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Trademark Law

Brand Management

We understand that a brand goes beyond a trade-mark – it's your business' reputation and therefore requires the utmost management and care. Proactive brand management is key to intelligent IP.

Our brand management services combine our experience and expertise in advertising and marketing, contest, copyright, franchising, information technology, Internet, packaging and labelling, privacy and information management and trade-mark law, as well as our experience with intellectual property audits and purchase due diligence. Not only do we assist our clients in protecting their brands once a violation has occurred, we also advise our clients on the steps that they can take to protect their brands before issues arise to reduce legal and other costs. Such preventative measures are key to intelligent IP.


Copyright

Our firm is experienced in assisting clients with both contentious and non-contentious copyright matters. Our non-contentious copyright experience includes:

  • Preparing and prosecuting applications to register copyright, as well as copyright assignments and licenses, before the Canadian Copyright Office.
  • Drafting and negotiating copyright assignments.
  • Drafting and negotiating copyright licenses for clients in diverse industries such as apparel, greeting cards and stock photography. Our copyright litigation experience helps to inform our copyright licensing practice. The linkage between our lawyer's non-contentious and contentious copyright experience – a key feature of intelligent IP – serves to benefit our clients.
  • Assisting clients with copyright due diligence when a business is acquired or sold.
  • Advising clients on a creator's moral rights with respect to a copyright work.

Please visit the copyright litigation and due diligence sections of our website if you are interested in more information on our lawyers' copyright litigation and due diligence services.


Copyright Litigation

Our firm is experienced in copyright advocacy before Federal Court of Canada and the Copyright Board. Our lawyers have assisted clients with various copyright proceedings, such as:

  • Appellate and judicial review proceedings in the Federal Court (Appeal Division) relating to decisions of the Copyright Board of Canada and the Canadian Radio-Television and Telecommunications Commission.
  • Copyright infringement actions before the Federal Court of Canada, including initiating Federal Court actions involving grey goods, and the defence of Federal Court actions brought on behalf of copyright holders against distributors of television programming nation-wide.
  • Representing television and audio programming distributors in Copyright Board proceedings held to fix royalty rates for distribution of copyrighted material.
  • Application for and execution of civil search and seizure orders in the context of software piracy cases.

Our lawyers are also experienced in providing clients with copyright infringement opinions, including opinions concerning digital copyright and the Internet. Our lawyers also have advised educational institutions on the use of potentially copyright protected material for teaching purposes and any applicable exemptions to copyright infringement under Canada's Copyright Act.

While our lawyers have the skills to represent you in court in copyright disputes, they are also experienced negotiators able to pursue and conclude settlement where practical and in our client's best interests – a key feature of intelligent IP.


Intellectual Property Audits

Intellectual property has become an increasingly valuable component of many businesses' assets. Not only can intellectual property provide a business with a competitive advantage over its competitors, those assets can also be licensed or sold to generate income. Accordingly, is important to identity your business' intellectual property to fully protect and utilize those assets - a key feature of intelligent IP.

Our intellectual property audit services include:

  • Identifying a business' intellectual property.
  • Reviewing a business' current copyright and trade-mark applications and registrations.
  • Assessing whether a business' existing copyrights and trade-marks are the subject of pending applications and registrations.
  • Reviewing agreements and disputes involving a business' intellectual property.

Trade-mark

Our lawyers have considerable experience assisting clients with all aspects of trade-mark law. Our services and experience includes:

  • Advising clients on what activities qualify as trade-mark use under Canadian law and the documentation necessary to establish trade-mark rights in Canada for due diligence and litigation purposes – a key feature of intelligent IP.
  • Preparing trade-mark clearance opinions advising whether a client has the right to use and register a trade-mark in Canada.
  • Assisting clients with all aspects of Canadian trade-mark application and prosecution, including preparing and filing applications and responding to examination reports, as well as coordinating foreign trade-mark prosecution for clients.
  • Assisting clients in establishing trade-mark holding companies and preparing related trade-mark license agreements and change of ownership notices.
  • Preparing and negotiating trade-mark assignments and license agreements.
  • Advising clients on and representing clients in trade-mark opposition and summary expungement proceedings before Canada's Trade-mark Opposition Board and any subsequent appeals before the Federal Court of Canada.
  • Counselling clients on protecting their brands on the Internet and in the social media environment, including assisting clients with domain name registrations and disputes, and advising clients on trade-mark keyword advertising. 
  • Counselling clients on and representing clients in trade-mark litigation before the Federal Court of Canada. For more information on our trade-mark litigation practice and experience, please visit the trade-mark litigation area of our website.

Trade-mark Litigation

Trade-marks Opposition Board. Our lawyers have assisted clients with various trade-mark disputes and administrative proceedings, such as:

  • Initiating and defending against trade-mark opposition and summary cancellation proceedings before the Canadian Trade-marks Office.
  • Appeals of trade-mark opposition and summary cancellation decisions, issued by the Canadian Trade-marks Office, to the Federal Court of Canada.
  • Trade-mark infringement and passing off actions in Canada's Federal Court, including coordinating the Canadian portion of multi-country litigation with clients and foreign counsel to ensure that the Canadian proceedings did not negatively impact the other foreign proceedings.

While our lawyers have the skills to represent you in court in copyright and trade-mark disputes, they are also experienced negotiators able to pursue and conclude settlement where practical and in our client's best interests – a key feature of intelligent IP.