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Photo of Paul Tackaberry

Paul Tackaberry

Counsel - Lawyer, Trademark Agent

Tel: 416-865-3526
Email: ptackaberry@ridoutmaybee.com
Office: Toronto
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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.

  • 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)
  • 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)
  • 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)

“Exploring the Boundaries of ‘Use’ After the 2014 Amendments to the Canadian Trademarks Act” (2014)
-The Trademark Reporter

Masterpiece v. Alavida: Supreme Court of Canada Clarifies Likelihood of Confusion Test and Role of Expert Witnesses” (2011)
-The Trademark Reporter

“Ambush Marketing Legislation Comes to Canada in Advance of 2010 Vancouver Winter Games” (2010)
-Canadian International Lawyer

“Will Proposed Canadian Copyright Bill Dampen Newfound Judicial Affinity for Robust Users’ Rights?” (2005)
-European Intellectual Property Review

“Recent Trade Mark and Copyright Cases Temporarily Quench Canadians’ Thirst for Homegrown Internet Law Principles” (January 2002)
-World Internet Law Report

IP in China (2000)
-THC Press, Hong Kong

“Intellectual Property Risks in China: Their Effect on Foreign Investment and Technology Transfer” (1998)
-Journal of Asian Business

“Intellectual Property Laws in the Hong Kong S.A.R.: Localization and Internationalization” (1997)
-McGill Law Journal

“The Rights of Trademark Owners to Require Canada Customs to Seize Infringing Goods Have Been Strengthened by NAFTA” (1994)
-The Trademark Reporter

“The Digital Sound Sampler: Weapon of the Technological Pirate or Palette of the Modern Artist? (1990)
-Entertainment Law Review; republished in Readings in Intellectual Property (1998, Sweet & Maxwell)

“Look what they done to my song, Ma: the songwriter’s moral right of integrity in Canada and the United States” (1988)
-European Intellectual Property Review

“International Annual Review (Canada)” (1993-2013)
-The Trademark Reporter

Canadian Correspondent to the Entertainment Law Review (1989-2005)

Meet Our People

The lawyers and patent and trademark agents at Ridout & Maybee LLP bring both legal expertise and real-world industry knowledge to work for our clients. Many of our professionals were leaders in their technical field prior to working in intellectual property law, and hold advanced degrees and certifications.