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IP Services

Trademarks

Trademarks are essential to establishing and maintaining a company’s brand in the marketplace. We know our clients make significant investments in their trademarks and we work to ensure they are protected. This includes providing advice before clients launch new products and services to ensure trademarks are available for use.

We will conduct preliminary searches to obtain clearance and registration, and manage the entire process from filing onwards. We also provide guidance on filing for international trademark protection, which is becoming more and more crucial in our global economy. Clients also look to us for advice regarding the validity of their trademarks and possible infringement issues.

Have a question for one of our trademark professionals? Check out our list below to see which members of our team can help you get started.

Our People

Timothy Bourne

Lawyer, Patent & Trademark Agent - Partner

Ottawa

Mitchell Charness

Lawyer, Patent & Trademark Agent - Partner*

Ottawa

Giselle Chin

Lawyer, Patent Agent - Associate

Burlington

Meika Ellis

Lawyer - Associate

Ottawa

Peter Everitt

Lawyer, Patent & Trademark Agent - Partner*

Burlington

Marcus Gallie

Lawyer, Patent & Trademark Agent - Partner*

Ottawa

Rita Gao

Lawyer, Patent Agent - Associate

Toronto

Elliott Gold

Lawyer, Patent & Trademark Agent - Partner

Toronto

Gerald Gowan

Patent & Trademark Agent - Counsel

Burlington

David Heller

Lawyer, Patent & Trademark Agent - Partner*

Toronto

Roland Joachim

Lawyer, Patent & Trademark Agent - Partner*

Toronto

Abbas Kassam

Lawyer - Associate

Toronto

Steven Leach

Lawyer, Patent & Trademark Agent - Partner*

Burlington

Ken Ma

Lawyer, Patent Agent - Associate

Ottawa

Daphne Maravei

Lawyer, Patent & Trademark Agent - Partner

Ottawa

Joanna Pitkin

Lawyer, Trademark Agent - Partner

Toronto

Paul Tackaberry

Lawyer, Trademark Agent - Counsel

Toronto

Zhengxiao (Roy) Yang

Lawyer, Trademark Agent - Associate

Ottawa

Recent IP & Firm News

Deadline Extensions at the Canadian Intellectual Property Office Due To COVID-19

In a notice dated March 16, 2020, the Canadian Intellectual Property Office has announced that they are invoking “unforeseen circumstances” and “public interest” provisions to implement extensions of time limits for all deadlines fixed under the Patent Act, the Trademarks Act, and the Industrial Design Act.

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Canadian Trademarks Office Suggests Implementation of Significant Trademarks Amendments Scheduled for 2019

As discussed previously, significant changes are coming to Canada’s trademark legislation, including an overhaul of use requirements and the adoption of the Madrid System.

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Update: Navigating Québec French Language Requirements

On November 9, 2016, final amendments to the Regulation respecting the language of commerce and business and the Regulation defining the scope of the expression “markedly predominant” for the purposes of Charter of the French Language were published and registered in the Gazette officielle du Québec.

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Latest edition of the International Classification of Goods and Services for the Purposes of Registration of Marks (Nice Classification) entered into force

The International Classification of Goods and Services for the Purposes of the Registration of Marks was established by the Nice Agreement concluded on June 15, 1957. The 11th Edition of the Nice Classification, as it also is known, came into effect on January 1, 2017.

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The Enforcement of US Trademarks against Business Activities in Canada

On August 26, 2016, the United States Court of Appeals for the Ninth Circuit issued the decision in the case of Trader Joe’s v. Michael Norman Hallatt, holding that the Lanham Act may be enforceable in cases even where most of the defendant’s infringing acts happen in Canada.

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En Français S’il Vous Plait: Navigating Québec French Language Requirements

Doing business in Québec can sometimes pose unique challenges for trademark owners. The Québec Charter of the French Language defines French as the official language of Québec, including as the language of business and commerce.

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New Fee Consultations for Upcoming Trademark Amendments Suggest Now Is The Time to File Multi-Class Applications in Canada

The Canadian Intellectual Property Office (CIPO) has confirmed what many have suspected. Class-based fees are coming to Canada. As a result, Applicants with multi-class applications may benefit from filing now, before these changes come into effect, likely in 2018.

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Brexit and Your Intellectual Property: Is it Business as Usual?

The historic United Kingdom vote to leave the European Union will have resounding effects, including upon some forms of intellectual property rights. At present there is tremendous uncertainty over what will happen next in the process, but the following is based on preliminary comments that we have received from our UK and European colleagues on the issue.

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Recent Changes To European Community Trademarks

The most important changes include: (a) goods and services that are currently described using just a category heading (that is, without listing each type of product encompassed by the heading) will be limited to those specific goods identified in the heading unless a broader description is submitted by September 24, 2016;

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Communications Privilege Extended to Patent and Trademark Agents in Canada

Bill C-59, the Economic Action Plan 2015 Act, No 1, received Royal Assent on June 23, 2015 and has passed into law. The Bill presents amendments which introduce several changes to the Patent Act, Trademarks Act and Industrial Design Act.

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Trademark and Copyright Owners Can Formally Ask Canada Border Services To Restrict Importation of Counterfeit Goods

The owner of a Canadian trademark registration can now file a Request for Assistance (RFA) application with the Canada Border Services Agency (CBSA), as can the owner of a registered or unregistered copyright.

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Major Changes to Canadian Trademark Registration System On The Way

In preparation for Canada’s upcoming adherence to the Madrid Protocol and Singapore Treaty (together, the main system for registering trademarks in multiple jurisdictions), substantial amendments to the Trademarks Act were passed into law in June 2014 (“2014 Amendments”).

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Numerous Changes on the Horizon in Canadian IP Law: Five Multilateral IP Treaties on Track for Ratification

On January 27, 2014, five multilateral treaties pertaining to patents, trademarks and industrial designs were tabled before the Canadian Parliament, thus beginning the process of ratifying and implementing these treaties.

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Domain Name Update: Opening of Trademark Clearinghouse for New gTLDs

The Internet Corporation for Assigned Names and Numbers (“ICANN”) is currently overseeing a process by which new generic top level domains (“gTLDs”) will be made available to the public.

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Forget Paris – Federal Court rules that there must have been trademark use in applicant’s country of origin at the Canadian filing date to rely on its country of origin registration as a basi

As in the United States, Canadian trademark applications must contain a basis for registration (a claim to the right to register). Amongst these possible bases is use and registration in applicant’s country of origin pursuant to the provisions of Section 16(2) of the Trademarks Act.

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Proposed Bill Targets New Enforcement and Anti-Counterfeiting Initiatives

The Canadian Government introduced Bill C-56 on March 1, 2013. The Bill focuses on curtailing counterfeit activity and amends the Copyright Act and the Trademarks Act to add new civil and criminal remedies and new border measures in both Acts, in order to strengthen the enforcement of copyright and trademark rights.

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Practice Notice – Acceptance of Sound Mark Applications

The Canadian Trademarks Office now is accepting applications for sound marks.

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Rollout of .xxx Domain Names

In September 2011, the rollout of the .xxx domain will commence. Domain names incorporating the .xxx top level domain (“TLD”) are intended to be used for adult entertainment websites. However, brand owners outside of the adult entertainment industry should take notice since a party may attempt to register a .xxx domain name incorporating a brand owner’s trademark.

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Upcoming Launch of Additional Top Level Domains

Recently, the Internet Corporation for Assigned Names and Numbers (“ICANN”) voted to accept applications for new top level domains (“TLDs”).

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Supreme Court of Canada Clarifies Test for Likelihood of Confusion in Masterpiece v. Alavida

In its May 26, 2011 decision, the Supreme Court of Canada reversed the Federal Court’s finding of no likelihood of confusion between Alavida’s registered trademark MASTERPIECE LIVING and Masterpiece Inc.’s previously-used trademark MASTERPIECE ART OF LIVING.

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.co Domain Names Available to Trademark Owners on April 26

On April 26, parties who own a registered trademark in any jurisdiction may apply for a .co domain name. .co is formerly the top level country code for Columbia and .co domain names are regarded as having some value as an abbreviation for the term “company”. 

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Trademarks – Extensions of Time in Examination

The Canadian Intellectual Property Office recently published a new practice notice titled “Extensions of Time in Examination”, which takes effect on March 11, 2010.

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In Nuclear Power Business, Not Relevant That Homer Simpson May Be Confused

The plaintiff Atomic Energy of Canada Limited (AECL) was a Canadian crown corporation. The defendants AREVA and AREVA Canada were, respectively, a French majority state-owned corporation and its Canadian subsidiary. The parties competed in the provision of nuclear wares and services. All existing nuclear reactors in Canada used AECL’s CANDU technology.

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Facebook and Rights Holders

Facebook recently announced that as of 12:01 AM EDT on Saturday June 13, 2009, it will permit users to register personalized usernames as URLs.

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New Trademark Opposition Board Procedures

The Canadian Intellectual Property Office has recently published a new practice notice entitled “Practice in Trademark Opposition Proceedings” which, effective March 31, 2009, introduces a number of changes to opposition proceedings in Canada. 

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.TEL Domain Name Registration Information

What is a .TEL Domain Name? .TEL domain names will permit owners to manage and exchange contact information about people and companies.

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Practice Alert – Canada – Trademarks Opposition Rules Changing

Effective October 1, 2007, trademarks opposition practice in Canada is changing in several respects, most of which relate to the length of time for taking particular steps in the proceedings.

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Practice Alert – Canada – Trademark Requirement Removed

In a surprising turn of events, the Canadian Trademarks Office has reversed its practice with respect to disclaimers.

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