Intellectual Property Professionals

416-865-3526 ptackaberry@ridoutmaybee.com Toronto

Paul Tackaberry

Counsel - Lawyer, Trademark Agent

Profile

Paul Tackaberry is counsel to Ridout & Maybee LLP in the firm’s Toronto office. He provides trade-mark availability opinions and prosecutes trademark applications. Paul represents clients on contentious matters such as infringement suits, oppositions, and Federal Court appeals. Paul has appeared before the Trade-marks Opposition Board, Federal Court and Federal Court of Appeal.

Paul has negotiated and drafted a wide variety of licenses, technology transfers, and entertainment contracts. He has advised clients on advertising and labelling issues and is well-versed in all aspects of IP due diligence.

Paul has taught IP and IT law at universities in Toronto, Montreal, and Hong Kong. A frequent presenter, he has spoken at conferences sponsored by the Intellectual Property Institute of Canada (IPIC), International Trademark Association (INTA), and the Law Society of Ontario (LSO).

From 2001-2004 Paul was the inaugural director of “Understanding the Business of Copyright”, an intensive 1-week course jointly sponsored by IPIC and McGill University, where he lectures annually. From 1990-2015, Paul was a member of the Editorial Board of The Trademark Reporter (of the International Trademark Association).

Paul commutes to work on his bicycle, except in January and February. He plays saxophone and piano with his musician friends and he plays clarinet in the North York Concert Band.

View Paul Tackaberry’s publications

Education & Qualifications

  • LL.B., University of Manitoba (1985)
  • Barrister & Solicitor, Province of Manitoba (1986)
  • LL.M., Columbia University (1987)
  • Barrister & Solicitor, Province of Ontario (1988)
  • Registered Trademark Agent, Canada (1990)

Memberships

  • Intellectual Property Institute of Canada – IPIC (Associate)
  • International Trademark Association – INTA
  • Association Littéraire et Artistique International – ALAI
  • Canada Law Book’s Canadian Patent Reporter – CPR – Editorial Board (Member)

Representative Experience

  • Ridout & Maybee LLP v. Sfera 39-E Corp. (2017) (Trademarks Opposition Board)
  • Benjamin Moore & Co. v. Home Hardware Stores Ltd. (2017), 144 C.P.R. (4th) 449 (Federal Court of Appeal)
  • Home Hardware Stores Ltd. v. Benjamin Moore & Co. (2014), 129 C.P.R. (4th) 452 (Trademarks Opposition Board)
  • Medos Services Corp. v. Ridout & Maybee LLP (2013), 116 C.P.R. (4th) 475 (Federal Court)
  • American Pacific Industries Inc. v. Chrysler LLC (2013), 114 C.P.R. (4th) 212 (Trademarks Opposition Board)
  • Allianz Global Investors of America LP v. Middlefield Capital Corp. (2014), 127 C.P.R. (4th) 39 (Federal Court)
  • Allianz Asset Management of America L.P. v. Middlefield Capital Corp. (2014), 127 C.P.R. (4th) 47 (Federal Court)
  • American Pacific Industries Inc. v. Chrysler LLC (2013), 114 C.P.R. (4th) 212 (Trademarks Opposition Board)
  • Ogilvy Renault v. Comercializadora Eloro S.A. (2012), 104 C.P.R. (4th) 210 (Trademarks Opposition Board)
  • Ogilvy Renault LLP v. Kanzani Specialty Papers (2012)  (Trademarks Opposition Board)
  • Barbera 1870 S.p.A. v. Barbera Caffé S.p.A. (2012), 102 C.P.R. (4th) 49 (Trademarks Opposition Board)
  • Mondo Foods Co. v. Coppola (2011), 99 C.P.R. (4th) 20 (Trademarks Opposition Board)
  • Native One Inc. v. Grand River Enterprises Six Nations Ltd. (2011), 96 C.P.R. (4th) 409 (Trademarks Opposition Board)
  • Aspen Custom v. Chrysler Group LLC (2011) (Trademarks Opposition Board)
  • Cullen v. Triple Canon Corporation (2011) (Trademarks Opposition Board)
  • Canada Post Corp. v. Deutsche Post AG (2011), 97 C.P.R. (4th) 1 (Trademarks Opposition Board)
  • Groupe Procycle Inc. v. DaimlerChrysler Corp. (2008) 72 C.P.R. (4th) 332 (Trademarks Opposition Board)
  • Mondo Foods Co. v. Mondo Gelato (Denman) Inc. (2008), 74 C.P.R. (4th) 28 (Trademarks Opposition Board)
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