Canada

The Canadian IP Office is currently putting the final touches to draft regulations concerning the adoption of the Madrid Protocol; with Canada’s accession having been on the cards since 1997, trademark practitioners are greeting the news with real excitement and are spending a lot of time educating clients on what opportunities this could bring. Given how crowded and competitive the legal market is in Canada, brand owners expect firms to go over and above in the service they offer and to provide competitive, flexible fee options. Below we list our top choices for the WTR 1000.

Firms: anti-counterfeiting

1
Kestenberg Siegal Lipkus LLP

Firms

2
Bennett Jones LLP
Blake Cassels & Graydon LLP
Cassels Brock & Blackwell LLP
DLA Piper (Canada) LLP
Fasken Martineau DuMoulin LLP
Norton Rose Fulbright Canada LLP
Ridout & Maybee LLP
ROBIC LLP
3
Baker McKenzie LLP
Clancy PC + Brion Raffoul
Clark Wilson LLP
Deeth Williams Wall LLP
Goudreau Gage Dubuc LLP
McCarthy Tétrault LLP
McMillan LLP
Miller Thomson LLP
Baker McKenzie LLP
“Baker McKenzie is a top-notch firm with a world-class team of friendly, efficient, professional and proactive lawyers.” The global powerhouse relies on sophisticated online software, which makes communication between its 77 offices seamless and multi-jurisdictional portfolio management a piece of cake. Brand owners can be sure that their every need will be catered to by the Baker McKenzie pros. “Its members exhibit uncommon agility in handling tricky business issues, and, regardless of where you are, make you feel as if they’re in the same time zone, which is hugely helpful when there are matters that need to be resolved urgently.” The go-to guy for Unilever – which owns one of the largest trademark portfolios in the world – Christopher Aide is an “extremely responsive and supportive” strategist with a razor-sharp mind. He heads up the portfolio management practice together with Stephanie Vaccari, who receives buckets of praise from clients and peers alike. “She is by far and away the best Canadian lawyer out there. Not only does she have complete mastery of the law, she’s also practical and commercially minded.” Such is her versatility that Vaccari also co-leads the team’s enforcement and anti-counterfeiting practice. Jim Holloway is a worldly wise infringement expert. “He’s an outstanding resource when it comes to dealing with counterfeit goods and has been instrumental in driving forward the country’s IP laws. His consummate professionalism and pragmatism make him a top choice for any brand owner.”
Bennett Jones LLP
Longstanding clients are wowed time and time again by the level of support that Bennett Jones provides. Its four branches in Calgary, Edmonton, Ottawa and Toronto – not to mention those overseas in Beijing, Doha and Washington DC – are packed to the rafters with business-conscious lawyers who are “always succinct and to-the-point in their advice” and never lose sight of long-term objectives. Spearheading the practice’s litigation, Dominique Hussey has been busy defending the Nutella brand for Ferrero and representing Curbex Media on an infringement and passing-off action against Outfront Media. Working alongside her on both matters, Jeilah Chan is a shrewd enforcement expert who knows her way around the courtroom. “Hussey and Chan are bright, talented and hard-working – exceptional attorneys.” Portfolio management is the metier of “extremely knowledgeable and professional” Martin Kratz. United Airlines, Smart Technologies and ATCO all rely on him for his strategic counsel. “His reputation for excellence precedes him. He’s a really brilliant professional.” A “historic, market-leading” IP boutique, Bereskin & Parr is a standout choice for work on both sides of the contentious/non-contentious divide. It has a lead on every key industry sector and a reservoir of talent in its ranks; a staggering 11 individuals feature in the WTR 1000 for 2018. Founding partner Daniel Bereskin is up there with the very best Canada has to offer. He has seen nearly everything there is to see in trademark law and is a leading light for many in the community. Cynthia Rowden, Janice Bereskin and Susan Keri head up the prosecution side. “Rowden is a force of nature. She is a tireless and effective advocate for the streamlining of Canada’s IP laws and has a strong following among international brand owners.” Microsoft and General Electric entrust Janice Bereskin with their national portfolios. “She’s an enormously supportive strategic adviser who has the know-how to get trademarks quickly registered anywhere in the world. Keri has the foresight and analytical aptitude to put together infrangible strategies and writes in a clear and concise manner.” Spearheading the litigation side of the practice, Donald Cameron has escorted countless clients through choppy enforcement waters. His impeccable lines of reasoning are impossible to ignore. Jonathan Colombo and Mark Robbins are two “strong litigators with a deep understanding of trademark law” who regularly bounce ideas off Cameron. Colombo provides uniquely tailored solutions on budget and on time for a diverse array of clients. One of Robbins’ recent highlights is the assistance he provided to Anheuser-Busch in response to Molson Coors’ application to strike its GRAB SOME BUDS trademark registration. Also involved in this matter, Scott MacKendrick is a “formidable, tenacious and classy” courtroom sharpshooter. Based in Montreal, the bilingual François Larose and Brigitte Chan have done wonders for the firm’s reputation in Quebec of late. Larose has been flexing his muscles for Revlon in a complex multi-party dispute before the Quebec Superior Court; while the chameleonic Chan is able to switch gears at a second’s notice and lets nothing ruffle her composure. Finally, Jennifer McKenzie is an authority on all things brands-related; she brings significant regulatory, advertising and marketing knowledge to the table.
Blake Cassels & Graydon LLP
Blake Cassels & Graydon’s creative, commercially astute counsel hits the spot every time. Its IP lawyers never take their eyes off the prize and regularly exchange ideas with their financial services and tax colleagues to ensure that no monetisation opportunities pass their clients by. Leading the squad, Anthony Prenol exemplifies the team’s holism, with his expertise in the clearance, prosecution and enforcement of trademark rights. “He’s innovative, thoughtful and really understands the legislation and case law. His reports are always clear, concise and extremely well written.” Gary Daniel and Sheldon Burshtein burn brightest when it comes to licensing and franchising matters. The “excellent and very practical” Daniel recently helped Baring Private Equity Asia close an international transaction with TELUS, while Burshtein has been sewing up lucrative contracts in the life sciences sector. Antonio Turco is an internet whizz who has handled ample disputes under the Uniform Domain Name Dispute Resolution Policy. Borden Ladner Gervais is a prime name for brand owners wanting 360-degree support across the country. The firm serves up a broad suite of IP services and also advises on issues arising in supplementary areas, such as packaging and labelling, anti-spam and international trade law, as well as catering for French language requirements. “Its lawyers are responsive, attentive and experienced. They get to know their clients’ brands very well and provide them with direct business-oriented legal advice.” Having appeared as counsel or co-counsel at the Federal Court, the Federal Court of Appeal, the Ontario Court of Justice and the Supreme Court, Christine Pallotta is richly experienced and provides steadfast leadership in her role as national head of IP litigation. Based in Toronto, Gordon Zimmerman is another excellent contentious master whose “deep knowledge and efficiency make the enforcement process easy for clients”. Fellow Torontonian Justine Wiebe excels in prosecution. “She is the best of the best. She provides thoughtful, precise and clearly communicated advice and has an eye for detail that is truly second to none. On top of that, she’s efficient and very responsive, always pushing things forward. To say the very least, her level of service is platinum.” Over in Ottawa, Mary Jane Lemenchick and Kathleen Lemieux manage portfolios with aplomb. Lemenchick has been expertly counselling clients on what Canada’s accession to the Madrid Protocol will mean for them, while Lemieux has the business savvy and interpersonal skills to get a signature on the bottom line of any contract. Practising in both French and English – an essential skill in Montreal – Geneviève Bergeron is an “outstanding, proactive lawyer who produces straightforward, concise summaries and approaches conflict situations in a smart way that will bring about a commercially favourable resolution for her clients. The fact that she also practices corporate law is extremely helpful.” On the West Coast, LuAnne Morrow pilots the Calgary practice. Her media and advertising acumen has helped clients take their brands to a whole new level. Vancouver is home to Bradley Freedman, a favourite among start-ups. He has an entrepreneurial spirit and, with comprehensive knowledge of everything relating to the Internet, he comes into his own on matters that cover both IP and IT law.
Cassels Brock & Blackwell LLP
Cassels Brock’s rise to international fame has come primarily as a result of its representation of leading Canadian brands, many of which have expanded their IP portfolios dramatically in the last decade to become prolific global filers. Recent highlights for the group include assisting Canadian Tire on a slew of strategic multi-jurisdictional registration issues and representing Shoeless Joe’s on a significant infringement case against Obsidian before the Federal Court in Toronto. Having expanded its West Coast presence with a new Calgary office in 2016, the firm is beginning to attract plenty of the exciting start-ups being established in the city. Shane Hardy, Stephen Selznick and Alison Hayman make up the spine of the practice. Hardy has an “outstanding reputation. He has far-ranging prosecution and enforcement skills and an excellent understanding of international legal systems. His advice is always practical and well grounded”. Enforcement hotshot Selznick has been kept busy assisting Air Miles International on a string of cross-border trademark disputes. “With his unusually strong intellect, he gets to the heart of matters in no time at all.” Hayman carries the torch on the prosecution side. Interviewees extol her “thoughtfulness, knowledge, responsiveness and proactivity in developing strategies. She provides a concise but balanced overview of the options on the table and then offers practical suggestions tailored to the importance of the matter – she has everything you could want from an outside counsel”.
Clancy PC + Brion Raffoul
Established in 2008, Clancy PC + Brion Raffoul is a fast-moving and forward-looking boutique. From its hometown of Ottawa, it serves up a sophisticated, thoroughgoing service, with remarkable response times and total transparency when it comes to fees. Managing partner Paula Clancy leads by example. “A go-getter” with over 20 years of experience to her name, she has been taking an active role in the community and lecturing widely on IP rights – something that has enticed a slew of start-ups and small to medium-sized enterprises to the practice. With her business aware and portfolio-management expertise, clients are in safe hands.
Clark Wilson LLP
The Vancouver-based Clark Wilson is in exceptional form at the moment. Historically famed for its tip-top prosecution practice, it has recently expanded its contentious offering and is making its presence felt in courtrooms across the country. Creative and street-smart practitioners who dispense pragmatic, business-focused advice are what set it apart from its rivals. Partners Jeffrey Vicq and Neil Melliship lead complementary practices focusing on the intersection where intellectual property meets information technology. Vicq is a social media guru, while Melliship is au fait with even the most elaborately complex software.
Deeth Williams Wall LLP
Brand owners on the hunt for collaborative A-Z support need look no further than Deeth Williams Wall. The firm’s collegial environment means that knowledge is effectively pooled and solutions are devised at lightning speed. Founding member Marijo Coates is a transactional maven. Her foresight and analytical sharpness enable her to put together licensing contracts that will weather any market storms. Hung Nguyen always has Coates’ back in tricky negotiations. He is an artful portfolio manager who understands the importance of conveying complex legal concepts in straightforward summaries that CEOs can quickly digest.
DLA Piper (Canada) LLP
The November 2016 merger of Dimock Stratton with DLA Piper completely transformed the international giant’s Toronto offering; 16 new distinguished lawyers have moved into the office, bringing with them heaps of courtroom experience as well as an appreciation for what true hands-on customer service is. Combined with its sprawling network, this makes the firm a “superb choice for prosecution or litigation” matters. Co-chair of the national IP and technology practice, Chris Bennett is a magnet for brand owners from across the world. “His personality is really unmatched – he has a cool delivery style even in the face of chaos, and although he’s always the smartest guy in the room, you wouldn’t know it with his humility and the care he takes in listening and responding to enquiries.” Lately he has been assisting Mountain Equipment Co-op on multiple issues that have sprung up in relation to its worldwide portfolio. Another lodestar, Sangeetha Punniyamoorthy, is said to be “leading the next generation of practitioners” with her innovative and creative approach to trademark law. She divides her time between contentious and non-contentious work and is currently supporting the International Trademark Association on a motion for leave to intervene in an appeal before the Supreme Court relating to cross-border interlocutory injunctions against non-parties. For high-value enforcement matters there are few better than Ron Dimock. “He’s one of the country’s most experienced litigators – hands down.” In over four decades of practice he has developed finely tuned senses for what will swing a hard-fought case.
Fasken Martineau DuMoulin LLP
With thriving trademark practices in Montreal, Ottowa, Quebec, Toronto and Vancouver, Fasken Martineau offers umbrella coverage across the country. Its sophisticated, business-minded portfolio managers keep an eagle eye on the latest branding and marketing trends, so that they can provide watertight strategic support to brands such as L’Oréal and the Toronto International Film Festival. Working shoulder to shoulder for the former, Marek Nitoslawski and Jean-Philippe Mikus are “among the best trademark practitioners you could ever work with. They’re genuine experts in the field and they make you feel as if you were their only client.” At the leading edge of the IP scene, Nitoslawski is a master of non-traditional marks, while the globally minded Mikus is at his best assisting on matters with an international dimension. On the enforcement side, Mikus recently represented MediaQMI in the first Canadian case to pit trademark rights against so-called ‘fake news’ in cyberspace. With over 25 years of experience to her name, Patricia Seguin has earned her captain’s stripes and is another obvious choice. She knows exactly what examiners are looking for and works around the clock to make sure that her clients’ applications meet the gold standard. Sébastien Roy is another excellent professional. A transactional sage, he conducts due diligence deftly and irons out M&A trademark issues with flair and finesse.
Goudreau Gage Dubuc LLP
Goudreau Gage Dubuc is one of the strongest and most experienced firms in Quebec.” This agile IP boutique packs a punch that belies its compact size; its gang of go-getting lawyers swiftly map out creative, effective filing strategies and are quick to come to the rescue whenever infringement trouble is brewing. Having been in the game since 1981, Chantal Desjardins knows her way around the Canadian Intellectual Property Office (CIPO) as well as anyone and is a domain names aficionado. She is plugged into the latest developments in the online world and has published widely on internet issues; her writing is always crisp and compelling.

“Gowling WLG is an international behemoth with a top-class trademark team. Its lawyers provide friendly, efficient support that gets excellent results.” A longstanding Canadian IP trailblazer, Gowlings expanded its offering in 2016 through its merger with the UK-based Wragge Lawrence Graham & Co. Giving the firm a footprint across 16 cities and eight countries, this move added a whole new transatlantic angle to the firm’s offering. It is consistently the top filer of trademark applications in Canada year on year and represents a staggering number of the world’s biggest names, including BMW, Merck, Starbucks, Visa and Yamaha. Highlights on the firm’s contentious side include the representation of adidas in a significant infringement battle involving striped footwear and The One Group in one of the few cases where exceptional circumstances were sufficient to excuse non-use. The side’s hefty workload is handled by a team of 13 individuals who feature in the WTR 1000 this year – many of whom are ranked in more than one sub-table. Heading up the squad in Toronto is Kevin Sartorio, a litigator par excellence with a singular command of domain name issues. Also based in Toronto, James Buchan has acted as counsel in over 750 trademark opposition and expungement proceedings before the CIPO and as a result has a sixth sense for what will fly with examiners. Shelagh Carnegie manages Starbucks’ entire Canadian trademark portfolio. She possesses discerning tactical nous and a cool temperament that instils confidence in clients. The cosmopolitan Tania D’Souza-Culora is “a pragmatic and extremely intelligent practitioner” who has managed scores of global enforcement programmes in Canada, the United Kingdom and Hong Kong. Christopher Pibus and Jennifer Morton win extensive praise from interviewees: “Pibus works diligently to provide the ultimate customer service experience. He’s a truly top-notch trademark attorney whom anyone would be lucky to have as their counsel.” Strategic, professional and timely are three adjectives frequently used to describe Morton’s finely honed service. “She has a practice of her own that is larger than that of some small firms.” Companies wanting someone with significant life sciences knowledge should make a beeline to Kelly Gill. He is a superb IP litigator and author of the latest edition of Fox on Canadian Law of Trademarks and Unfair Competition, which is described by peers as “the bible for trademark practitioners”. Completing the line-up in Toronto, Paul Blanchard is a worldly wise enforcement virtuoso who thinks outside of the box to come up with left-field solutions that set new precedents. In Ottawa, Stuart Ash and Frank Mulock formulate perceptive monetisation strategies. “With Stuart you always feel as if you’re his most important client”, while “Frank is never less than helpful, courteous and extremely thoughtful”. Robert MacDonald is “well versed in all areas of trademark law and always makes his opponents work extremely hard”. He regularly teams up with the “creative, efficient and incredibly responsive” Monique Couture on matters that need more than one pair of safe hands – for example, assisting GlaxoSmithKline on the prosecution of its many trademark applications in Canada. With Margaret Fitzpatrick and John Leckie in Vancouver, the firm is well represented on the West Coast too. Fitzpatrick understands the difference between theoretical and real-world risks and communicates clearly and concisely. “Leckie is a fantastic partner to have. Having him on side you forget he’s not an employee. He replies immediately and gives solid, well thought-out advice that helps you make sound decisions.”

McCarthy Tétrault LLP

McCarthy Tétrault’s IP practitioners stationed in branches across Calgary, Montreal, Quebec, Toronto and Vancouver cooperate closely, supplying clients with intimate on-the-ground support for actions commenced in any of the country’s provincial courts and pooling knowledge to put together razor-sharp game plans against infringers in the Federal Court. A recent highlight is their representation of Music Canada, the International Federation for the Phonographic Industry and the International Confederation of Societies of Authors and Composers on a Supreme Court intervention in Google v Equustek, which is being followed worldwide as setting a precedent for the ability of courts to order relief against non-party search engines to support the enforcement of an existing court order against an infringer. Working on this, contentious pro Daniel Glover is “extremely knowledgeable in IP matters. He can articulate arguments on the spot and simply and practically explain the various options on the table and each one’s possible consequences. Most importantly, though, is the fact that he listens carefully to his clients’ questions and suggests and responds quickly and clearly every time.” His teammate Beth Macdonald is another safe bet when hard-hitting enforcement is needed. She dispenses “prompt, pragmatic advice, which is precisely what busy in-house lawyers want from outside counsel, and she’s able to do that because she first makes an effort to understand her clients’ businesses”. For portfolio management assistance, Alfred Macchione is the man to call. “He handles everything with ease, and makes sure each step is documented and communicated clearly to clients. With him you can be sure you’ll always be in the loop.” He represents Canadian General Electric on a range of prosecution and transactional issues.

McMillan LLP
McMillan’s vibrant IP team goes from strength to strength. Its lawyers use the firm’s state-of-the-art ‘Matchmark’ system to expedite the application, prosecution and licensing of trademarks for top global brand owners from a striking range of industries. They are no strangers to the courtroom either – recent activity includes assisting Hertz System on a battle against Herc Equipment Rentals before the Federal Court. Involved in this, Sharon Groom is an “extremely responsive and knowledgeable lawyer with the ability to boil complex concepts down into simple language that can be understood by non-lawyers”. This is the result of significant time spent working in-house for companies in the financial services, publishing and technology industries. Co-heading the IP team with Groom, Peter Giddens is a man of many talents. “Excellent technically, he’s very strong in prosecution and transactional matters”, but also puts in faultless performances in proceedings before the CIPO; Jim Beam Bands recently benefitted from his nifty footwork in an opposition against Sazerac of Canada.
Miller Thomson LLP
With 12 outlets across Canada – housing around 550 lawyers – Miller Thomson is never far from its clients. Whenever something flares up locally, its “personable, accessible and efficient” lawyers are on the scene in minutes; for Federal Court cases requiring a bird’s-eye view, everyone pulls together. This has helped the firm build long-lasting relationships with start-ups, local charities, universities and renowned multinationals. “It’s impressively proactive in protecting its clients against the potential for impending action, keeping them up to date regarding legislative changes and legal rulings so that nothing negatively affects their brands. The attention to detail shown is something that you just don’t get at many other firms.” Catherine Dennis Brooks has been providing this level of hands-on support to Torstar on a string of prosecution and portfolio management issues. “She takes care to send timely reminders and makes sound recommendations on everything relating to filing and registration. Her work is cost-effective too.” Clients also have a “very high level of trust” in David Schnurr. “He’s an extremely thorough, diligent and knowledgeable attorney – a true pleasure to work with.” Registered as a trademark agent in both Canada and the United States, Schnurr can provide a seamless service throughout North America. “A key difference between him and many other IP practitioners is the personal attention he gives to clients. He always makes himself available when needed and provides fantastic service, taking the time to thoroughly explain all imperative details with clarity and patience and proactively bringing up potential issues before they become a problem. The level of dedication he shows is rare – he really goes above and beyond at every turn. What’s more, he’s always transparent about his actions and the costs incurred.” One of Schnurr’s recent highlights saw him assisting the University of Western Ontario on a trademark opposition matter against Markit Economics.
Norton Rose Fulbright Canada LLP
Knowing that legal support provided in a vacuum is valueless, full-service powerhouse Norton Rose makes sure every bit of its advice – contentious and non-contentious – is framed within the context of its clients’ overall business objectives. Of late it has been particularly busy advising on internet issues, including the acquisition of domain names and the enforcement of brands on social media channels. An expert in all things online, Chris Wilson came on board following the firm’s 2017 merger with Bull Housser Tupper. “He’s an extremely skilful tactician – someone who will settle when it’s desirable but who won’t hesitate to litigate when necessary. The passion he has for law shines through in everything he does; it’s his greatest strength and he repeatedly turns it into positive results for clients.” Another Bull Housser Tupper veteran, the “outstanding” Karen MacDonald is an anti-counterfeiting ace well known for her tenacity and carefully crafted enforcement strategies; she is the bane of infringers the country over. In Toronto, hard-hitting litigator Brian Gray is “a fantastic person to work with. He seems to know everything.” His never-say-die attitude and willingness to work around the clock has saved the day for countless clients. Global head of the firm’s risk advisory practice, Jane Caskey uses her extensive courtroom experience to advise on the relative importance of protecting different marks; her filing strategies are cost-effective but robust. Brands guru Lorelei Graham finds inventive ways to protect IP rights around the world and has particular expertise in the agricultural and food sectors. Finally, Elizabeth Williams was made partner in December 2016 and is a marketing and advertising whizz who has been advising the United Farmers of Alberta Co-operative on a range of portfolio management issues. The basis of Osler, Hoskin & Harcourt’s success lies in its unwavering commitment to client service: enquiries are replied to instantly, a premium is placed on face-to-face contact and monetisation opportunities are pragmatically presented. On top of this, the firm has ample experience on both sides of the contentious/non-contentious divide; its lawyers have acted at every level of court in Canada and in the last two years they have filed over 2,000 trademark applications. The most famous faces are Donna White and Lee Webster – both of whom hold gold-tier rankings in the WTR 1000 this year. The “tremendous” White is “incredibly responsive. Her advice is unfailingly resolute and insightful and her impeccable work reflects a thorough knowledge of Canadian trademark law. She’s a go-to practitioner for complicated registration or enforcement matters”. A founding member of the Canadian Intellectual Property Council, Webster has plenty of friends in the community. Of late he has been showing off his licensing expertise with complex contractual work for Alphora Research, Turnstone Biologics and Field Upgrading. Another transactional specialist is the “outstanding” Kelly Moffatt, who recently advised Microsoft on a number of acquisitions, including its US$26.2 billion purchase of the social networking site LinkedIn. “She exhibits a robust understanding of the law and excellent strategic skills. We trust her completely. Some Canadian trademark counsel can get bogged down in procedural complications at the CIPO – it’s not uncommon to waste months, or even years, dealing with minor, non-substantive issues – but she’s the complete opposite. It’s clear that she has a very clear grip on CIPO procedures because she guides matters through quickly, smoothly and efficiently.” Over on the enforcement side, John Cotter is entrusted by NBA Properties; he worked hand in hand with its in-house legal team to hammer out a watertight strategy for the 2016 NBA All-Star Weekend in Toronto. “He’s a top-draw litigator and anti-counterfeiting expert, not to mention a true gentleman.” Previously head of Fasken Martineau’s IP practice in Toronto, May Cheng joined the side in October 2016, bringing 20 years of heavy-duty enforcement experience with her. “She has superb trademark knowledge and a strong reputation – definitely someone on her game at the moment.” A notable highlight from her dynamic workload is assisting Hugo Boss with an Anton Piller order for the seizure of counterfeit goods.
Ridout & Maybee LLP
A firm fixture on the Canadian IP scene since 1893, Ridout & Maybee files approximately 1,000 trademark applications annually and handles courtroom proceedings with flair and finesse. The firm’s profound knowledge of the sector is complemented by hands-on customer service and a razor-sharp focus on clients’ business objectives. Based in Ridout’s Ottawa office, the “experienced and very well-spoken” Janet Fuhrer is an “excellent” lawyer who provides “strong and practical advice” on both sides of the contentious/non-contentious divide. She has served as president of the Canadian Bar Association and the IP Institute of Canada.
ROBIC LLP
ROBIC is a no-brainer for brand owners looking for outside counsel to handle their IP matters in Quebec. The “top-notch” side is “the most important firm in the province, with strength in both prosecution and litigation. Its practitioners have outstanding knowledge of the law and a wealth of experience.” Perhaps the most famous of these is gold-ranked Laurent Carrière, who is “extremely knowledgeable in trademark prosecution and opposition matters, having focused on these his whole career”. His razor-sharp, far-sighted support reaps fantastic results time and time again. Also based in Montreal, Catherine Bergeron regularly exchanges insights and ideas with Carrière. She is particularly popular among cosmetic, fashion and entertainment brands; one of her unique strengths is her ability to advise on issues pertaining to the linguistic requirements of the Charter of the French Language regarding packaging, labelling and advertising. Hugues Richard is a bona fide all-rounder; as comfortable in courtrooms as he is in backrooms. He has acted as an arbitrator in scores of domain name dispute proceedings. Barry Gamache, Bob Sotiriadis and François Grenier lead the charge on the enforcement side. Gamache is a “highly respected virtuoso litigator” who fights tooth and nail to protect his clients’ rights. Sotiriadis is frequently described as being dedicated, rigorous and creative by his peers. Having served as chair of the IP section of the Canadian Bar Association and as a teacher at the Université de Montréal, Grenier is a name known by everyone in the trademark world. With 47 trademark lawyers and a record of flawless service extending back over a century, it is little surprise that Smart & Biggar is “one of the most recognised IP firms in Canada” – and retains its position in the prestigious gold tier of the WTR 1000 for 2018. Its dazzling workload features activities which include assisting Imperial Tobacco with issues surrounding plain packaging and representing Bauer Hockey on a notable dispute with Sport Maska before the Federal Court of Appeal. Involved in both matters, François Guay is an “extremely sharp practitioner” who has 30 years of experience under his belt and who has set a remarkable number of precedents during this time. Also working in the Montreal office – and equally versatile – Christian Bolduc is a slick negotiator who knows exactly what buttons to press when the temperature rises. “He’s client-focused and always commercially sound in his advice.” Chair of the overall trademark practice, Philip Lapin has managed the clearance, prosecution and registration of thousands of trademarks in his time. “His responsiveness makes you feel as if you’re his most important client. Not only does he provide you with top quality legal support, he also gives you practical advice as to how to grow your business. He is seriously knowledgeable and possesses excellent judgement.” Keltie Sim Luft has an outstanding non-contentious skill set too. “She’s a diligent first-rate practitioner whose advice is always spot on.” Her trademark practice is complemented by robust marketing and advertising knowledge. Steven Garland and Mark Evans are litigators through and through. “Garland is excellent, period. He is thoughtful, responsive, succinct, efficient and, most importantly, someone who brings a practical business perspective to the table.” Having represented many of the world’s most famous brands, Evans is an anchor of the practice and a loyal ally for many household names.
Kestenberg Siegal Lipkus LLP
When it comes to the fight against fakes, Kestenberg Siegal Lipkus is miles ahead of the competition. “Unquestionably number one in Canada for anti-counterfeiting, it has strong links with the police and other law enforcement bodies and can always be counted on to deliver results. Its responsive, knowledgeable team is especially good at securing Anton Piller remedies.” Founding partner Lorne Lipkus is “an outstanding advocate for trademark protection and one of the most dedicated, hardworking and knowledgeable professionals you could ever hope to work with.” The mere mention of his name makes infringers quake in their boots. However, he is not the only practitioner that offenders should fear as ‘like father like son’, David Lipkus is equally determined in the pursuit of counterfeiters. Having attended his first raid at 12 years old, he has since been pursuing his lifelong passion. “As infringers adapt to the methods that rights holders are using to stop the sale of fake merchandise online, he remains in the vanguard, helping his clients stay ahead and providing global solutions. On top of that, he responds immediately and truly cares about what he’s doing.” Chair of the Anti-counterfeiting Committee for the Canadian Bar Association, Georgina Starkman Danzig has the contacts and experience to help clients negotiate seemingly insurmountable obstacles.

Individuals: anti-counterfeiting

Georgina Starkman Danzig - Kestenberg Siegal Lipkus LLP
Lorne M Lipkus - Kestenberg Siegal Lipkus LLP
May M Cheng - Osler, Hoskin & Harcourt LLP
John Cotter - Osler, Hoskin & Harcourt LLP
Monique M Couture - Gowling WLG
Tania D’Souza-Culora - Gowling WLG
Mark Evans - Smart & Biggar/Fetherstonhaugh
David S Lipkus - Kestenberg Siegal Lipkus LLP
Karen F MacDonald - Norton Rose Fulbright Canada LLP
Christopher J Pibus - Gowling WLG

Luminaries

Daniel R Bereskin - Bereskin & Parr LLP
Ron Dimock - DLA Piper (Canada) LLP

Individuals: enforcement and litigation

Ron Dimock - DLA Piper (Canada) LLP
Mark Evans - Smart & Biggar/Fetherstonhaugh
Kelly Gill - Gowling WLG
François Guay - Smart & Biggar/Fetherstonhaugh
Robert A MacDonald - Gowling WLG
Christopher J Pibus - Gowling WLG
Paul D Blanchard - Gowling WLG
Donald M Cameron - Bereskin & Parr LLP
Jeilah Chan - Bennett Jones LLP
May M Cheng - Osler, Hoskin & Harcourt LLP
Jonathan G Colombo - Bereskin & Parr LLP
John Cotter - Osler, Hoskin & Harcourt LLP
Monique M Couture - Gowling WLG
Barry Gamache - ROBIC LLP
Steven Garland - Smart & Biggar/Fetherstonhaugh
Brian W Gray - Norton Rose Fulbright Canada LLP
François M Grenier - ROBIC LLP
Shane Hardy - Cassels Brock & Blackwell LLP
Trent Horne - Aird & Berlis LLP
Dominique T Hussey - Bennett Jones LLP
Martin PJ Kratz QC - Bennett Jones LLP
Henry Lue - Wilson Lue LLP
R Scott MacKendrick - Bereskin & Parr LLP
Marek Nitoslawski - Fasken Martineau DuMoulin LLP
Christine Pallotta - Borden Ladner Gervais LLP
Anthony M Prenol - Blake Cassels & Graydon LLP
Sangeetha Punniyamoorthy - DLA Piper (Canada) LLP
Andrea Rush - Blaney McMurtry LLP
Kevin Sartorio - Gowling WLG
Stephen Selznick - Cassels Brock & Blackwell LLP
Bob Sotiriadis - ROBIC LLP
Chris Wilson - Norton Rose Fulbright Canada LLP
James Buchan - Gowling WLG
Jane E Caskey - Norton Rose Fulbright Canada LLP
Brigitte Chan - Bereskin & Parr LLP
Tania D’Souza-Culora - Gowling WLG
Lorraine M Fleck - Fleck Innovation Law
Bradley J Freedman - Borden Ladner Gervais LLP
Daniel Glover - McCarthy Tétrault LLP
François Larose - Bereskin & Parr LLP
Kathleen Lemieux - Borden Ladner Gervais LLP
Karen F MacDonald - Norton Rose Fulbright Canada LLP
Hugues G Richard - ROBIC LLP
Mark L Robbins - Bereskin & Parr LLP
Antonio Turco - Blake Cassels & Graydon LLP
Stephanie Vaccari - Baker McKenzie LLP
David Wotherspoon - MLT Aikins LLP
Gordon J Zimmerman - Borden Ladner Gervais LLP

Individuals: prosecution and strategy

Toni Polson Ashton - Sim & McBurney - Sim Ashton and McKay LLP
Christian Bolduc - Smart & Biggar/Fetherstonhaugh
Sheldon Burshtein - Blake Cassels & Graydon LLP
Laurent Carrière - ROBIC LLP
Janet Fuhrer - Ridout & Maybee LLP
Philip Lapin - Smart & Biggar/Fetherstonhaugh
Robert A MacDonald - Gowling WLG
Cynthia Rowden - Bereskin & Parr LLP
Lee Webster - Osler, Hoskin & Harcourt LLP
Donna G White - Osler, Hoskin & Harcourt LLP
Justine Wiebe - Borden Ladner Gervais LLP
Christopher Aide - Baker McKenzie LLP
Stuart Ash - Gowling WLG
Chris Bennett - DLA Piper (Canada) LLP
Janice M Bereskin - Bereskin & Parr LLP
Geneviève Bergeron - Borden Ladner Gervais LLP
Shelagh Carnegie - Gowling WLG
Jeilah Chan - Bennett Jones LLP
Paula Clancy - Clancy PC + Brion Raffoul
Marijo A Coates - Deeth Williams Wall LLP
Monique M Couture - Gowling WLG
Gary T Daniel - Blake Cassels & Graydon LLP
Chantal Desjardins - Goudreau Gage Dubuc LLP
Mark Evans - Smart & Biggar/Fetherstonhaugh
Lorraine M Fleck - Fleck Innovation Law
Peter Giddens - McMillan LLP
Shane Hardy - Cassels Brock & Blackwell LLP
Susan J Keri - Bereskin & Parr LLP
Martin PJ Kratz QC - Bennett Jones LLP
Mary Jane Lemenchick - Borden Ladner Gervais LLP
Henry Lue - Wilson Lue LLP
R Scott MacKendrick - Bereskin & Parr LLP
Jean-Philippe Mikus - Fasken Martineau DuMoulin LLP
Kelly L Moffatt - Osler, Hoskin & Harcourt LLP
Jennifer Morton - Gowling WLG
Andrea Rush - Blaney McMurtry LLP
Patricia Seguin - Fasken Martineau DuMoulin LLP
Keltie Sim Luft - Smart & Biggar/Fetherstonhaugh
Bob Sotiriadis - ROBIC LLP
Stephanie Vaccari - Baker McKenzie LLP
Amalia M Berg - Goodmans LLP
Catherine Bergeron - ROBIC LLP
Brigitte Chan - Bereskin & Parr LLP
Catherine Dennis Brooks - Miller Thomson LLP
Margaret A Fitzpatrick - Gowling WLG
Ashlee Froese - Froese Law
Lorelei Graham - Norton Rose Fulbright Canada LLP
Sharon E Groom - McMillan LLP
Jim Holloway - Baker McKenzie LLP
Dominique T Hussey - Bennett Jones LLP
François Larose - Bereskin & Parr LLP
John G Leckie - Gowling WLG
K Beth Macdonald - McCarthy Tétrault LLP
Cynthia Mason - Mason Professional Corp
Jennifer McKay - Perley-Robertson, Hill & McDougall LLP
Jennifer McKenzie - Bereskin & Parr LLP
John McKeown - Goldman Sloan Nash & Haber
Neil Melliship - Clark Wilson LLP
LuAnne Morrow - Borden Ladner Gervais LLP
Frank Mulock - Gowling WLG
Hung Nguyen - Deeth Williams Wall LLP
James Palmer - Moffat & Co
Lorraine Pinsent - MLT Aikins LLP
Anthony M Prenol - Blake Cassels & Graydon LLP
Sangeetha Punniyamoorthy - DLA Piper (Canada) LLP
Wendy Riel - Low Murchison Radnoff LLP
Sébastien Roy - Fasken Martineau DuMoulin LLP
David Schnurr - Miller Thomson LLP
Antonio Turco - Blake Cassels & Graydon LLP
Jeffrey Vicq - Clark Wilson LLP
Gordon J Zimmerman - Borden Ladner Gervais LLP

Individuals: transactions

Sheldon Burshtein - Blake Cassels & Graydon LLP
Gary T Daniel - Blake Cassels & Graydon LLP
Shane Hardy - Cassels Brock & Blackwell LLP
Alison Hayman - Cassels Brock & Blackwell LLP
Martin PJ Kratz QC - Bennett Jones LLP
Kathleen Lemieux - Borden Ladner Gervais LLP
Alfred A Macchione - McCarthy Tétrault LLP
Kelly L Moffatt - Osler, Hoskin & Harcourt LLP
Justine M Whitehead - Stikeman Elliott LLP
Elizabeth Williams - Norton Rose Fulbright Canada LLP
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Issue 71