the disposition of their intellectual property assets.
  • Advising Royal Bank of Canada on various licensing matters.
  • Advising Mattel, Heinz, NVIDIA and Sid Lee (the advertising agency of Cirque du soleil, Adidas, Absolut Vodka) on various issues related to product/services advertising and promotions.
  • Advising Bell Canada, the Calgary Flames, Parts Unlimited (the world’s largest distributor of aftermarket power-sport parts and accessories) and Canadian Pacific Railway on sponsorship matters.

Protection and enforcement

  • Represented Distrimedic Inc. in a lawsuit against Richards Packaging Inc. relating to pill dispensers. Richards alleged infringement of its claimed patent, copyright and trade-mark rights as well as false and misleading statements upon launch of Distrimedic’s pill dispenser. All claims were dismissed by the Federal Court.
  • Assisted Lawyers Without Borders Canada in expunging the Canadian trade-mark LAWYERS WITHOUT BORDERS registered by lawyers Without Borders Inc.
  • Representing Quinton America in a trade-mark invalidity action involving the trade-mark QUINTON used in relation to seawater solutions for therapeutic purposes.
  • Frequently represent Chanel, Del Monte, Heinz, RBC, Shell, Akzo Nobel and L’Oreal in trade-mark opposition matters.
  • Won an important victory for Fairmont Hotels by successfully defending in attack on three registrations for the trade-mark Fairmont in Canada.
  • Representing the Royal Bank of Canada to protect its master brands in an infringement and passing-off law suit.
  • Representing Heinz in a trade-mark infringement case relating to pet food brands.
  • Successfully defending Bojeux, a consumer product company, in a trial of a major trade-mark and copyright infringement action.
  • Representing Distrimedic Inc. in a passing-off, patent and copyright infringement law suit.
  • Defending the Château Mouton Rothschild brand and the personality rights of the Rothschild family.