Baker McKenzie LLP
A holistic approach is the hallmark of Baker McKenzie; its Toronto-based IP group boasts cross-border capabilities that have helped it to attract global titans such as Unilever and XE Corporation. Qualified to practise in both the United Kingdom and Canada, Christopher Aide
“shines with his forward thinking and commitment to unlocking the right long-term strategies”. Co-leading the IP portfolio management team alongside Aide is the responsive and knowledgeable Stephanie Vaccari
, who blazes a trail in the luxury goods and fashion sectors.
Marquee brands such as United Airlines and Ferrero love the capable pan-Canadian team at heavyweight business law firm Bennett Jones. “An amazing individual to work with”, head of intellectual property Martin Kratz has unrivalled expertise in the technology sector. “Martin provides an extra level of insight, contextualising his advice in a way that no other lawyers practising in this area can.” Brand owners are in good hands with Trent Horne, “one of the next generation of leaders” and “a safe bet for any important piece of trademark litigation”. Accomplished advocate and tenacious adversary Dominique Hussey heads the IP litigation practice. “She provides an exceptional service, is highly responsive and has an excellent command of the law.” Working closely with Hussey on the whole spectrum of IP matters, including contentious briefs for Ferrero and Gucci, is Jeilah Chan, whose laser business focus and “flawless strategic and practical advice” are always well matched to client needs. The duo are “efficient, have developed very reliable instincts and are terrific communicators”.
“Bereskin & Parr really cares about the law and getting the right answer to the client. Anything to do with intellectual property, it does well; it has a lot of depth, great lawyers and loyal, long-term clients.” Practical and commercially minded founding partner Daniel Bereskin
wrote the book on trademark law. “He truly takes clients’ risk tolerance into account in his advice and works hard to find productive solutions.” Heading up the trademark practice group, Cynthia Rowden
is a national leader and a shining star in the field: “I only interact with a handful of other lawyers around the globe who I would count as her equal; she is a walking encyclopaedia with an exceptionally solid grasp of the law,” notes one interviewee. “I have seldom encountered a more tireless and committed individual,” attests another. Keeping abreast of global regulatory changes on the prosecution side, Susan Keri
devotes most of her time to strategic advice and portfolio management for large multinationals. “Down to earth, commercial and reasonably priced”, fellow non-contentious ace Janice Bereskin
dispenses sage guidance that resonates with clients. Jennifer McKenzie
’s “knowledgeable and responsive” approach has helped her to carve a niche within advertising and labelling. Sources say they “couldn’t be happier” with Terry Edwards
, Lloyd Sarginson
and François Larose
: “They work tirelessly to protect your rights and provide sound, practical and timely advice. Go to them if you’re looking for the absolute best in trademark counselling in Canada.” Head of the litigation practice group Donald Cameron
wrapped up a slew of significant cases this year, including a successful defence of coffee king Tim Hortons in an infringement matter. Canada Goose is one of the high-end brands that place their faith in fellow contentious champ Jonathan Colombo
’s courtroom prowess. Mark Robbins
excels in technical disputes and delivered a recent triumph for beverage behemoth Anheuser-Busch alongside deeply knowledgeable colleague Scott MacKendrick
. Recently inducted as a fellow of the American College of Trial Lawyers, Robert MacFarlane
brings over 40 years of experience to the contentious team.
Blake Cassels & Graydon LLP
The confluence of IP law with other practice areas is a sweet spot for business law firm Blake Cassels & Graydon, where practitioners call upon a wealth of knowledge shared between 11 worldwide offices to fortify their trademark offering. Head of the IP group Anthony Prenol
is a true all-rounder, equally proficient both in the courtroom and when dispensing incisive portfolio management advice. He led the IP component of Anheuser-Busch InBev’s recent acquisition of the Mark Anthony Group of Companies. Transactional ace Gary Daniel
“consistently gives sound, practical advice that takes into account not only the law in the pertinent practice area, but the practical realities of the business marketplace. He is personable, responsive and very responsible about following up on matters”. Technology and life sciences wizard Sheldon Burshtein
brings further transactional talent to the team while also proving a dab hand on prosecution briefs. Domain name disputes are meat and drink to Antonio Turco
; he has represented clients in proceedings under the Uniform Domain Name Dispute Resolution Policy and the Canadian Internet Registration Authority Domain Name Dispute Resolution Policy.
“Borden Ladner Gervais is wonderful – very collegial, collaborative, supportive and highly thought of.” The Canadian powerhouse combines commercial resources with the personalised service of a boutique, an arrangement which allows it to go the extra mile for clients. Theresa Corneau
is a veritable fixture in the Canadian trademark world, with one content client commenting: “I have long entrusted my work with Tracy and intend to keep doing so, based on a combination of her many years of experience, her keen business acumen, her strong sense of giving back and her good humour”. Joining her in the gold tier is global strategy guru Justine Wiebe
, who has “the ability to take very complex issues, boil them down and provide recommendations in a way that is easy to understand”. Peers are happy to send referrals to the practically minded Mary Jane Lemenchick
, who “gets the job done” on both national and international portfolios. “Always thinking tactically around any conflict situation and proactive in suggesting practical, commercially sensible solutions”, Geneviève Bergeron
adroitly guides clients through IT-related matters. Regional coordinator of the Calgary IP group LuAnne Morrow
is an advertising and labelling virtuoso; she is a go-to person for brand owners who “trust her implicitly” in these fields. Adding further non-contentious firepower is Tracey Mosley
, who is “wonderful to work with” on prosecution tasks thanks to her “responsiveness and expert, precise and easy-to-understand advice”. Calm navigation of complex litigation earns Christine Pallotta
acclaim among her peers. Ottowa-based Kathleen Lemieux
has broad know-how of all aspects of IP law and is particularly adept when it comes to enforcement and transactions. Bradley Freedman
draws on a wealth of experience in the technology sector to advise clients on a range of contentious and non-contentious briefs. Clients confirm that fellow all-rounder Gordon Zimmerman
’s “work is of the highest quality and delivered in an effective and efficient manner”. Anti-counterfeiting ace Ira Nishisato
is a go-to for brands seeking safeguards against substitute shipments.
Cassels Brock & Blackwell LLP
Stellar transactional work on the takeover of lifestyle brand Roots and a longstanding relationship with Canadian Tire are indicative of the trust placed in Cassels Brock & Blackwell by an array of Canada’s leading brands. Its business-focused approach has also helped to attract an enviable list of international clients, further raising the group’s profile. Managing a deep pool of talent in the IP department is Shane Hardy
, a “very responsive, practical and extremely thorough” practitioner who is “not scared to give an opinion”.
Clancy PC + Brion Raffoul
Providing tailored services to blossoming start-ups and global brands alike, Clancy PC + Brion Raffoul has continued to enjoy steady growth since it was established in 2008. Paula Clancy
, who currently co-chairs the International Trade Association (INTA) North America Global Advisory Council, heads the trademark practice. “From strategy to execution, Paula does it all flawlessly and helps grow and protect your marks as you grow as a company. Her team is extremely knowledgeable, very organised and the level of service provided is absolutely top-notch.” Further forays into international markets are firmly on the agenda for this Ottowa-based outfit, which already has a solid presence in Europe, Asia and Latin America.
Clark Wilson LLP
The practical and proactive Clark Wilson has been dispensing tailored, client-specific advice for over 100 years from its Vancouver base. The IP fort is manned by nine practitioners who cover all trademark angles from cradle to grave. The set punches well above its weight, with a slew of Fortune 100 companies in its client catalogue, while its West Coast location and cross-border clout make it an attractive option for companies based in the innovation hotbeds of Seattle and Silicon Valley. Succinct and reasoned in his guidance, Neil Melliship
has a background in commercial law which gives him a big-picture perspective; he is a go-to for complex technology issues. Leading the charge alongside Melliship is the “meticulous and creative” Jeffrey Vicq
. An authority on information technology and data privacy, he is valued for his deep understanding of risk tolerance, PR sensitivities and anticipation of clients’ needs.
Deeth Williams Wall LLP
Pragmatic guidance on international IP strategy has multinationals flocking to the doors of this Toronto practice. Founding member Marijo Coates
possesses rock-solid knowledge of prosecution and is a perennial presence on the Intellectual Property Institute of Canada’s (IPIC) Trademark Joint Liaison Committee and Trademark Legislation Committee. Listed in the WTR 1000
for the first time this year, Hung Nguyen
is a favourite among clients both at home and abroad for his straightforward, clear-sighted advice on portfolio management. The group is also no slouch when it comes to contentious briefs, with Gervas Wall
having notched up over 20 years of courtroom experience. Wall is “just as good a trademark lawyer as you’re ever going to find. He’s an excellent strategist, has given me sound advice about international situations and is great to bounce ideas off”, affirms one associate.
DLA Piper (Canada) LLP
Continued expansion of its worldwide reach remains the order of the day at DLA Piper. The outfit provides global brand strategy guidance to top domestic companies such as Mountain Equipment Co-operative, while its international strength has brought in an abundance of new high-level clients. “Wonderful” Toronto boutique Dimock Stratton – which counted Moody’s, Procter & Gamble and Vertex Pharmaceuticals among its satisfied clients – joined the fold in late 2016, enhancing its pan-Canadian presence. Overseeing the firm’s trademark operations from Vancouver is Chris Bennett
, whose practice centres on portfolio management and enforcement across a variety of industries. “He is able to handle anything I can throw at him, from day-to-day management of registrations to diplomatically telling our marketing department how not to get us into a lawsuit. He is knowledgeable, conscientious and has a great sense of humour”, certifies one respondent. Clients “wouldn’t hesitate to recommend” Ronald Dimock
for any matter. The arrival of this percipient counsellor, star litigator and fabled name in Canada’s trademark market underlines the group’s lofty IP ambitions. He is joined at DLA by “exceptional” WTR 1000
debutant Sangeetha Punniyamoorthy
: “Her attention to detail is phenomenal; she can handle difficult briefs efficiently and in a way that makes them look easy.”
Fasken Martineau DuMoulin LLP
A business law firm with a truly international footprint, Fasken Martineau DuMoulin can call upon the resources of its London and Johannesburg offices to supplement its five active trademark bases across Canada. Renowned for its aptitude in complex cases and creative approach to conflicts, its contentious expertise flows gainfully through to the prosecution practice. Heading up the trademark team, Patricia Seguin
concentrates her efforts on portfolio management and securing protection in China and other significant overseas jurisdictions. Sébastien Roy
is a prosecution powerhouse and an authority on software and technology; he is “accessible, straightforward, has great knowledge of legislation and case law, and can simplify complex issues”. Jean-Philippe Mikus
operates flawlessly on both sides of the contentious/non-contentious divide, offering sound strategic advice while also representing the likes of L’Oreal in a long-running dispute involving the impact of geographical significance in the assessment of confusion. Joining forces with Mikus on this matter is the bilingual Marek Nitoslawski
, whose CV includes multiple appearances before the Federal and Supreme Courts, as well as extensive cross-border experience.
Goudreau Gage Dubuc LLP
With an emphasis on simplifying the law for its clients, expertise in high-tech fields and ability to provide access to an extensive network of foreign partners, Montreal boutique Goudreau Gage Dubuc attracts significant instructions both locally and from abroad. “Solid, reasonable and practical”, domain name doyenne Chantal Desjardins
is strong on all facets of trademark prosecution and strategy and is also a go-to for comparative advertising and licensing issues.
The classy trademark practice at Gowling WLG is stacked full of premier professionals. Far from simply providing support services to the rest of the firm, the IP group is a shining light at this global commercial enterprise, with a reputation for “doing it all, and doing it all well”. The seasoned Robert MacDonald
co-heads the department; his sound judgement across the trademark spectrum has cemented his status as a leader in the field. When it comes to high-stakes litigation, Christopher Pibus
is first rate; “without exception, I would put him at the top”, affirms one interviewee. Rigorously methodical, Kelly Gill
is “the best of the best. If you need an important litigation, there is no one better to work with – his knowledge is unsurpassed”. Cogent advocate Monique Couture
is dedicated to improving anti-counterfeiting efforts through her position as Canadian Sub-committee chair of INTA’s Anti-counterfeiting Committee. Recent arrival Tania D'Souza-Culora
joins Couture in the fight against fakes and brings truly global experience to the table, having previously developed enforcement plans across Europe and Asia during a stint at Baker McKenzie. “Excellent on his feet, gentlemanly and persuasive”, James Buchan
effectively resolves problems with a detail-oriented yet reasonable approach; while Kevin Sartorio
wins acclaim for finding creative and practical solutions over all-or-nothing outcomes in litigation. Paul Blanchard
makes light work of both contentious and non-contentious matters; while fellow all-rounder Jane Steinberg
draws upon over 35 years’ experience at the trademark coalface to superb effect. Providing specialised advice on overseas prosecution, Jennifer Morton
is an authority in the pharmaceutical, financial services and social network spheres. Fellow strategic mastermind Shelagh Carnegie
manages domestic and international portfolios with a sure hand, and chairs the Brands and Marketing Team at MARQUES. Deep knowledge gained through some two decades-plus of registering, protecting and managing marks is evident in Ottowa-based Stuart Ash
’s clear and expedient advice to brand owners. Covering all non-contentious angles, Margaret Fitzpatrick
heads up the trademarks, brands and designs group in Vancouver and has particular experience in the fashion and oil and gas industries. Alongside Fitzpatrick on the West Coast is John Leckie
: “An excellent counsellor, his expertise and creative problem solving is truly excellent. Anybody can follow administrative instructions, but John is really able to find solutions for complex issues.” Frank Mulock
’s insightful advice is highly valued by clients in a range of industries, including retail, manufacturing and broadcasting.
Kestenberg Siegal Lipkus LLP
Kestenberg Siegal Lipkus “consistently provides exceptional service with high-quality, results-driven and cost-effective legal services”, and has positioned itself at the forefront of the fight against fakes. The team strives to improve standards by dedicating time to INTA’s Anti-counterfeiting Committee, as well as displaying admirable commitment to the region’s educational institutions: “Its passion for assisting brand owners is exemplified daily in its attention to detail, preparation and execution in all phases of anti-counterfeiting.” Calvin Klein, Louis Vuitton and Beats by Dre are among the host of premium brands to have benefited from the team’s unique expertise. Taking down brand imposters is the mission of founding partner Lorne Lipkus
: “Lorne is known for constantly taking a leadership position in almost all aspects of anti-counterfeiting matters in Canada.” Litigation maestro Georgina Starkman Danzig
“truly knows her stuff”, is adept at raids and police work and has the complete trust of clients and peers alike. An expert on preventing the sale of counterfeits online, David Lipkus
“has a unique ability in making complex technical online and legal issues very easy to understand”.
McCarthy Tétrault LLP
A national platform created by five integrated Canadian offices provides business law firm McCarthy Tétrault with the resources to offer full-service solutions to major domestic and international brands. Year-round resort Whistler Blackcomb and industrial auctioneering giant Ritchie Bros look to Beth MacDonald
for her expertise in prosecution strategy, settlement negotiations and licensing. Practical, responsive and business oriented, Daniel Glover
handles high-level litigation and co-leads the team representing Music Canada, the International Federation of the Phonographic Industry and the International Confederation of Societies of Authors and Composers as an intervenor in the widely reported Google v Equustek
Supreme Court case. Transactional ace Alfred Macchione
is particularly proficient in the high-technology sector.
McMillan takes an east-west perspective on maximising the monetary potential of intangible assets, with a Hong Kong outpost supplementing its considerable Canadian presence. A legion of technically astute lawyers dispense assiduous advice across the trademark spectrum, aided by innovative bespoke database software that ensures the smooth progression of files throughout the process. “Great to work with and very knowledgeable in the prosecution area,” co-chair of trademarks and licensing Sharon Groom
possesses 360-degree insight thanks to her in-house experience and previous role as a hearing officer for the Trademarks Opposition Board. “An understated guy who may not get the credit he deserves”, fellow departmental co-chair Peter Giddens
is the go-to man for expungement proceedings and domain name disputes.
Offering coast-to-coast coverage via a network of 11 Canadian offices, Miller Thomson strives to achieve practical solutions through easily implementable advice. Twenty IP lawyers combine to provide an enviable depth of expertise that attracts domestic and international brand owners seeking advice at all stages of the trademark journey. Catherine Dennis Brooks
“gives advice in an efficient manner and knows how to explain differences between Canadian and American IP law. She delivers exactly what you are looking for”. All-rounder David Schnurr
is a “delight to work with – his enthusiasm for trademarks is incomparable”. His varied client list includes the prestigious University of Western Ontario, which has benefited from shrewd portfolio management and assurance in opposition.
Norton Rose Fulbright Canada LLP
The ability to assist clients all over the world is a major selling point for Norton Rose Fulbright. National leader of brands Lorelei Graham
oversees the implementation of intricate commercialisation and protection strategies; she recently guided Oriole Media through opposition proceedings in relation to its JUICE and JUICE MOBILE marks. Clients wax lyrical about the service provided by senior partner Danièle Boutet
and global head of risk advisory Jane Caskey
: “They are truly outstanding partners of our company who offer insightful advice. They understand issues quickly, are nimble and very responsive and provide the expertise needed.” A large part of Brandon Potter
’s client base comes from the sporting world, with Hockey Canada and the Calgary Flames profiting from his skilful safeguarding against ambush marketing. Working alongside him in Calgary is Elizabeth Williams
, who led the worldwide trademark licensing portion of CDPQ’s $1.5 billion convertible share investment in Bombardier Transportation (Investment) UK LTD. Brian Gray
has fostered close relationships with long-term clients and runs a mixed practice underpinned by his expertise in grey-market goods. In a move that should significantly advance its pan-Canadian aspirations, the firm recently acquired Vancouver outfit Bull Housser & Tupper, adding a further 54 partners to its roster, including its “first-class, client focused” IP stars. The technically excellent Herb Regehr
is “highly personable and an absolute pleasure to deal with”; gaming giant EA Sports and speciality food enterprise Premium Brands are among those which trust his judgement and portfolio management recommendations implicitly. Poised advocate Chris Wilson
won’t bicker over non-issues. “A great listener and a gentleman, with a good sense of when to be aggressive or not,” his work on a precedent-setting case involving Vancouver Community College has garnered national attention. The “energetic and effective”, Karen MacDonald
knows her way around the Federal Court and continues to ably assist prestigious brands such as Chanel on a variety of matters within the anti-counterfeiting space. “She is professional, insightful and a delightful person, with strong ethics and determination.”
Adept at handling cross-border issues, Osler, Hoskin & Harcourt remains the firm of choice for a multitude of world-renowned brands. It acts as a one-stop shop for the likes of the NBA, for which it delivered integral protection and enforcement strategy advice ahead of the 2015 All-Star Weekend – the first time the event has been held outside of the United States. A corporate litigation background gives John Cotter a uniquely broad perspective on trademark disputes and anti-counterfeiting briefs. Former Fasken Martineau DuMoulin ace May Cheng adds further to the team’s anti-counterfeiting strength; a “specialist in the field, she is practical and responsive to clients’ issues – she is a great asset”. On the prosecution side, domestic and international portfolio management is a breeze for “focused, conscientious, smart and responsive” Ottawa managing partner Donna White. Leading the charge on licensing and transactional work is Lee Webster, a founding member of the Canadian Intellectual Property Council. Sitting alongside him in Toronto is marketing marvel Kelly Moffatt, who can “reference relevant legislation and important case law impacting matters at the drop of a hat”; “her recommendations always come in the form of practical solutions that can be implemented without much additional revision required”.
Oyen Wiggs Green & Mutala LLP
A commanding presence in Western Canada, Oyen Wiggs Green & Mutala is defined by its advanced technical expertise and academic proficiency. Offering the full suite of trademark services, it acts for a wide range of clients, from embryonic enterprises on the buzzing Vancouver start-up scene to established international players; SA Damm was successfully represented by this boutique outfit in a recent opposition regarding its world-renowned beer brand Estrella Damm. Regularly appearing in provincial and federal courts, Bruce Green is highly regarded on the contentious front.
Ridout & Maybee LLP
A laser focus on the use of intellectual property as a catalyst for commercial success is a hallmark of Ridout & Maybee, a boutique revered for its precision prosecution. The technically astute Janet Fuhrer
fortifies her practice with a comprehensive understanding of both the Canadian and US legal systems. Her elevated standing in the IP community is reflected by high-level involvement in outside organisations – she has served as president of both the Canadian Bar Association and IPIC.
“Excellent” full-service boutique ROBIC rules the roost in Quebec and enjoys a significant client base in other francophone jurisdictions, owing to the bilingual capabilities of its practitioners in Montreal and Quebec City. Senior counsel Hugues Richard
is a mainstay in trademark litigation and has regularly secured favourable outcomes in domain name conflicts as an accredited arbitrator for institutions such as the World Intellectual Property Organisation (WIPO). For contentious cases on the technical side of the law, look no further than Barry Gamache
, an authority on the Charter of the French Language and a lecturer at Université de Montréal
. François Grenier
adds further credence to the firm’s courtroom credentials, representing a broad spectrum of clients and contributing to a slew of top publications. Primarily a litigator, the pragmatic Bob Sotiriadis
has a varied practice that also encompasses a range of non-contentious mandates. “He would certainly be on my shortlist for referrals,” noted one impressed interviewee. With a “profound knowledge of the law”, Laurent Carrière
is the man to call for anything relating to advice and strategy. Handling her fair share of Section 45 proceedings, Catherine Bergeron
is a rising star with complementary expertise in advertising and marketing. Stella Syrianos
powers through complex oppositions and summary cancellations while never losing sight of clients’ business objectives.
Sim & McBurney – Sim Ashton and McKay LLP
Sim & McBurney and Sim Ashton and McKay combine forces to provide the full suite of trademark services from their downtown Toronto base. Well known as a leader in all things non-contentious is Toni Polson Ashton
, who has served on INTA’s board of directors and its executive committee and boasts exceptional client relations borne out of her highly organised prosecution practice. Fellow name partner Kenneth McKay
has the enforcement side locked down, with particular expertise in technology, transfers and licensing.
Plying their trade from five locations in Canada’s major technological and commercial centres, Smart & Biggar/Fetherstonhaugh’s sharp practitioners uphold the firm’s reputation as one of the country’s most distinguished boutiques. It has an exemplary track record in trademark litigation, while new prosecution and portfolio management mandates also continue to fly in. Managing partner of the Toronto office and contentious champ Mark Evans
takes a “thorough, practical and knowledgeable” approach to anti-counterfeiting matters. François Guay
is a “very persuasive advocate” whose recent highlights include successfully dismissing a motion to expunge a trademark owned by hockey heavyweight Bauer. A “fine litigator” with over 20 years of experience, Steven Garland
’s precedential work for Imperial Tobacco led the Canadian Federal Court of Appeal to affirm that a single colour applied to the surface of an object can be registered as a trademark. Trademark practice chair Philip Lapin
artfully manages portfolios and provides strategic advice for domestic and multinational corporations: “He is incredibly capable – the kind of person who is looking for the best result for his client, rather than how many hours he can churn out of a file. You can send a conflict file to him without blinking.” Handling all aspects of trademark law from the Montreal office is Christian Bolduc
, regarded as “strategic, responsive and ultimately productive for his clients, while at the same time a pleasant person to deal with as an adversary”.