Canada

A year on from the biggest shake-up of Canadian trademark law in decades – which saw Canada join the Singapore Treaty, the Madrid Protocol and the Nice Agreement, and eliminate the use requirement to obtain trademark protection – the general trend of increased trademark activity continues, as Canada remains an important market for foreign brands. However, the update has exacerbated the problem of long waiting times to secure registrations as the Canadian IP Office adjusts to the new environment; the pandemic has also been a big factor in extending examination timeframes. However, the Canadian IP Office is working hard to improve efficiency – for example, through a recruitment drive for new examiners.

Firms

Firms: anti-counterfeiting

Aird & Berlis LLP | Aird & McBurney LP

As part of its well-formed commercial offering, Aird & Berlis dispenses a sophisticated IP service that covers all bases for diverse rights holders. Zooming in on the trademark side, the firm does a neat domestic and international filing job and manages portfolios – such as for Ancestry.com – with alacrity; litigation and anti-counterfeiting briefs are also dispatched with a sure hand. Inspiring leadership is provided by Timothy Lowman, a vastly experienced litigator who is “always the best-prepared person in the room”. “Tim masters all aspects of his cases and presents complex issues in the most straightforward manner.” “He has an excellent team around him that consistently delivers on time and on budget”; key members include Trent Horne, Grant Cansfield and Ken Clark. An efficient resolver of disputes and other tricky problems, Horne is “a delight to work with and an exemplary lawyer in every way. He has a wealth of knowledge, understands business issues and provides exceptional, targeted advice”. Like Horne, Cansfield has a firm grasp of clients’ commercial goals and deploys his well-rounded trademark prosecution, enforcement and licensing skillset towards achieving them. Equally versatile, polished litigator Clark is an ace on internet-related brand matters as well as IP monetisation.

Baker McKenzie

“Baker McKenzie anticipates the needs of global companies and designs IP strategies that align well with clients’ business view; it also gives easy access to work tools that enhance efficiency and productivity.” Its Canadian contingent is spearheaded by Christopher Aide and Stephanie Vaccari on the portfolio management side, and Jim Holloway on the enforcement and anti-counterfeiting front. Aide is a worldwide brand strategist who plays a vital role in maintaining Baker McKenzie’s relationship with consumer brand giant Unilever. Sources call the practice head “incredibly responsive, efficient and practical”, and cite his “thorough research and legal opinions” as “clear and easily digested”. Also coming in for high praise, Vaccari “makes everything look easy” and is a “trusted business partner” to clients. “She has a fine-tuned commercial sense and is an accessible and reasonably priced lawyer.” Holloway’s advocacy is finely judged, thanks to his many years at the IP coalface.

Bennett Jones LLP

Bennett Jones has forged close and lasting bonds with many leading Canadian multinationals – as well as top foreign companies – whose brands it protects to the hilt at home and abroad. The firm’s IP specialists work with dedication across the trademark lifecycle, putting the focus on quality and IP value creation. Fittingly, key figures such as Dominique Hussey and Jeilah Chan garner outstanding feedback from the market. Vice chair and Toronto managing partner Hussey is “quick to respond, highly attentive and extremely knowledgeable. You can send her a high volume of requests and she’ll stay on top of everything while consistently demonstrating superb legal and communication skills. She turns work around quickly and gives sound, thoughtful, pragmatic and commercially focused advice”. “Jeilah is an exceptional trademark lawyer and strategist. Extremely client oriented, she always seeks solutions that address your specific needs.” “She has amazing attention to detail and is a talented expert who gets results.” They pair up to the immense benefit of companies such as Bayer, which they have been supporting on prosecution, strategy and enforcement matters. The wider team is deep and includes several other greats, including Stephen Burns, Kimberly Cunningham and WTR 1000 debutants Robert McDonald and Sébastian Gittens. Burns – who co-chairs the innovation, technology and branding group with Hussey – showcases impressive range, given his abundant IT, data, social media and IP insight. Seasoned trademark agent Cunningham takes the lead for several A-list clients, including Champion Petfoods, for which she serves as worldwide IP counsel; her efforts in this regard include solving difficult problems in locales such as China and Brazil, and negotiating various agreements in many jurisdictions. McDonald – who works alongside Cunningham for Champion – is an accomplished litigator, counsellor and deal broker. In another fine display of teamwork, Gittens links up with Burns to support ATCO on wide-ranging brand matters.

Bereskin & Parr LLP

An “essential strategic partner in Canada” to a litany of domestic and international rights holders, Bereskin & Parr stands tall as one of the largest and best IP firms on the market. Testament to its powerhouse status, the firm has no fewer than 12 representatives in the WTR 1000 for 2021, including many Canadian IP celebrities. One of those is luminary Daniel Bereskin, who has enriched IP life in the country immeasurably; another is brand protector and portfolio manager Janice Bereskin, who leads the trademark group and serves as a member of the firm’s executive committee. She has fostered a highly collaborative approach that sees multiple practitioners work seamlessly and synergistically to render a tailored service to prestigious patrons. For a household-name snack and drink company, for example, Bereskin, Jonathan Burkinshaw and Scott MacKendrick link up to great effect. “Janice and Jonathan are so responsive, practical and supportive – they are people you can bounce ideas off and who will give you well-thought-out strategies that fit your needs. They also add value through their education efforts.” MacKendrick is a savvy litigator and trademark prosecution pro with a tonne of experience. Brigitte Chan and Mark Robbins, meanwhile, join forces to represent a leading retailer, giving it the benefit of their combined wisdom. Focused principally on counselling, Chan is appreciated by in-house counsel for her “up-to-date knowledge of relevant industry trends” and “advice which translates well for a business audience”. Robbins is a contentious sharpshooter adept at internet-related trademark litigation and enforcement. For many, Susan Keri – a major rainmaker of the practice – is the go-to; as a barrister, solicitor and trademark agent, she sees the whole playing field for clients. Another preferred choice, Mina Chana “consistently delivers when you need quick, practical but thorough advice”. For regulatory, advertising and marketing matters, Jennifer McKenzie fits the bill perfectly: exemplifying Bereskin & Parr’s success as a one-stop shop for brand owners, she has a skillset that rounds out the firm’s offering nicely. Likewise Meghan Dillon, a vital contributor to multiple practice groups, including copyright and digital media, data privacy, trademarks and advertising and marketing. Highly reputed agent Terry Edwards stands out for her trademark specialisation and thought leadership; while Donald Cameron is the top IP litigator on deck.

Borden Ladner Gervais LLP 

Borden Ladner Gervais (BLG) navigates with an unerring compass in emerging and competitive industries in which significant regulatory restrictions make branding matters more complex. For example, the team – with LuAnne Morrow at the forefront – has been representing Westleaf Cannabis and Juul Labs in connection with prosecution assignments requiring refined skills and a deft touch. The group applies these to great effect across the sector spectrum and on behalf of prominent companies for which brands are pivotal business assets. When the right trademark result carries huge commercial benefit, Justine Wiebe is another crack specialist you want in your corner. The Toronto IP leader is a “phenomenal and creative strategist” who “gets to the heart of issues and provides clear, sage, business-minded and cost-conscious counsel”. On behalf of a world-famous food brand, she partners up with Geneviève Bergeron to striking effect. Bergeron’s holistic counsel comes underpinned with a persuasive blend of IP, commercial and regulatory law expertise. Peers call her “an outstanding professional who looks for practical, win-win solutions”. Additional anchors of this tight-knit, well-formed group include Kathleen Lemieux and Peter Cooke, both of whom earn plaudits for their finely cultivated litigation and dispute resolution skills. Joining her colleagues in the WTR 1000 this year is senior associate Jennifer Ponton, who has been performing superbly since joining BLG in 2019. “Jennifer is a brilliant communicator whose advice is reasonable and easy to understand.”

Cassels Brock & Blackwell LLP

Cassels Brock & Blackwell’s robust, 360-degree trademark practice has caught the eye of numerous leading Canadian brands, for which the firm serves as a staunch trademark protector around the world, garnering a sterling international reputation in the process. Recent developments include further expansion into the cannabis area, in which it advises some of the country’s largest producers and retailers; and increased bench strength with the addition of new associates and the promotion of two counsel – including Steven Kennedy – to partner. Experienced in all facets of intellectual property, the versatile Kennedy is a rising star of a practice paced by several seasoned professionals, such as Shane Hardy, Alison Hayman, Stephen Selznick and Peter Henein. Business law group chair Hardy has leadership qualities in abundance, which is why high-profile patrons such as Mattel and Nike enlist him to manage all aspects of their Canadian trademark work. IP group co-chair Hayman’s notable clients include Toyota Canada and Little Caesar, to which she renders a first-class service characterised by dedication and responsiveness. Adroitly handling multi-faceted suits in which different IP strands weave together, Selznick brings further contentious firepower to the practice; while Henein is also supremely comfortable in the courtroom.

Clancy PC 

“Clancy PC’s professionals are extremely responsive and take care of trademark prosecution and other needs efficiently and with exceptional attention to detail. Forming a resourceful and clever team, they see the big picture and give enlightened advice on the best strategies for brand protection.” Hugely popular among rights holders and law firms alike, Paula Clancy is the guiding light of the practice. “Extremely client oriented and super-easy to work with, Paula is one of the most reliable trademark experts in Canada. She really delivers – and without the high billing rates of the larger firms.”

Clark Wilson LLP

Western Canada’s top trademark group can be found at Clark Wilson, whose prosecution practice has grown significantly in recent years as word of its pragmatic, commercially minded counsel has spread. Drawing a high volume of instructions from the tech sector – and from innovators in locales such as Seattle and Silicon Valley – the ensemble tailors its approaches and strategies very effectively. Praise abounds for IP group co-chair Jeffrey Vicq: “Jeff responds with substantive answers to client questions rapidly and with advice that reflects a level of understanding of trademark strategy that is second to none. For an in-house counsel, he’s a dream – you won’t find a better or more practical law firm partner.” “Jeff has creative solutions for resolving disputes and unparalleled expertise at crafting clever cease and desist letters.” Fellow co-chair Neil Melliship is similarly judged to be an “excellent trademark lawyer who fits the bill in Canada”. Joining them in the WTR 1000 for the first time this year, lawyer and trademark agent Athar Malik has a litigation background – and is a percipient problem spotter and solver for it.

CPST Intellectual Property

CPST Intellectual Property is a new name in Canada, but a familiar outfit when you look under the hood: it was formed in February 2020 by almost the entire membership of the Blake, Cassels & Graydon IP department, including star quarterbacks Anthony Prenol and Antonio Turco. Set up as an agile, business-focused outfit, the group turns a practised hand to prosecution and oppositions on behalf of myriad household names, including retailers, apparel and technology companies. Prenol is highlighted as a “pragmatic, thorough and customer-oriented lawyer” who does a “wonderful job helping US clients secure trademark registrations in Canada and protecting them through administrative proceedings and litigation”. Turco is also highly respected; his contentious know-how informs his risk-aware, forward-looking approach to portfolio management and strategic counselling. Making her debut in the rankings this year, Sarah O’Grady impresses as someone who “takes the time to understand clients’ business and is good at thinking outside the box”.

DLA Piper

DLA Piper has a potent global IP offering hallmarked by effective cross-border integration and coordination: “In Canada and across the board, it provides cost-effective, commercial and industry-relevant trademark advice that is clear and easily manageable for internal use.” Helping to set high standards for the firm not just in Canada, but internationally, is a dynamic cohort of professionals spread across offices in Toronto and Vancouver, headlined by Chris Bennett, Bruce Stratton, Sangeetha Punniyamoorthy and Geoff Mowatt. Cited by contacts as a “great lawyer and a good friend”, Western Canada-based IT and trademark group head Bennett goes the extra mile to deliver cast-iron protection and smart strategy for patrons including Newmont Corporation, the world’s largest gold-mining company. Stratton puts the emphasis on patent litigation, but also puts in resonant performances in trademark and copyright lawsuits. Punniyamoorthy is “more creative than many Canadian practitioners and is always willing to fight for her clients, whereas others can be very deferential to the trademark office”; this makes her a great choice for complex and high-stakes matters. She represents Vertex Pharmaceuticals, among others. Litigator Mowatt earns his spot in the listings for 2021 as a “calm voice in heated disputes”.

Fasken

Intellectual property is a central pillar of high-flying commercial firm Fasken’s offering: its group comprises over 50 specialised lawyers and patent and trademark agents, giving it the heft to field any brand-related instruction going. Outstanding domestic coverage also grants it an edge when it comes to servicing trademark needs in Canada: it has contacts in six offices coast to coast ready to deploy on all manner of prosecution, litigation and transactional briefs. The first names on the team sheet are Jean-Philippe Mikus and Marek Nitoslawski, both of whom are highly prized for their strategic vision, which is sharpened through exposure to challenging prosecution and contentious briefs. Mikus acts for the Quebec government in connection with branding of the province’s cannabis retail sale operations; and both he and Nitoslawski have been handling high-profile cross-border trademark infringement litigation for Nuheara Limited against Gentech International of commercial consequence in the earphones space. Both are based in Montreal, down the hall from Patricia Seguin, one of Fasken’s most experienced trademark agents and a domestic and international portfolio manager par excellence. Flying the firm’s flag high in Toronto, meanwhile, are Mark Penner, Simon Hitchens and Armand Benitah, each of whom bring something special to the table. Putting the right IP tools to best use, Penner excels at IP value creation and commercial work; Hitchens has a flair for executing major projects and recently oversaw a major global rebrand for Quadreal; and local chair Benitah has broad IP horizons, enabling him to serve as a one-man band for IP owners. Other leading lights of the practice include Quebec City’s Sébastien Roy and Vancouver residents Janine MacNeil and Roger Kuypers. Roy understands clients’ branding issues holistically, thanks to know-how in adjacent areas such as advertising and marketing; while MacNeil and Kuypers form a dream team for Western Canada-based patrons such as The Jim Pattison Group and restaurant chain White Spot Limited.

Gowling WLG

A mighty firm in Canadian and international trademark practice, Gowling WLG is a prolific filer that can also be entrusted with the most complex strategic advisory, contentious and transactional mandates. Deep insight, boundless resources and global reach give it a major advantage over competitors. On deck is a sizeable squad of versatile trademark and brands practitioners who play the outside general counsel role to perfection, including Robert MacDonald, Shelagh Carnegie, Monique Couture, Martha Savoy, Frank Mulock, Eric Macramalla, Douglas Fyfe, James Buchan and Natalie Rizkalla-Kamel. Virtually beyond compare as a “star of the trademark world”, MacDonald is unanimously considered to be an “exceptional” all-rounder in the brands space. Carnegie, who serves as co-head of the global IP group, is “a master of trademark law and an excellent tactician in tricky cases”. In this regard, she is cut from the same cloth as Couture, a “creative strategist” who is “constantly ahead of the curve in adapting to clients’ ever-changing business environments and priorities”. Savoy lights the path for the Canadian trademark group and is an astute resolver of disputes. Named alongside several colleagues as a “super-reliable and accessible partner”, Mulock colours his counsel with strong industry knowledge – and his client service is reliably superb. Steeped in litigation and prosecution wisdom, Macramella covers all bases, but stands out for his intuitive grasp of internet and social media matters. Sources report that Fyfe “cuts to the chase and gives resolutely practical advice”; “his written work product is excellent and he is not just a fine lawyer, but a fine person, too.” Barrister and solicitor Buchan sees issues in the round, which makes him devastatingly effective in court litigations and opposition proceedings. Rizkalla-Kamel debuts in the WTR 1000 for 2021 on the say-so of clients: “She is fully engaged when required and is always well prepared with tailored recommendations. Leveraging her expertise and extensive network of contacts, she is always thinking several steps ahead to ensure everything is handled efficiently and effectively. She also develops reporting and tracking systems that are customised for her clients’ enterprise needs.” There are many specialists on the firm’s expansive bench too, with Lori Hall, Jennifer Morton and Susannah Rolston all standing out on the prosecution and portfolio management side. Hall gives “clear, to-the-point advice and presents well-formed solutions to complex matters that enable easy decision making”. Morton has spent nearly three decades at the vanguard of Canadian trademark practice, where she remains today. Rolston benefits from 25-plus years in the field and demonstrates rare agility in attuning her service to the needs of emerging and established companies. There’s an abundance of contentious talent at Gowling WLG, too, with Ronald Dimock, Kelly Gill, Christopher Pibus, Scott Foster, Kevin Sartorio and Laurent Massam all bringing the heat in the courtroom. Dimock is a statesman of IP practice in Canada and a veteran trial lawyer; as is Gill, whose casework has done much to develop the country’s trademark law. Ready to tackle any matter, Pibus and Foster litigate across the IP spectrum with confidence and poise; Sartorio provides strong leadership as IP department head for Toronto, which is also home to Massam, a versatile advocate with excellent trademark, copyright and advertising fundamentals. Anti-counterfeiting, meanwhile, is the preserve of Tania D’Souza-Culora, who supervises global enforcement efforts with dexterity. For transactional IP assignments, the firm has an ace up its sleeve in Stuart Ash, a lawyer with a “flawless work ethic, steady and calm demeanour and exceptional leadership abilities”. John Leckie brings top-drawer advertising expertise to the practice.

Kestenberg Siegal Lipkus LLP

Adroitly navigating the online and offline realms – and working closely with the Canadian Anti-Fraud Centre – the anti-counterfeiting superheroes at Kestenberg Siegal Lipkus (KSL) consistently go the extra mile to close down infringers. The sheer volume of the practice is impressive enough, but the firm’s results and successes are what make it stand out. Referees are full of praise: “KSL operates at the cutting edge and is a market leader when it comes to IP enforcement. You can trust it completely.” The guardians for a huge number of fashion, luxury and other brands are Lorne Lipkus, David Lipkus and Georgina Starkman Danzig. “Lorne has an extraordinary level of experience, along with encyclopaedic knowledge – he’s just a legend in this space. There’s literally nothing he hasn’t seen or handled and he’s a go-to for those who settle for nothing less than the absolute best.” “David is one of the finest lawyers out there, with remarkable expertise in IP, privacy and data protection that puts him at the forefront of issues relating to the Internet, cryptocurrencies and cybersecurity. He takes a practical approach and gives quick, highly accurate advice.” “Georgina is particularly creative in addressing litigation issues and brings her A game to every case.”

Marks & Clerk

Premier international IP firm Marks & Clerk has had boots on the ground in Canada for decades: its Ottawa office – the firm’s first outside the United Kingdom – was set up 100 years ago. Also present in Toronto, the firm offers a reliable prosecution and litigation service to well-known domestic and international brands. The group is helmed by Jonathan Colombo, who also serves as Canadian managing partner. He is a seasoned trademark and advertising litigator and counsellor, with more than three decades in the game behind him.

McCarthy Tétrault LLP

Versatility in intellectual property is one of McCarthy Tétrault’s USPs; the firm showcases great proficiency in patent and trademark practice, making it a compelling one-stop shop for Fortune 500s and other companies with diverse portfolios and needs. An outstanding strike rate in litigation is another competitive advantage – when there are key battles to be fought and won, it’s a great comfort having it on side. It’s the same story in transactional negotiations, which the set oversees with a deft commercial touch. Key members of this “responsive, effective and cost-efficient” team include Vincent Kam-Sun Yip, a “practical lawyer and clear communicator” who heads the Western Canada practice; Daniel Glover, a “thoughtful, intelligent and forward-thinking” data privacy expert who also litigates IP cases with aplomb; poised advocate David Tait, who has a busy patent and trademark docket; and Alfred Macchione, an IP all-rounder with penetrating strategic vision. Joining them in the WTR 1000 for the first time this year is “responsive business partner” Amy Fong; the Vancouver-based counsel earns plaudits for her “clearly laid-out summarisations and recommendations”.

McMillan LLP

Leveraging proprietary trademark systems to smooth the prosecution process, McMillan is brilliant at supervising the protection of brands in view of short and long-term business plans. It takes a lean approach to the practice, ensuring that clients get hands-on attention from senior lawyers, which optimises results and minimises cost. Relishing the opportunity to dig in and solve problems, Sharon Groom and Peter Giddens show the way forward. Groom – who co-chairs the technology, IP and privacy groups – produces meticulous prosecution work for Sandals Resorts International 2000 and others with significant portfolios. Co-chair of the IP and trademarks practice Giddens does the same for a clientele drawn from diverse industries: “He consistently stands out as an efficient and exemplary trademark practitioner who understands the global implications of his advice.”

Miller Thomson LLP

Miller Thomson’s proximity – it has a wide network of domestic offices – full-service resources and incisive brands and IP expertise make it the darling of many Canadian as well as international companies. Committed to the highest standards of customer care, the firm’s trademark practitioners provide comprehensive advice that is finely calibrated according to the needs of each individual client. For 2021, the firm has two new faces in the WTR 1000, which better reflects its capabilities in the space – the newcomers being Vancouver’s Aiyaz Alibhai and Montreal’s Alexandre Ajami. Alibhai’s broad practice – encompassing all aspects of IP protection, monetisation and enforcement – is characterised by his “sophisticated business sense”. “He resolves disputes cost effectively and strategically”, showing a knack for “seeing the forest from the trees”. A key contributor to the success of the prosecution division, Ajami is perspicacious about brand strategy and licensing. They join Catherine Dennis Brooks, David Schnurr and Wayne Logan, who make well-deserved returns. “Catherine does terrific work and is extremely responsive. She is fantastic at coordinating global filings in a seamless manner.” “Working with David is refreshing – he understands his clients and how to best support global businesses.” Logan has an eye on emerging technologies and understands their impact on clients’ branding positions.

MLT Aikins LLP

MLT Aikins is synonymous with full-service excellence in Western Canada, where it maintains multiple offices and a well-equipped team of some 240 lawyers and other professionals. Its trademark experts show real passion for their subject matter and handle worldwide portfolios with the greatest of care and attention. The main attraction for many brands is Lorraine Pinsent: “Lorraine makes you feel like you are her top priority – she really cares about her relationships. She can assimilate complex IP demands and satisfy brand need across multiple business platforms. She is organised, tenacious and a genuinely kind and thoughtful person.” Her recent work includes supporting cannabis product manufacturer and retailer Delta 8 Bio-tech with portfolio management and policing.

Norton Rose Fulbright

With combined Canadian, North American and global prowess, Norton Rose Fulbright ranks among a small group of elite international commercial firms when it comes to full-bore brand protection. The local contingent has won many fans in the consumer and healthcare industries thanks to its blend of trademark, advertising and marketing know-how, but works across the industry spectrum to provide the right-sized advice that is essential to optimise IP strategies. The group’s contentious clout is particularly formidable – not least due to the presence of Mark Davis in Toronto and Chris Wilson in Vancouver. Litigating all kinds of IP cases, Davis has highly transferable advocacy skills thanks to the breadth of his knowledge. Wilson is “a hugely experienced litigator for the most nuanced matters” and a “personable and business-focused lawyer who understands clients’ broad objectives”. For cross-border cases, Joanne Chriqui is a sure bet: “Nothing short of outstanding, her advice is well-thought-out, balanced, clear and risk aware. She is a committed and caring partner who is a real pleasure to see in action in court; she demonstrates complete mastery of the facts of her cases and is courteous and professional with everyone, while examining and arguing with razor sharpness.” Karen MacDonald also holds her own in the glare of the courtroom, thanks to her sparkling written advocacy and persuasive oral presentations. Transactional intellectual property is another forte for the group, which counts Elizabeth Williams as a leading specialist in the area: “Elizabeth is someone you can count on for practical and business-guided solutions to new or difficult matters. She has amazing interpersonal skills, too.” Food and agribusiness trademark work is a further niche of the practice, with Lorelei Graham an authority on branding and IP issues in the space. Her work often has a global dimension.

Osler, Hoskin & Harcourt LLP 

“Quality is king” is the mantra at Osler, where responsiveness, quick turnarounds and flexible pricing mean that the results it secures are just as positive as the feedback it attracts. In-house counsel at top brands – as well as some of the world’s leading IP firms in other jurisdictions – flock to its doors with diverse protection and enforcement assignments. Taking the reins, John Cotter is at his best when steering companies through complex and hotly contentious matters. One client comments: “John is such a good negotiator that we have never had to litigate to a decision in court – he is very successful in bringing things to a resolution.” Likewise marketing and distribution practice group head Kelly Moffatt, a “practical and proactive partner” who is “great at cutting to the chase and ensuring that matters such as registry disputes don’t get snagged up”. May Cheng is similarly gifted, hailed as a “strategic, thoughtful, respectful lawyer who seeks the best outcomes for her clients with great determination”. Her recent highlights include representing Travel Leaders Group in Federal Court litigation and two oppositions, and acting for Hugo Boss on anti-counterfeiting matters. Barry Fong has been on a roll since making partner in 2019 and impresses at every turn as a “solutions-oriented lawyer distinguished by thoroughness and flexible decision making”. He handles a mix of prosecution, contentious and commercial trademark matters, covering all bases for high-profile entities such as NBA Properties. Supporting the same, Ottawa managing partner – and WTR 1000 gold-tier occupant – Donna G White is a guru when it comes to opposition proceedings, as well as a judicious all-round counsellor. One of the most experienced practitioners on deck is W Lee Webster, who has a flair for the fine print of IP-driven deals: “Lee’s technical know-how is exemplary and, incredibly responsive, he is always looking to support you in any way he can.”

Riches McKenzie & Herbert LLP 

Combining a rich tradition with a nimble and dynamic approach to trademark practice, Riches cuts a dash as an innovative boutique. The firm handles filings with efficiency, but has recorded significant growth in its trademark litigation practice over the past couple of years, with a recent associate hire – a former Federal Court of Canada clerk – giving it extra bandwidth. Helming the practice, Michael Adams is “highly proactive, effective and easy to communicate with”. His glittering client base includes a famous candy company and a leading pharmaceutical player, the latter of which he assists alongside prosecution whizz Marta Tandori Cheng. Jeffrey Pervanas is another good name to know, given his complete command of all things IP; he’s a perfect fit for multinationals with diverse portfolios that enjoy the immediacy and effectiveness of a single point of contact.

Ridout & Maybee LLP

A well-specced boutique offering a comprehensive suite of services, Ridout & Maybee has been a fixture on the Canadian scene for well over 120 years. Throughout its history, it has cultivated a focused approach, rendering advice according to the evolving business and industry needs of its clients, which come from many backgrounds. Rich trademark experience encompassing all aspects of the building, maintenance, enforcement and commercialisation of brands is a distinguishing feature of the firm, which has a flair for overcoming difficult protection challenges.

ROBIC LLP

ROBIC keeps a lower profile than some of its competitors, but its trademark practice is nonetheless a sophisticated one. The firm’s accomplished professionals bring a keen strategic sense to brand-related issues of all kinds, both contentious and non-contentious, and are in their element untangling complex problems and implementing outside-the-box solutions. In Laurent Carrière, the firm has an eminent trademark and copyright expert; he plays a key role coordinating its activities in these areas and ensuring that members of the team are always up to date in terms of knowledge and at the cutting edge in terms of skills. Trademark law is the focal practice of Catherine Bergeron, a full brand lifecycle manager who shines in administrative trademark proceedings. Barry Gamache is a noted thought leader who writes and lectures extensively on trademark law; he draws on a deep well of academic knowledge to handle impactful disputes. Bob Sotiriadis litigates with aplomb, especially in cases involving the interplay between emerging technology and brand issues.

Smart & Biggar 

“Smart & Biggar helps clients to create enterprise value from their intellectual property and is very business driven – it just approaches things in a very different way to a lot of other firms, which are more focused on the technicality of the law.” This is one of many reasons for the firm’s success across the brand spectrum, from prosecution and strategy to litigation, anti-counterfeiting and transactions; another is the depth and quality of its bench. Testament to this, the WTR 1000 features a dozen practitioners, including several gold-tier members in the form of Christian Bolduc, Philip Lapin, François Guay and Mark Evans. Montreal partner Bolduc possesses deep strategic wisdom, having practised through all phases of the trademark lifecycle during his career. “Christian really gets trademark law and is highly commercial. It is always pleasing to have him on the other side of a case, as he looks for business resolutions.” “Philip provides top-notch, practical, real-world advice rather than stiff legal analysis – he does not hedge his opinions or saddle them with so many qualifiers as to render them useless. He understands clients’ risk tolerance and really takes ownership of the advice he gives. Also incredibly valuable is the fact that if we ask him for work that doesn’t need to be done, he tells us, rather than just doing it and charging for it. As a result, he builds long-term relationships founded on trust.” Guay is “incredibly smart, completely charming and one of the best litigators there is”. Evans has a “rare level of experience and gravitas”, and is a “fair professional who doesn’t play games”. They are surrounded by other talented lawyers and able leaders, including Kohji Suzuki, Ekaterina Tsimberis, Mark Biernacki, Kwan Loh and Steven Garland, all of whom earn glowing reports from the market. Trademark group chair Suzuki is “proactive, practical and engaged with his clients on a business level”. Sharing Suzuki’s versatility, Tsimberis is “great in negotiations, because she can put herself in others’ shoes to better figure out what she needs to do”. She also dispenses “precise advice that is not just theory focused”. “Mark Biernacki is a trusted ally and can be wholeheartedly recommended as a reliable attorney. Comfortable at navigating areas of law tangentially related to trademarks, he excels at resolving complex issues and handles all matters in a manner that minimises in-house time commitment. He is an effective advocate in adversarial scenarios.” Brand strategist Loh is “responsive, organised, creative and easy to work with”; while consummate trial lawyer Garland “brings a very reasonable and even tone to matters, which is important when dealing with infringers often interested in seeking publicity”. Vital contributions also come from IP transactions ace Sanjay Goorachurn; rangy IP litigator Jean-Sébastien Dupont; and social media and internet maven Daniel Anthony.

Stikeman Elliott LLP 

Debuting in the WTR 1000 for 2021, Stikeman Elliott has a real affinity for transactional IP work and is a preferred choice when silky negotiation skills are required for the optimal monetisation of intangible assets. The firm also handles portfolios with care and attention and an eye for business opportunities; while litigation is a further forte for the well-rounded group. In charge is Ottawa-based IP group head Justine M Whitehead, who demonstrates refined commercial IP skills. Versatility is the key trait of Jonathan Auerbach – one of just a handful of individuals in Canada to be recommended in all areas of trademark practice. He represents Aon with respect to prosecution and portfolio management in Canada; protects and enforces the brands of FIFA; and looks after all Canadian trademark work for Riot Games.

Other recommended experts

Benoit Archambault is hailed by foreign associates for his “clear advice and timely responses”. He leads the trademark team at Davies Ward Phillips & Vineberg, advising top domestic companies on all aspects of procuring, protecting, enforcing and monetising trademark rights. For transactions involving trademarks and copyright, Amalia Berg is a sure bet. The Goodmans partner maintains a robust commercial IP practice, but also provides accurate advice on clearance, prosecution and enforcement matters. Stephanie Chong of Hoffer Adler garners outstanding feedback: “Approachable and easy to talk to, she is an attentive listener who provides excellent initial advice very quickly. Her follow-up is thoughtful and detailed, but also pragmatic and easy to understand; her recommendations show a fine appreciation of clients’ interests and enable decisions to be made for the best business benefit. Her fees are reasonable and she gives an excellent service.” She procures, manages and enforces trademarks, and is brilliant at navigating unsettled areas of Canadian IP law. With his technical background and widespan IP know-how encompassing all categories of rights, Yuri Chumak of Dickinson Wright is a great fit for innovative technology companies. He flies the flag of US firm Dickinson Wright in Toronto. Marijo Coates applies her refined business mind to protecting and licensing trademark rights. The Deeth Williams Wall founding member is recognised as one of the most seasoned practitioners in Canada. A long-time inductee in the WTR 1000, Chantal Desjardins of Lavery Lawyers is a commercially attuned intangible asset manager who is comfortable in contentious proceedings and transactional negotiations, making her an effective one-stop support. Recommended by domestic peers for his anti-counterfeiting nous, Daniel Drapeau runs a broad-ranging trademark protection and enforcement practice at DrapeauxLex. As an authority on trademarks, social media, advertising, marketing and data privacy, Fleck Innovation Law founder Lorraine Fleck supports rights holders in many meaningful ways. Field Law has an “exceptional trademark lawyer” in Calgary-based Lisa Statt Foy. She files trademarks directly in Canada and the United States and maintains a vibrant cross-border practice, in the course of which she connects with likeminded professionals the world over. Ashlee Froese blends insight on deep trademark and fashion law and is a compelling choice for designers and other creatives when it comes to brand protection and monetisation. She founded her own self-titled firm, which has been going strong since 2017. Bonnie Headley “really knows her stuff and has everything covered. She brings clarity to brand and business strategising, and is a dynamic, articulate and passionate IP practitioner with outstanding social skills”. She recently established Greenspace Trademark Services. Christopher Heer is the founding partner of Heer Law, a boutique that maintains close direct relationships with Canadian brand owners, which it helps to protect domestically and globally. He loves working with emerging businesses and guiding their commercial and brand strategy decision making. In March 2020, Christopher Hunter moved from BLG to Blake Cassels & Graydon, where he now serves as head of intellectual property. Drawing on broad IP experience, he is well placed to assist clients with high-level strategy. The founder of brands boutique Jensen IP, Heidi Jensen is endorsed by US contemporaries as a “very practical thinker who looks beyond the purely legal aspects of her work to give well-rounded advice”. She also wins plaudits for her swift handling of urgent requests. Henry Lue has a complete command of trademark law, having practised on both sides of the contentious/non-contentious divide for many years. Endorsed by contemporaries as a practical mind to whom conflicts can be referred in complete confidence, he spearheads operations at Wilson Lue. Dubbed “one of the best trademark experts in Canada” by foreign associates, Marie Lussier of Chitiz Pathak never fails to impress. She understands the business of brands and is an astute portfolio manager whose advertising know-how adds further value. Jennifer McKay joined Dentons at the outset of 2020, taking up residence in its Ottawa office. Her new firm gets a talented patent and trademark lawyer with, in the opinion of domestic sources, an encyclopaedic knowledge of IP law. In the firm’s Vancouver office, David Wotherspoon brings leadership to the local litigation and dispute resolution group; he takes on a wide variety of commercial and IP cases, which keeps him sharp and ready for anything. Manning the IP desk at Toronto full-service firm Goldman Sloan Nash & Haber is John McKeown, a top copyright and trademark expert with a strong internet-related IP practice: “Thorough and conscientious, he handles things seamlessly and consistently gives a highly responsive service.” Scott Miller, the co-managing partner of MBM Intellectual Property Law, debuts in the WTR 1000 on the say-so of peers, who call him an “excellent strategic thinker and litigator”. He has spent nearly three decades racking up the wins in complex trademark and other IP disputes. Highly trained in litigation and alternative dispute resolution, Steven Raber also supports clients on a strategic level as they develop and protect their brands; he can be found at Fillmore Riley in Winnipeg, where he has spent his entire career. A former senior examiner at the Canadian trademark office and a hugely insightful practitioner, Wendy Riel has cracked the code of trademark prosecution. She operates out of Moffat & Co. Blaney McMurtry’s Andrea Rush is highly regarded for her blended trademark and copyright skillset. Sources note that she is well known for her copyright tariff work on behalf of leading Silicon Valley companies. Sprigings Intellectual Property Law has carved a niche in Patent Medicines (Notice of Compliance) Regulations litigation. It also handles trademark conflicts with poise, deploying experienced lawyer Dale Schlosser, whose ability to put difficult disputes to bed has earned him the trust of the market. “Hardworking, strategic and entrepreneurial” is how sources describe John Simpson. He is the principal and founder of Shift Law, a nimble and flexible boutique whose practitioners provide a personalised service hallmarked by good listening and clear communication. Bringing clarity and coherence to global filing strategy, Carolyn Walters is an intelligent agent who gets results, whether procuring strong brand protection or enforcing trademark rights online. She practises at Lawson Lundell. Michelle Wassenaar is a perspicacious lawyer and trademark agent who motivates a strong team at Method Law, the firm she founded in 2012. Leveraging a far-reaching network, she protects clients’ brands globally. VanTek IP’s Jessica Yeung is a Chinese speaker with excellent international connections, which she puts to good use helping Canadian and other companies to navigate the global IP landscape.

Individuals: anti-counterfeiting

  • Georgina Starkman Danzig - Kestenberg Siegal Lipkus LLP
  • David S Lipkus - Kestenberg Siegal Lipkus LLP
  • Lorne M Lipkus - Kestenberg Siegal Lipkus LLP
  • Mark Biernacki - Smart & Biggar
  • May 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
  • Alison Hayman - Cassels Brock & Blackwell LLP
  • Jim Holloway - Baker McKenzie
  • Karen F MacDonald - Norton Rose Fulbright
  • Christopher J Pibus - Gowling WLG

Individuals: enforcement and litigation

  • May Cheng - Osler, Hoskin & Harcourt LLP 
  • John Cotter - Osler, Hoskin & Harcourt LLP 
  • Mark Evans - Smart & Biggar
  • Kelly Gill - Gowling WLG
  • François Guay - Smart & Biggar
  • Robert A MacDonald - Gowling WLG
  • Christopher J Pibus - Gowling WLG
  • Jeilah Chan - Bennett Jones LLP
  • Jonathan G Colombo - Marks & Clerk
  • Monique M Couture - Gowling WLG
  • Mark Davis - Norton Rose Fulbright
  • Barry Gamache - ROBIC LLP
  • Steven Garland - Smart & Biggar
  • Shane Hardy - Cassels Brock & Blackwell LLP
  • Jim Holloway - Baker McKenzie
  • Trent Horne - Aird & Berlis LLP | Aird & McBurney LP
  • Dominique T Hussey - Bennett Jones LLP
  • Timothy M Lowman - Aird & Berlis LLP | Aird & McBurney LP
  • Henry Lue - Wilson Lue LLP
  • Karen F MacDonald - Norton Rose Fulbright
  • R Scott MacKendrick - Bereskin & Parr LLP
  • Marek Nitoslawski - Fasken
  • Anthony M Prenol - CPST Intellectual Property
  • Sangeetha Punniyamoorthy - DLA Piper
  • Mark L Robbins - Bereskin & Parr LLP
  • Kevin Sartorio - Gowling WLG
  • Martha J Savoy - Gowling WLG
  • Stephen Selznick - Cassels Brock & Blackwell LLP
  • Bob Sotiriadis - ROBIC LLP
  • Ekaterina Tsimberis - Smart & Biggar
  • Stephanie Vaccari - Baker McKenzie
  • Chris Wilson - Norton Rose Fulbright
  • Michael Adams - Riches McKenzie & Herbert LLP 
  • Daniel Anthony - Smart & Biggar
  • Jonathan Auerbach - Stikeman Elliott LLP 
  • Mark Biernacki - Smart & Biggar
  • James Buchan - Gowling WLG
  • Donald M Cameron - Bereskin & Parr LLP
  • Joanne Chriqui - Norton Rose Fulbright
  • Daniel S Drapeau - DrapeauLex Inc
  • Jean-Sébastien Dupont - Smart & Biggar
  • Lorraine M Fleck - Fleck Innovation Law
  • Scott Foster - Gowling WLG
  • Daniel Glover - McCarthy Tétrault LLP
  • Christopher Heer - Heer Law
  • Peter Henein - Cassels Brock & Blackwell LLP
  • Christopher Hunter - Blake Cassels & Graydon LLP
  • Steven Kennedy - Cassels Brock & Blackwell LLP
  • Laurent Massam - Gowling WLG
  • Scott Miller - MBM Intellectual Property Law LLP
  • Sarah O'Grady - CPST Intellectual Property
  • Steven Raber - Fillmore Riley LLP
  • Dale Schlosser - Sprigings Intellectual Property Law
  • John Simpson - Shift Law
  • Bruce Stratton - DLA Piper
  • David Tait - McCarthy Tétrault LLP
  • Antonio Turco - CPST Intellectual Property
  • Michelle L Wassenaar - Method Law Professional Corp
  • David Wotherspoon - Dentons

Individuals: prosecution and strategy

  • Geneviève Bergeron - Borden Ladner Gervais LLP
  • Christian Bolduc - Smart & Biggar
  • Shelagh Carnegie - Gowling WLG
  • Laurent Carrière - ROBIC LLP
  • Stephanie Chong - Hoffer Adler LLP
  • Monique M Couture - Gowling WLG
  • Mark Evans - Smart & Biggar
  • Philip Lapin - Smart & Biggar
  • Robert A MacDonald - Gowling WLG
  • Kelly Moffatt - Osler, Hoskin & Harcourt LLP 
  • Jennifer Morton - Gowling WLG
  • Donna G White - Osler, Hoskin & Harcourt LLP 
  • Justine Wiebe - Borden Ladner Gervais LLP
  • Christopher Aide - Baker McKenzie
  • Stuart Ash - Gowling WLG
  • Armand Benitah - Fasken
  • Chris Bennett - DLA Piper
  • Janice M Bereskin - Bereskin & Parr LLP
  • Catherine Brooks - Miller Thomson LLP
  • Brigitte Chan - Bereskin & Parr LLP
  • Jeilah Chan - Bennett Jones LLP
  • Mina Chana - Bereskin & Parr LLP
  • Paula Clancy - Clancy PC 
  • Marijo A Coates - Deeth Williams Wall LLP
  • Peter Cooke - Borden Ladner Gervais LLP
  • Lorraine M Fleck - Fleck Innovation Law
  • Barry Fong - Osler, Hoskin & Harcourt LLP 
  • Peter Giddens - McMillan LLP
  • Lori K Hall - Gowling WLG
  • Shane Hardy - Cassels Brock & Blackwell LLP
  • Alison Hayman - Cassels Brock & Blackwell LLP
  • Dominique T Hussey - Bennett Jones LLP
  • Susan J Keri - Bereskin & Parr LLP
  • Henry Lue - Wilson Lue LLP
  • R Scott MacKendrick - Bereskin & Parr LLP
  • Neil Melliship - Clark Wilson LLP
  • Jean-Philippe Mikus - Fasken
  • Lorraine Pinsent - MLT Aikins LLP
  • Sangeetha Punniyamoorthy - DLA Piper
  • David Schnurr - Miller Thomson LLP
  • Kohji Suzuki - Smart & Biggar
  • Jeffrey Vicq - Clark Wilson LLP
  • W Lee Webster - Osler, Hoskin & Harcourt LLP 
  • Alexandre Ajami - Miller Thomson LLP
  • Aiyaz Alibhai - Miller Thomson LLP
  • Daniel Anthony - Smart & Biggar
  • Benoit Archambault - Davies Ward Phillips & Vineberg LLP
  • Jonathan Auerbach - Stikeman Elliott LLP 
  • Amalia M Berg - Goodmans LLP
  • Catherine Bergeron - ROBIC LLP
  • Jonathan Burkinshaw - Bereskin & Parr LLP
  • Grant Cansfield - Aird & Berlis LLP | Aird & McBurney LP
  • Yuri Chumak - Dickinson Wright
  • Ken Clark - Aird & Berlis LLP | Aird & McBurney LP
  • Kimberley A Cunningham - Bennett Jones LLP
  • Chantal Desjardins - Lavery Lawyers
  • Meghan Dillon - Bereskin & Parr LLP
  • Terry Edwards - Bereskin & Parr LLP
  • Margaret A Fitzpatrick - Riches McKenzie & Herbert LLP
  • Amy Fong - McCarthy Tétrault LLP
  • Ashlee Froese - Froese Law
  • Douglas GH Fyfe - Gowling WLG
  • Seb J Gittens - Bennett Jones LLP
  • Lorelei Graham - Norton Rose Fulbright
  • Sharon E Groom - McMillan LLP
  • Bonnie Headley - Greenspace Trademark Services
  • Simon Hitchens - Fasken
  • Jim Holloway - Baker McKenzie
  • Heidi Jensen - Jensen & Company
  • Steven Kennedy - Cassels Brock & Blackwell LLP
  • Roger Kuypers - Fasken
  • John G Leckie - Gowling WLG
  • Kathleen Lemieux - Borden Ladner Gervais LLP
  • Wayne Logan - Miller Thomson LLP
  • Kwan T Loh - Smart & Biggar
  • Marie Lussier - Chitiz Pathak LLP
  • Karen F MacDonald - Norton Rose Fulbright
  • Janine MacNeil - Fasken
  • Eric Macramalla - Gowling WLG
  • Athar Malik - Clark Wilson LLP
  • Jennifer McKay - Dentons
  • Jennifer McKenzie - Bereskin & Parr LLP
  • John McKeown - Goldman Sloan Nash & Haber 
  • LuAnne Morrow - Borden Ladner Gervais LLP
  • Frank Mulock - Gowling WLG
  • Sarah O'Grady - CPST Intellectual Property
  • Jeffrey Pervanas - Riches McKenzie & Herbert LLP 
  • Anthony M Prenol - CPST Intellectual Property
  • Wendy Riel - Moffat & Co Patent & Trademark Agents
  • Susannah Rolston - Gowling WLG
  • Sébastien Roy - Fasken
  • Andrea Rush - Blaney McMurtry LLP
  • Patricia Seguin - Fasken
  • Lisa Statt Foy - Field Law
  • Marta Tandori Cheng - Riches McKenzie & Herbert LLP 
  • Antonio Turco - CPST Intellectual Property
  • Stephanie Vaccari - Baker McKenzie
  • Carolyn Walters - Lawson Lundell LLP
  • Jessica Yeung - VanTek IP
  • Vincent Kam-Sun Yip - McCarthy Tétrault LLP

Individuals: transactions

Luminaries

  • Daniel R Bereskin - Bereskin & Parr LLP
  • Ronald E Dimock - Gowling WLG