Karen MacDonald

Partner
Norton Rose Fulbright Canada LLP

Karen MacDonald

Karen MacDonald

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Biography

Karen MacDonald's practice covers litigation in all areas of intellectual property, including patents, trademarks, copyright, industrial designs and confidential information. She has appeared before the Federal Court, the Federal Court of Appeal, the British Columbia Supreme Court and the British Columbia Court of Appeal, and has extensive experience in advising clients on IP litigation strategies, conducting discoveries and cross-examinations, as well as preparing and presenting arguments to the court. She also has in-depth experience in preparing written documents such as pleadings, arguments, and cease and desist letters, as well as with conducting negotiations with opposing counsel.

Ms. MacDonald also has extensive experience in anti-counterfeiting enforcement work. She is heavily involved with developing and implementing anti-counterfeiting enforcement programs in Canada for major brand owners worldwide, operating in fields such as luxury goods and software development.

Trademark prosecution is another significant element of Ms. MacDonald's practice. She regularly files applications, prepares responses to office actions, and appears before the Trademarks Opposition Board and in section 45 proceedings. She also advises Canadian client on global filings and portolio management.
 
She has worked with clients ranging from small companies to large multinational corporations and operating both in Canada and internationally.

Karen is the Canadian head of our consumer markets business group. 


Professional experience

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LL.B., University of British Columbia , 2000
B.Sc. (Genetics and Cell Biology), University of British Columbia, 1997

  • British Columbia 2001
  • Canada (patents) 2003
  • Canada (trademarks) 2002
  • David Michaels, J.D. v RE/MAX LLC, 2020 TMOB 141 - Successfully defended RE/MAX's famous tri-bar red over white over blue rectangles sign design from a section 45 "non-use" attack before the Trademark Opposition Board, establishing trademark use notwithstanding concurrent use with other trademarks.
  • Biofert Manufacturing Inc. v. Agrisol Manufacturing Inc., 2020 FC 501 - Representing BioFert, a leading manufacturer of fertilizers, in obtaining judgment against defendants found liable for trademark infringement and passing off, as a result of their launch of an unauthorized competitor intended to divert sales by harnessing historical goodwill.
  • Cascade Aerospace Inc. V. AGNL Avionics Abbotsford Nominee ULC - Represented Cascade Aerospace obtaining a novel injunction to halt the continued distribution of confidential information, including by parties in knowing receipt of such information.
  • Louis Vuitton et al. v Audrey Wang et al., 2018 FC 1198; 2019 FC 1389 – Successfully obtained and defended an Anton Piller order and Mareva injunction preserving evidence of the defendants' counterfeiting activities and securing assets for judgment. Obtained final judgment of $740,000 against recidivist defendants.
  • Chanel Limited et al v Lam Chan Kee Company Ltd et al, 2015 FC 1091; 2016 FCA 111  – Chanel was granted judgment of $380,000, including $250,000 in punitive and exemplary damages, against two corporations and an individual, with the court weighing and rejecting contradictory affidavit evidence from the defendants on a summary trial application. The Federal Court of Appeal confirmed the appropriateness determination of counterfeiting cases by way of summary trial even where credibility issues exist, thereby permitting the trial judge to discard Ms. Lam's evidence. The court also approved the use of a multiplier-based calculation of nominal damages and awarding significant punitive and exemplary damages in this type of case to deter such activities, though the matter was remanded back to the trial judge for confirmation his findings.
  • Chanel S. de R.L. and Chanel Inc. v Jiang Chu, 2011 FC 1303 – Chanel was granted default judgment of over $320,000 in damages and punitive and exemplary damages, plus solicitor and client costs.
  • Louis Vuitton Malletier S.A. and Burberry Limited et al. v Singga Enterprises et al., 2011 FC 776 – Louis Vuitton and Burberry were granted the highest award of damages and costs to date in Canada against purveyors of counterfeit goods, for a total of $2.5 million in damages, including punitive and exemplary damages, plus solicitor and client costs. Judgment was granted on the basis of the Federal Court summary trial rules in the first successful use of such rules.
  • Nintendo of America Inc. and Sony Computer Entertainment America Inc. v COMPC Canada Trading Inc. and Qian (Kenneth) Chen (22 September 2009) Vancouver S082517 (BCSC) — The British Columbia Supreme Court upheld and granted liquidated damages of $75,000 for a breach of settlement agreement plus $100,000 in punitive and exemplary damages, where the defendants had agreed to cease selling "circumvention devices" and "circumvention software," which allow purchasers to play counterfeit video games by allowing them to bypass technological measures on video game consoles that prevent the playing of counterfeit games.
  • Louis Vuitton Malletier S.A. v 486353 B.C. Ltd et al., 2008 BCSC 799 — Louis Vuitton was granted judgment of a total of $980,000 in damages and punitive and exemplary damages, plus special costs, under the BCSC summary trial rules.
  • Louis Vuitton Malletier S.A. v Yang et al., 2007 FC 1179 and 2008 FC 45 Louis Vuitton was granted damages, punitive and exemplary damages and solicitor and client costs totaling $263,699, by way of default judgment; the defendants applied to set aside the decision, which was denied and the decision upheld.

 

  • Canadian Legal Lexpert Directory, 2016 - 2021: recommended in Intellectual Property; 2020 - 2021: recommended in Litigation - Intellectual Property 
  • The Legal 500 Canada: Intellectual Property (Next Generation Partner), 2020-2021
  • World's Leading Trademark Professionals WTR 1000, 2015-2021: Current Silver Band for Individuals: Anti-Counterfeiting, Enforcement and Litigation; Bronze Band for Individuals: Prosecution and Strategy
  • Best Lawyers in Canada: Intellectual Property Law "Lawyer of the Year", 2020
  • Best Lawyers in Canada: Intellectual Property Law, 2013-2021
  • Expert Guides – Guide to the World's Leading Trade Mark Law Practitioners, 2015-2019: Recognized as a leading practitioner in the area of Trade Mark
  • Guide to the World’s Leading Women in Business Law, 2012-2019 editions: selected to appear in the Trademarks field