Canada

The changes to Canada’s Trademarks Act, effective as of 17 June 2019, are one of the biggest shake-ups that the Canadian trademark market has ever seen and represent a watershed moment for the profession. The act contains a series of amendments, the three most significant of which are: the switch to the international system of filing through the Madrid Protocol, which provides a more streamlined process; the removal of the use basis for applications; and the expansion to allow new forms of trademarks. It is anticipated that there will be fewer foreign applications requesting national filings in Canada, as foreign applicants can now include Canada in an international application. The removal of the use requirement will make the application process much easier. However, this is likely to lead to an increase in opposition work as prior use will still be considered when establishing entitlement; therefore, additional investigations will need to be carried out as to whether a potentially problematic trademark is in use and how long it has been in use. The expansion of the definition of a trademark enables more non-conventional forms to be registered, including moving images and sound. Moreover, refusals can now be issued under distinctiveness as well as the relative grounds, which is expected to make prosecution more challenging. Despite the winds of change that are sweeping across the Canadian trademark landscape, overall, practitioners are excited about the opportunities that they present.

Firms

Firms: anti-counterfeiting

Aird & Berlis LLP | Aird & McBurney LP

Business law firm Aird & Berlis is a new and exciting addition to the guide this year. With an A-to-Z IP offering, this unit is a go-to for those seeking both Canadian and global IP protection. Heading up the trademark practice is Timothy Lowman, who “has a deep understanding of the law, quickly comprehends the relevant facts and develops efficient, cost-effective strategies which are best suited to each client’s objectives. His written and oral advocacy is outstanding.” Trent Horne is another seasoned litigator in the ranks and his wide-ranging knowledge covers everything from genetically modified plants to manufacturing equipment. With over 20 years of trial experience, Horne is a trusted adviser for PGA Tour. Chair of the licensing group, Grant Cansfield has a sharp, strategic mind and the commercial nous to manage portfolios for rights holders ranging from large Fortune 500 companies to smaller businesses. Often working in tandem with Cansfield is Ken Clark, whose years of engineering experience enable him to offer unique first-hand insights to patrons. The pair recently teamed up to represent a Canadian wine producer in a professional liability claim concerning trademark rights in China.

Baker McKenzie 

Clients choose to work with global powerhouse Baker McKenzie because of its vast “international presence, its provision of business-friendly advice and its deep bench of quality practitioners”. When working with the side, they get “a fast service, a personal approach and the practicality of an IP boutique with the backing of a world-class firm”. The first of the team’s all-star line-up is IP all-rounder Stephanie Vaccari. Gaining plaudits wherever she goes, “Vaccari is an impeccable solution-driven practitioner who is proactive, business-oriented and exceptionally knowledgeable in her field. Not only is she one of Canada’s best trademark attorneys, she is an adept strategic counsellor who keeps a cool head when matters become stressful or contentious.” Co-head of the IP portfolio management team and head of the IP practice group in Toronto, Christopher Aide provides valuable strategic advice and is the first name on the team sheet when it comes to handling global trademark portfolios. Aide ably manages Unilever’s global trademark portfolio in Canada, which – as one of the largest in the world – speaks to his vast experience and capabilities. Rounding up the triumvirate of superstars is Jim Holloway, the group’s IP litigation and anti-counterfeiting practice lead. Holloway is renowned in the industry for his superior competency, integrity and overall knowledge of trademark, counterfeit and related commercial law in Canada. “He always provides prudent guidance and direction for the most cost-efficient means to resolve trademark issues.”

Bennett Jones LLP

“Bennett Jones is a very strong firm. It has real depth covering pretty much every practice area and has fantastic lawyers and support staff. Year on year, clients are thoroughly impressed with its practitioners because of their strong business acumen and provision of unrivalled legal advice. There are a few excellent IP firms in Canada and Bennett Jones is certainly one of them.” Legend of the Canadian trademark space Martin Kratz has a number of admirable qualities. “His IP knowledge is second to none and he possesses a fantastic ability to take complex legal concepts and turn them into practical advice. Add to that someone who is diligent, proactive and responsive and you have one of Canada’s leading IP practitioners.” Another star in the group’s constellation is Stephen Burns. “I would like to say that Stephen is absolutely the best lawyer that I have dealt with in business. Stephen is a thoroughly competent and knowledgeable legal counsel who is very pragmatic and practical in solving business problems,” enthuses one satisfied customer. Dominique Hussey and Jeilah Chan form the most enviable tag-team partnership around. “Both practitioners are skilled, creative and extremely clever and grasp the key issues instantly. With an incredibly high level of competence and a client-oriented approach, they always find the most effective solutions.” New entries to the guide this year are Arthur Renaud and Kimberley Cunningham. Renaud “maintains a robust practice. He is a sharp practitioner who knows the law inside out. He has the respect of everyone in the industry.” Meanwhile, Cunningham is “someone who is definitely worthy of recognition. She is excellent with clients and carries out top drawer opposition and prosecution work.”

Bereskin & Parr LLP 

Bereskin & Parr consists of thought-leading practitioners who not only carry out top-class work but have also been instrumental in educating the nation about the recent amendments to the Trademark Act. “One of the premier IP boutiques, it has an outstanding reputation in Canada. The firm is highly professional and seems to maintain the highest standards for its practitioners.” Its contentious quartet of Jonathan Colombo, Mark Robbins, Donald Cameron and Scott MacKendrick is as strong as it gets. “When Colombo and Robbins are on the other side, you know it will be an interesting battle and there will be a real debate. They are solid litigators who are thoroughly knowledgeable on the law, understand the nuances really well and are excellent business advisers.” Additional litigation superstars at the outfit include Cameron, who carves a niche for himself in technology licencing, and MacKendrick, “who goes above and beyond the call of duty to get the job done. A personable practitioner and mentor, he is a leading light in the Canadian IP space.” On the prosecution side, Meghan Dillon, Jonathan Burkinshaw and Terry Edwards are fresh new additions to the guide this year. Brand protection sage Dillon goes the extra mile to advise clients on the management of their portfolios at home and abroad, while Burkinshaw excels in the fields of medical devices, computer software and personal care products. “Edwards really knows the law inside out and quickly gets to the heart of a matter. She is excellent at scaling advice to meet the needs of a particular project.” Sticking with prosecution, Mina Chana, Brigitte Chan, Daniel Bereskin, Janice Bereskin, Susan Keri, Cynthia Rowden and Jennifer McKenzie are Canadian trademark royalty. Kicking things off, Chana is a truly skilled prosecutor who delves deep into the subject matter, leaving no stone unturned. Chan “consistently delivers high-quality services. She provides thorough, well-reasoned advice every time and is extremely bright and diligent.” Founding partner Daniel Bereskin is a widely celebrated figure in the Canadian IP scene and handles portfolios for a who’s who of A-list multinationals, while co-leader of the trademarks practice group Janice Bereskin has been responsible for international fillings and portfolio management for start-up success story North Inc. Keri is another is the ranks who handles the management of large trademark portfolios across the widest spectrum of industries with aplomb. “Rowden is the doyenne of Canadian trademark law. At the very top of her game, she has more knowledge in the field than everyone else put together. With her finger always on the pulse, she is a real thought leader and a true force of nature.” Rounding up this illustrious list, McKenzie is a “sharp negotiator who knows the law inside out and goes above and beyond for her clients”.

Blake Cassels & Graydon LLP

Providing holistic solutions to clients’ problems, Blake Cassels & Graydon is an old hand when it comes to contentious work, with the expertise to get the most out of IP assets. As a full-service firm, the team is at home in the provision of multidisciplinary advice, which goes well beyond the confines of intellectual property. Its ensemble of thought leaders is led imperiously by Anthony Prenol – “a sage in trademark prosecution matters”. Covering a broad spectrum of sector specialisms, Prenol handles trademark portfolios for leading domestic and foreign industry giants with distinction. Teammate Antonio Turco is “a wonderful lawyer who is quick to provide sensible and client-friendly advice”. A sharpshooting litigator who also plays a strong hand in managing IP portfolios and risk assessment, Turco is an instrumental figure in the ranks.

Borden Ladner Gervais LLP 

Combining the specialist insight of an IP boutique with the wide-ranging capabilities of a full-service firm, the Borden Ladner Gervais team consists of industry-leading game changers who are not only formidable IP strategists but also play a strong hand in enforcement and anti-piracy matters. On the contentious side, Christine Pallotta is a precedent-setting litigator. Finding creative legal and business solutions, she is a celebrated entity in the technology and pharmaceutical spaces. The side’s deep bench strength is reflected through its all-star prosecution line-up where the triumvirate of LuAnne Morrow, Geneviève Bergeron and Justine Wiebe truly shine. Heading up the trademark practice in Calgary, Morrow “is a valued and dependable resource who provides timely and practical advice”. Alongside her, Bergeron comes with equally high recommendations. “I’ve always known her to be very responsive, knowledgeable and a pleasure to work with. She fully understands the commercial context of each case and really gets to grips with the technical subject matter,” claims one patron. Wiebe is another ace in the pack who garners excellent market feedback: “Without hesitation, Wiebe is the full package. She provides advice that is second to none in a clear, concise and cost-effective manner. Her ability to take exceedingly complex matters and explain them in a way that is easy for clients to understand is unparalleled.” Peter Cooke deservedly makes his debut in the guide this year. “Cooke operates with integrity and is extremely knowledgeable about trademark law. He is the type of attorney that practitioners should strive to be.” Ranked for both her prosecution and transactional work, Kathleen Lemieux is valued for her “practical approach to counselling and her listening skills. She really understands what in-house counsel need from outside counsel and delivers every time.”

Cassels Brock & Blackwell LLP

Representing some of the biggest filers in the country, the signature speciality of Cassels Brock & Blackwell is its strong domestic practice, where it excels in building strategies to add value to client portfolios. The group has also been making strides in developing its international management of IP filings while maintaining a strong presence in the entertainment sector. “To be candid, I haven’t worked with anyone there who isn’t good,” praises one satisfied patron. Shane Hardy is the beating heart of the firm: “A courteous and business-minded practitioner, he is truly a stand-out attorney; in every level of brand management, he is an all-round superstar.” Alongside Hardy, Alison Hayman is “extremely well versed in trademark law. Hayman and her team are energetic, responsive, thorough and prompt. She is lauded for her acute analysis of how to best achieve her clients’ business objectives and her sound risk assessments.” Peter Henein and new entry to the guide Steven Kennedy are also singled out for praise this year. Henein “provides excellent guidance and legal services. The entire team, under Peter’s management has been smart, professional and effective.” “Clients really enjoy working with Kennedy, both professionally and personally. He is an outstanding lawyer both for his technical skills, professionalism and enthusiasm. He is definitely a first-choice in Canada.” Completing the side’s starting line-up is Stephen Selznick; a sought-out practitioner for his licencing nous, he is a go-to for both domestic and foreign rights holders.

Clark Wilson LLP

Known for its hands-on dealings with clients, Clark Wilson offers a personal IP service and really flexes in the high-tech arena, where it represents a series of industry leaders. At the helm, Neil Melliship “is extremely well regarded in the Canadian trademark space. He is a hard worker, very personable to work with and is lauded by patrons and peers alike for his success in the local market.” Alongside him, Jeffrey Vicq is “a revolutionary outside-the-box thinker and a strong partner. His combination of trademark knowledge, business acumen, efficiency, effectiveness and personality are unmatched – a phenomenal trademark attorney.”

DLA Piper (Canada) LLP

A traditional firm with a fresh, innovative approach to its trademark work, DLA Piper is an international giant with a vast spectrum of domestic and international clients. Sangeetha Punniyamoorthy is a sharp tactician lauded for her “detailed analysis, strategic mindset and unrivalled expertise in the pharmaceutical field”. Completing the trio, tech guru Chris Bennett is a name to have on speed dial for brand owners seeking advice on the enforcement and commercialisation of IP assets.

Fasken

Fasken has the dexterity and know-how to handle IP issues for a host of clients from start-ups to Fortune 500 companies. With offices dotted around Canada, this collaborative unit offer fresh, innovative approaches to identify goals and ensure that they are realised. Marek Nitoslawski epitomises this and shines in the field of non-traditional trademarks. “Extremely responsive, technically astute and business-savvy,” Jean-Philippe Mikus is another leading light of the profession. “He is an ace on strategy and procedural matters and his recommendations always reflect the business considerations conveyed to him and his team.” The triumvirate of Sébastien Roy, Simon Hitchens and Patricia Seguin are a force to be reckoned with when it comes to international trademark matters. Hitchens and Roy are particularly adept at coordinating global brand strategies, with key clients Quadreal and Endoceutics benefiting from their recent efforts. With over 25 years’ experience, Seguin is a razor-sharp strategist and first port of call for global rebranding. The firm’s vast progress this year is reflected through the inclusion of four new additions to the guide: Armand Benitah, Roger Kuypers, Janine MacNeil and Mark Penner. Chair of the Toronto IP group, Benitah is an IP all-rounder who acquits himself with distinction in the manufacturing and technology sectors. Kuypers and MacNeil form a nimble pair and adeptly handle global trademark prosecution and portfolio management for both Greenhouse Grown Foods and the Little Potato Company. Transactions whizz Penner covers a wide range of sector specialisms including energy, social media and insurance.

Gowling WLG 

“All of the partners at Gowling are bright, engaged, proactive and quick. Day to day, the work they do is timely and they deliver really good quality. As a result, it is the go-to firm in Canada – the best of the best.” At the helm, Robert MacDonald “is well versed in all aspects of trademark law, well connected and really knows his stuff”, while co-captain Shelagh Carnegie “is technically very efficient, has a great demeanour with clients and is always reliable. Again and again, she achieves outstanding results.” Dynamic duo Frank Mulock and Stuart Ash have both experience and expertise. “Mulock and Ash are very approachable, responsive and keep the bigger picture in mind when they are addressing issues that their clients face.” Margaret Fitzpatrick, John Leckie and Lori Hall also provide sound trademark prosecution and counselling services. With a strong appreciation of international trademark laws, Fitzpatrick is prompt and responsive, going “above and beyond the call of duty”. Another practitioner who epitomises stellar client service is Leckie. “He is extremely thoughtful, possesses strong expertise in marketing and competition law and his advice is always on the money.” For many, Hall is the primary reason to bring their business to Gowling: “She is easy to work with, provides an excellent quality of service and is my first choice for related trademark work,” states one patron. Meanwhile, Jennifer Morton “knows the legislation inside out, is very experienced and is practical, succinct and business-oriented, which she backs up with a high level of experience; she is top-notch”. On the contentious side of the things, the quartet of Martha Savoy, Kevin Sartorio, Kelly Gill and James Buchan are a force to be reckoned with. Savoy “consistently demonstrates strong leadership and determination in resolving matters and achieving the best interests for her organisation. There are a variety of skills an effective attorney must possess, and she exceeds these in every aspect. Even among the best, she is a cut above.” Sartorio is a well-respected figure and leads by example in the Toronto office, handling all of Starbucks’ enforcement needs in Canada. Gill is another of the firm’s key litigators and has been fighting tooth and nail in proceedings before the Federal Court for Dollar General Corporation, while Buchan is “an excellent and eloquent strategist”. Taking the fight to counterfeiters are Monique Couture, Tania D’Souza-Culora and Christopher Pibus. Ranked for anti-counterfeiting, enforcement and prosecution, Couture does it all: “A bright star of the Canadian bar, she is highly intelligent with sound, studied advice.” “While anti-counterfeiting can be a constant uphill battle, D’Souza-Culora seeks to find the action that will have the most practical results. She is very diligent and her advice is very practical, crisp and to the point. She is an outstanding lawyer and her clients are lucky to have her as a partner.” “There are a lot of great lawyers in Canada; however, there are very few like Pibus, who can quickly grasp the challenges and issues that a business faces and provide cost-effective solutions.” New additions to the guide this year come in the form of: Eric Macramalla, “a respected practitioner with a keen focus enforcement and litigation matters”; Douglas Fyfe, who “is always looking a few paces ahead to ensure the best result for his clients. He has a wonderful, even-keeled personality and is truly one of the best”; Scott Foster, “creative, pragmatic and energetic in his approach”; and Susannah Rolston, who “can always be depended on for excellent service and results – a thorough and inventive problem solver”. The firm will doubtless be even stronger in 2020 thanks to the arrival of gold-tier litigator Ronald Dimock from DLA Piper.

Kestenberg Siegal Lipkus LLP

Kestenberg Siegal Lipkus is the first name on the team sheet for anti-counterfeiting issues. Lorne Lipkus, David Lipkus and Georgina Starkman Danzig “consistently demonstrate the utmost professionalism and unrivalled expertise in the handling of trademark and counterfeiting matters, and an unwavering commitment to helping not only their own clients but IP owners more broadly. They are proficient in their work and innovative in the remedies they seek to accomplish their clients’ interests. In particular, they have good contacts with Canadian law enforcement, which substantially helps trademark owners to stop the flow of infringing goods to and from Canada.” At the helm and “at the forefront of anti-counterfeiting enforcement for nearly 30 years” is Lorne. “Gaining plaudits wherever he goes, he simply has no peer.” Meanwhile, David is an equally reliable practitioner “who carves a niche for himself in stopping infringements on social media, which is a rapidly growing field”. Alongside them, Danzig is a force in her own right. “Smart, savvy, kind and diligent, Danzig is a fierce advocate who you would want in your corner when your back’s against the wall.”

Marks & Clerk

With 17 offices in seven countries, international cooperation is a hallmark of the Marks & Clerk practice. Moreover, through its collaborations with Sim & McBurney and Sim Ashton & McKay LLP since 2018, its upgrading of its case management system and the hiring of new lawyers, the outfit has certainly hit its stride. Practitioners are guaranteed to get into the mindset of clients to truly understand where they are coming from and where they want to go, enabling them to meet short and long-term trademark objectives.

McCarthy Tétrault LLP

The growing team at McCarthy Tétrault continues to be a hub for industry leaders at home and abroad. Offering a 360-degree IP service, this agile unit provides seamless collaboration across its offices, ensuring an intimate, hands-on approach. Patrons appreciate its ability to carry out a broad array of work. “The lawyers are effective, on time and within budget. I think the quality of their work speaks for itself,” enthuses one satisfied customer. “One of Canada’s most reputable firms, the team is entrepreneurial and motivated to support our business. It is a key partner.” In this light, “David Tait is a trusted adviser. He possesses an incredible skill set. which allows him to be very technical in terms of understanding the implications of businesses. With Tait, you get the best in terms of IP knowledge, but this expertise is framed in a common sensical and astute manner.” Global strategist Daniel Glover makes the impossible possible for clients. Devising inventive solutions, he is an outside-the-box thinker who finds answers in the most difficult IP situations. Transactions whizz Alfred Macchione “is detail-focused, tactical and proactive in his approach” – a go-to practitioner for registrations and licencing strategy.

McMillan LLP

“McMillan is a dependable firm, which provides an extremely high quality of service.” Covering a wide range of sectors, the team emits a seamless approach and – thanks to a number of practitioners with in-house experience – offers unique, first-hand insight. Peter Giddens and Sharon Groom encapsulate the ideals of the firm. Giddens “is go-to counsel for the management of all aspects of his clients’ IP portfolios. He provides expert, practical advice and understands the realities of his clients’ businesses.” Meanwhile, Groom provides top-notch advice and is well respected in the industry. Going beyond the realms of trademark law, she is also sought out for her knowledge of marketing, advertising and privacy law.

Miller Thomson LLP

Business law firm Miller Thomson prides itself on building long-standing legal relationships with its clients both domestically and abroad. “Its systems of tracking, following up and ensuring annual fees are approved and paid is excellent. The breadth and experience of the firm is unparalleled.” Not content to rest on its laurels, the team has kept up with a changing IP landscape and is looking to grow its practice through the recent formation of AI, blockchain, cryptocurrency and smart contracts legal service teams. David Schnurr is synonymous with excellent client service. “He has been instrumental in simplifying processes and putting things into laymen terms to assist clients in protecting the aspects of their products that important to their core technologies.” Catherine Dennis Brooks is another high flier who gains plaudits wherever she goes. “Dennis Brooks oversees prosecution portfolios in a cost-effective, efficient manner, taking care to send timely reminders, making sound recommendations on filing and registration strategy and highlighting key differences between US and Canadian filing requirements.” Rounding up the trio of ranked practitioners, Wayne Logan is an entertainment and media law specialist who has represented a who’s who of A-list clients over the years.

MLT Aikins LLP

Making its debut in the guide this year is full-service Western Canada-based MLT Aikins. With more than 240 lawyers and agents across its five offices, the team is making strides in the Canadian trademark space. Wearing the captain’s armband is Lorraine Pinsent – “a recognised leader in Canadian and US trademark prosecution who builds excellent relationships with her clients”. “We view her as a very valuable, service provider and a member of our team. A personable, knowledgeable, experienced and business-savvy practitioner,” chimes one satisfied patron.

Norton Rose Fulbright Canada LLP

From drafting and prosecution to precedent-setting litigation and anti-counterfeiting, the team at Norton Rose Fulbright does it all. Aptly epitomising this A-to-Z IP offering is superstar practitioner Karen MacDonald, who is ranked in our anti-counterfeiting, prosecution and enforcement tables. MacDonald is lauded by clients for her knowledge on local laws and practices and “provides helpful insight on the most practical ways to approach cases”. “She is extremely responsive and provides comprehensive advice in communicating the status of matters while also keeping our budget concerns in mind.” Alongside her, Chris Wilson is “a practical, knowledgeable and respected leader in the IP field. An effective advocate, Wilson is very well versed in trademark law and is always laser-focused on the practical and business objectives of his clients.” Another individual singled out for praise this year is Elizabeth Williams. With an enthusiasm for trademark strategy that is contagious, “she consistently provides very practical advice, takes the time to learn about her clients’ business priorities and is a valuable asset”. National leader of brands Lorelei Graham handles trademark portfolios in an array of sectors, with a particular focus on the food and agricultural sectors, while Mark Davis is a sharpshooting litigator who recently ensured a successful resolution for leading medical compliance packaging company LiquiMedLock Inc in a trademark and trade dress infringement case.

Osler, Hoskin & Harcourt LLP 

With the launch of the Osler Works – Innovation Program, coupled with new additions to the trademark team and John Cotter taking over as chair of the national IP department, Osler, Hoskin & Harcourt continues to go from strength to strength. With years of experience and a strategic commercial mind in contentious matters, Cotter comes to the fore in IT disputes. A name to have on speed dial for both contentious and anti-counterfeiting matters is May Cheng. “Her advice is solid and her follow through exemplary. She thinks through cases strategically, keeping in mind both the client’s business goals and budget constraints where being able to advise from a both prosecution and enforcement perspectives is a huge value add.” Newly made partner Barry Fong and W Lee Webster “come highly recommended for any work dealing with trademark prosecution and enforcement. Providing insightful advice in short periods of time, they are great to work with.” Both Donna G White and Kelly Moffatt come in for tremendous market feedback this year. “An efficient, knowledgeable and practical adviser,” White is “very service-oriented, always accommodating for last-minute changes”. Moreover, Moffatt “is extremely knowledgeable of the IP law, pragmatic in her advice and responsive for all enquiries. Really plugged into the world of business, she is held in very high regard.”

Ridout & Maybee LLP

One of the old guard on the Canadian IP scene, Ridout & Maybee offers a bean-to-cup IP service. This agile unit continues to take clients through all stages of a trademark lifecycle effortlessly, ensuring that it “catches the eye and is well respected in the IP community”. The firm is a consistent player in the Canadian trademark space and its practitioners are celebrated for their experience and practical approach.

ROBIC LLP

“The ROBIC team consists of some of the best IP litigators in Canada. Their efficient approach contributes to pleasant national and international cooperation.” A strong IP practice with an equally strong bench, ROBIC smoothly handles large trademark portfolios through advisers who possess in-depth knowledge and superior levels of expertise. At the heart of the operation, Bob Sotiriadis is a true professional. Incredibly knowledgeable, his years of experience have enabled him to provide sharp, succinct advice to clients, making him a prudent practitioner. Teammate Catherine Bergeron is another keen strategist in the firm’s ranks. “She is responsive, smart and very personable. She projects competence, professionalism and is definitely one of the stars at ROBIC.” Rounding up the constellation of ranked practitioners is precedent-setting litigator Barry Gamache who “provides sharp, technically astute advice” and the extremely thorough Laurent Carrière. “No one is as detail-oriented as Carrière. He is a benchmark for drafting statements in opposition proceedings.”

Smart & Biggar 

“Smart & Biggar is the largest IP boutique firm in Canada and consistently strong in all areas of IP work. The practice is in full stride and is laying down a marker as the leading IP boutique in the trademark space.” The quintet of Mark Evans, Steven Garland, François Guay and new additions to the guide Ekaterina Tsimberis and Mark Biernacki are at home in headline-making contentious matters. “Evans has an excellent reputation and is really at the top of his game. Aggressive but effective, he is a solid litigator, extremely smart, experienced and incredibly accomplished.” “Evans and Garland are really good at pushing the law to new places to benefit their clients. Garland is a fine litigator, particularly for the bigger cases. Guay is a seasoned litigator in the Canadian IP arena and has argued the broadest spectrum of cases before all manner of court.” Working in tandem with Guay, Tsimberis “is another great litigator who is very competent and garners a lot of respect in the industry. She has built a niche for herself in the Montreal market and is fast becoming a real go-to person – a rising star.” Another fresh face among the rankings this year, Biernacki has “a stellar reputation and is sound counsel”. Chair of the firm and head of the marketing and advertising practice, Keltie Sim Luft is a veteran of the trademark scene and, with over 30 years’ experience, an assured pair of hands. New entries Kohji Suzuki and Kwan T Loh are also deserving of some shine. “Suzuki is a top-quality attorney who does excellent work. He is always thoughtful and responsive. I have the utmost confidence in Kohji and strongly endorse him,” enthuses one client. In addition, Loh “is very well versed in prosecution and portfolio management. He is at exactly the right level and is thoroughly experienced in his fields.” For prosecution and strategy work Philip Lapin and Christian Bolduc form a dream pair. “Two of the firm’s strongest trademark practitioners, they are go-to people and their knowledge is vastly respected.” Also ranked alongside Bolduc in the transactions table this year is Sanjay D Goorachurn. “I have worked with Sanjay on many transactions and he is one of the most committed external counsel I have worked with. He thinks of the most innovative solutions while bearing in mind the worst-case scenarios to accurately calculate the risk/reward balance in high-stakes IP transactions.”

Other recommended experts

Stephanie Chong deservedly makes her entry into the guide this year. Practising at Hoffer Adler, “her advice is pragmatic and business-oriented and she takes the time to understand the commercial challenges that her clients face and always bears in mind their best interests”. “A force of nature, a wonder woman in her field, someone who always brings her A-game” – these are but a few of the ways that peers and clients have described Clancy PC’s very own Paula Clancy. “She consistently goes the extra mile, is extremely knowledgeable and very organised and provides a level of service that is absolutely top-notch.” At Deeth Williams Wall, “there is nothing not to like about Marijo Coates. She is Zen-like in her calm approach to everything, very much on top of legal developments and a generous mentor.” Chantal Desjardins of Lavery Lawyers is a solid practitioner who possesses vast experience and offers a safe pair of hands for creating intricate long-term strategies. At Fleck Innovation Law, the eponymous Lorraine Fleck is a first point of contact for trademark counselling and protection and really comes to the fore in the privacy and social media space. Ashlee Froese is a force to be reckoned with. “She is a business-minded practitioner who upholds the highest levels of professionalism”. Froese certainly knows her stuff and her nimble, savvy team at Froese Law consistently provide an excellent calibre of work. Plying their trade at Heer Law, Christopher Heer and Bonnie Headley form a dynamic duo. Heer looks at the overall business picture to find the best solutions for clients. Whether that be through litigation, settlements or coexistence, he puts his clients at the forefront of everything he does. Headley is a conscientious practitioner who knows how to connect the dots between intellectual property and business value to make the most out of her patrons’ IP assets. Henry Lue at Wilson Lue is someone that rights holders trust. “A very savvy litigator with extensive experience,” he is definitely one to watch. At Chitiz Pathak LLP, Marie Lussier is a name to have on speed dial for opposition-type work. “If I have a conflict, she would be me first port of call,” claims one admiring peer. Jennifer McKay of Perley-Robertson “is simply fantastic – a fine attorney who is truly professional, incredibly knowledgeable and possesses unique insights into workings of the Canadian Intellectual Property Office”. At Goldman Sloan Nash & Haber, John McKeown “has an excellent reputation in the market and helps clients get to grips with the intricacies of Canadian trademark law and practice”. Steven Raber at Filmore Riley LLP has the dexterity to advise every type of business under the sun. From small start-ups to multinational corporations, Raber is an astute commercial adviser who knows how to get the job done. “He is without doubt a leading professional in Canada.” Residing at Moffat & Co Patent & Trademark Agents, Wendy Riel is “sophisticated and nimble in her approach to her work and fully merits inclusion in any list of leading IP professionals”. “Excellent in the trademark prosecution field, Blaney McMurtry’s Andrea Rush is a great technical lawyer who is also adept at handling copyright and logo disputes.” Over at Lawson Lundell Carolyn Walters is a “solid leader who takes things by the horn and says it how it is”. Not one to beat around the bush, Walters brings both in-house and private practice experience to offer rounded IP advice to brand owners. Founder and director of Method Law Professional Corp, Michelle Wassenaar is a new addition to the guide this year. A “patient, responsive and focused individual”, she “is sure to take the firm to the next level”. Heading up the litigation and dispute resolution group in Vancouver, Dentons’ David Wotherspoon’s practice covers the broadest spectrum of sectors and he really comes to his own in technology and software matters. WTR 1000 debutante Jessica Yeung of Vanguard IP LLP “does a tremendous job”. “She is responsive and ably understands the needs of each individual client in a very intuitive manner.”

Individuals: anti-counterfeiting

Individuals: enforcement and litigation

  • May Cheng - 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 - Bereskin & Parr LLP
  • John Cotter - Osler, Hoskin & Harcourt LLP 
  • Monique M Couture - Gowling WLG
  • Mark Davis - Norton Rose Fulbright Canada LLP
  • 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
  • Martin PJ Kratz QC - Bennett Jones LLP
  • Timothy M Lowman - Aird & Berlis LLP | Aird & McBurney LP
  • Henry Lue - Wilson Lue LLP
  • Karen F MacDonald - Norton Rose Fulbright Canada LLP
  • R Scott MacKendrick - Bereskin & Parr LLP
  • Marek Nitoslawski - Fasken
  • Christine Pallotta - Borden Ladner Gervais LLP
  • Anthony M Prenol - Blake Cassels & Graydon LLP
  • Sangeetha Punniyamoorthy - DLA Piper (Canada) LLP
  • 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
  • Stephanie Vaccari - Baker McKenzie
  • Chris Wilson - Norton Rose Fulbright Canada LLP
  • Mark Biernacki - Smart & Biggar 
  • James Buchan - Gowling WLG
  • Donald M Cameron - Bereskin & Parr LLP
  • Lorraine M Fleck - Fleck Innovation Law
  • Scott Foster - Gowling WLG
  • Douglas GH Fyfe - Gowling WLG
  • Daniel Glover - McCarthy Tétrault LLP
  • Christopher Heer - Heer Law
  • Peter Henein - Cassels Brock & Blackwell LLP
  • Steven Kennedy - Cassels Brock & Blackwell LLP
  • Steven Raber - Fillmore Riley LLP
  • Arthur Renaud - Bennett Jones LLP
  • David Tait - McCarthy Tétrault LLP
  • Ekaterina Tsimberis - Smart & Biggar 
  • Antonio Turco - Blake Cassels & Graydon LLP
  • Michelle L Wassenaar - Method Law Professional Corp
  • David Wotherspoon - Dentons

Individuals: prosecution and strategy

  • Geneviève Bergeron - Borden Ladner Gervais LLP
  • Christian Bolduc - Smart & Biggar 
  • Laurent Carrière - ROBIC 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
  • Cynthia Rowden - Bereskin & Parr LLP
  • Donna G White - Osler, Hoskin & Harcourt LLP 
  • Justine Wiebe - Borden Ladner Gervais LLP
  • Christopher Aide - Baker McKenzie
  • Stuart Ash - Gowling WLG
  • Chris Bennett - DLA Piper (Canada) LLP
  • Janice M Bereskin - Bereskin & Parr LLP
  • Shelagh Carnegie - Gowling WLG
  • Brigitte Chan - Bereskin & Parr LLP
  • Jeilah Chan - Bennett Jones LLP
  • Stephanie Chong - Hoffer Adler LLP
  • Paula Clancy - Clancy PC
  • Marijo A Coates - Deeth Williams Wall LLP
  • Catherine Dennis Brooks - Miller Thomson 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
  • Jim Holloway - Baker McKenzie
  • Dominique T Hussey - Bennett Jones LLP
  • Susan J Keri - Bereskin & Parr LLP
  • Martin PJ Kratz QC - Bennett Jones LLP
  • Henry Lue - Wilson Lue LLP
  • R Scott MacKendrick - Bereskin & Parr LLP
  • Neil Melliship - Clark Wilson LLP
  • Jean-Philippe Mikus - Fasken
  • David Schnurr - Miller Thomson LLP
  • Keltie Sim Luft - Smart & Biggar 
  • Bob Sotiriadis - ROBIC LLP
  • Stephanie Vaccari - Baker McKenzie
  • Jeffrey Vicq - Clark Wilson LLP
  • W Lee Webster - Osler, Hoskin & Harcourt LLP 
  • Armand Benitah - Fasken
  • Catherine Bergeron - ROBIC LLP
  • Jonathan Burkinshaw - Bereskin & Parr LLP
  • Grant Cansfield - Aird & Berlis LLP | Aird & McBurney LP
  • Mina Chana - Bereskin & Parr LLP
  • Ken Clark - Aird & Berlis LLP | Aird & McBurney LP
  • Peter Cooke - Borden Ladner Gervais LLP
  • Kimberley A Cunningham - Bennett Jones LLP
  • Chantal Desjardins - Lavery Lawyers
  • Meghan Dillon - Bereskin & Parr LLP
  • Terry Edwards - Bereskin & Parr LLP
  • Margaret A Fitzpatrick - Gowling WLG
  • Ashlee Froese - Froese Law
  • Lorelei Graham - Norton Rose Fulbright Canada LLP
  • Sharon E Groom - McMillan LLP
  • Alison Hayman - Cassels Brock & Blackwell LLP
  • Bonnie Headley - Heer Law
  • Simon Hitchens - Fasken
  • 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 Canada LLP
  • Janine MacNeil - Fasken
  • Eric Macramalla - Gowling WLG
  • Jennifer McKay - Perley-Robertson, Hill & McDougall LLP
  • Jennifer McKenzie - Bereskin & Parr LLP
  • John McKeown - Goldman Sloan Nash & Haber 
  • LuAnne Morrow - Borden Ladner Gervais LLP
  • Frank Mulock - Gowling WLG
  • Lorraine Pinsent - MLT Aikins LLP
  • Anthony M Prenol - Blake Cassels & Graydon LLP
  • Sangeetha Punniyamoorthy - DLA Piper (Canada) LLP
  • Wendy Riel - Moffat & Co Patent & Trademark Agents
  • Susannah Rolston - Gowling WLG
  • Sébastien Roy - Fasken
  • Andrea Rush - Blaney McMurtry LLP
  • Patricia Seguin - Fasken
  • Kohji Suzuki - Smart & Biggar 
  • Antonio Turco - Blake Cassels & Graydon LLP
  • Carolyn Walters - Lawson Lundell LLP
  • Jessica Yeung - Vanguard IP LLP

Individuals: transactions

Luminaries

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