Paula Clancy

Partner at Gowling WLG
Ranked in Canada
WTR Research

The WTR 1000 focuses exclusively on trademark practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal trademark expertise

Silver - Individuals: prosecution and strategy

“One of the most well-known names in intellectual property, Gowling WLG provides a reliable and effective service in both prosecution and enforcement. The firm has a deep bench of experienced practitioners who devise excellent strategies and arguments to get the job done successfully and bring about great outcomes.” The forward-thinking outfit is constantly looking for new ways to innovate and is currently creating a ground-breaking online-based initiative that aims to set a new standard in the provision IP legal services. It also has a dedicated brand protection and anti-counterfeiting group, which Christopher Pibus, Martha Savoy, and Monique Couture are central to, that uses cutting-edge software tools. “A rock-solid and super knowledgeable litigator, Christopher is outstanding and far superior to anyone I’ve come up against recently”, enthuses one peer. In the words of another: “An outstanding attorney, Martha provides smart recommendations and is a wonderful asset to anyone in need of advice and counsel.” “Well-versed in all areas of trademark law, Monique is very fair in negotiations and terrific across the table.” She has been co-authoring a chapter on Canadian anti-counterfeiting law along with Savoy. The side is also home to a sterling litigation division and leadership therein comes astute strategist and “excellent litigator” James Buchan. The managing partner cares about his patrons, as seen by his excellent work and the development of fruitful client relationships. “Excellent partners with immense expertise in trademark law”, Laurent Massam, Kelly Gill and WTR 1000 newcomer James Green have been assisting PayPal in a trademark infringement dispute against an Indian company that used a similar logo when it entered the market. Leading the team in Toronto, Kevin Sartorio has been managing all of Starbucks’ trademark prosecution and enforcement needs in Canada, teaming up with IP division lead Shelagh Carnegie to do so. Carnegie is a brilliant strategist who gets right to the point and focuses on solutions that are driven by innovation. Teaming up with both Sartorio and Carnegie to represent Outillages King Canada in a series of oppositions against Weems Industries is Natalie Rizkalla-Kamel. “A deliberate and effective practitioner, Natalie is instrumental in guiding her patrons. Her strategic thinking combined with her in-depth knowledge of business needs makes her an ideal partner.” In early 2020, she began overseeing the Royal Bank of Canada’s global portfolio, one of the top 10 largest portfolios in the country. For its domain name enforcement matters, Eric Macramalla comes to the fore. He is at ease in the online world, navigating the ever-changing social media landscape to assist with issues on various virtual platforms. Looking deeper into the prosecution division, Frank Mulock, Susannah Rolston, John Leckie and WTR 1000 debutant Jodi English shine. Mulock is noted for his deft global coordination of worldwide portfolios and tenacious representation in domain name conflicts; following the amendments to the Canadian Trademarks Act, Rolston has been supporting Magna with their portfolio and strategic filing; Leckie has been assisting the Mark Anthony Group with all their protection needs in local and international markets; and English’s “deep understanding of prosecution” has made her a confidant to some of the world’s most recognisable brands. Working alongside English in the Toronto office, Jennifer Morton stands out for her insight into the practices of the country’s trademark office. She collaborates extensively with the CIPO and its director general on existing and new trademark policies. “A force to be reckoned with, Jennifer is immensely knowledgeable and has a stable list of clients that adore her. She is tireless, energetic, and selfless”. In Ottawa, Stuart Ash, Douglas Fyfe and Paula Clancy also receive high praise from patrons: “Stuart is the greatest attorney. He is knowledgeable, diligent, and his demeanour is top-notch. He has offered nothing but good service at an excellent price since I gave him my first case many years ago and now, he receives all my trademark work for Canada.” “Doug has been an excellent partner for many years. He takes the time to get to know his in-house counsel counterparts, is quick to respond, and never upsells. He is one of the best attorneys I have ever worked with.” Returning to the firm in November after a successful 13-year stint at her own boutique, Clancy “is leagues ahead of her competitors”. “Paula has the ability to deconstruct complex topics and deliver pragmatic guidance. Her forward-thinking assistance enables customers to acquire the greatest possible protection in Canada, which includes providing enlightening advice regarding the best strategies. She is the go-to attorney in the country.” Holding down the fort in Hamilton, “Lori Hall has a superior grasp of the law and always achieves desired results. She strategically executes trademark prosecution in a timely and thorough manner, and her ability to integrate complex national and international knowledge with a vast understanding of business needs sets her apart”. Rounding out the line-up, Ronald Dimock is lauded as a “trademark guru” by those in the industry and he has contributed vastly to landmark cases over the past four decades.

Paula Clancy's Profile

Paula Clancy is a partner and trademark agent in Gowling WLG’s Ottawa office.

Ms Clancy has more than 26 years of experience as a corporate/commercial and trademark lawyer, and she is certified by the Law Society of Ontario as a specialist in IP (trademarks). Her background in business law and intellectual property law is a valuable asset to her clients.

Ms Clancy works with in-house counsel as an extension of their legal team to assist with trademark filing strategies, global portfolio management and procurement. Her clients range from start-ups and SMEs to prominent public companies, including a number of global brands. These clients operate in industries including, technology, fashion, consumer goods, cosmetics, food and beverage, sports, banking, manufacturing, and life sciences. Ms Clancy also has experience working with women-owned and minority-owned businesses.

Ms Clancy is very active in the intellectual property community and has recently been nominated to serve as a director of the International Trademark Association (INTA) for the 2022-2024 term. She also currently serves as: director and treasurer of the Intellectual Property Institute of Canada (IPIC); Canada’s national delegate for the Interamerican Association of Intellectual Property (ASIPI); and director of the International Association for the Protection of Intellectual Property AIPPI (Canada).

Paula is a past recipient of the Ottawa Business Journal’s Top 40 Under Forty Award and Distinctive Women Magazine’s Entrepreneur of the Year Award. She was a finalist for the Women’s Business Network’s Businesswoman of the Year Award.

Prior to rejoining Gowling WLG (she practised with the firm from 1994-2008), Paula founded and operated a boutique intellectual property firm in Ottawa. Her firm was ranked in the WTR1000 as a leading Canadian trademark prosecution firm; was certified by WBE Canada as a Women Business Enterprise; and was selected as an Amazon IP Accelerator firm. As a founder and entrepreneur, Paula has picked up valuable insights that help her effectively advise start-ups and SMEs. She knows from experience how to help them navigate their pain points and challenges.

Firm Profile

With more than 1,500 legal professionals in offices worldwide, Gowling WLG is an international law firm offering clients a comprehensive suite of legal services across multiple jurisdictions and industry sectors.

The firm is widely regarded as a global leader in IP law, with significant strength in prosecution, enforcement and litigation, and transactional work.

Global reach

Gowling WLG is home to top IP practices in Canada, Russia, the United Kingdom and throughout Europe, as well as across an arc of challenging jurisdictions that include the United Arab Emirates (UAE) and China. Our exclusive association with JurisAsia in Singapore — along with a robust network of established relationships with leading IP practitioners worldwide — ensures our clients have access to the very best in trademark services, wherever their business takes them.

With a view to serving our clients better, we continue to grow our global platform each year. Most recently, in September 2021, we announced a significant expansion of our IP practice and relationships in China. This expansion includes:

  • the transfer of Clyde & Co’s Chinese IP practice to Gowling WLG, giving Gowling WLG clients access to a broader range of IP services’
  • an exclusive referral arrangement with Chongqing Aquila Law Firm (Aquila Law). This arrangement will allow Gowling WLG to provide clients with enhanced, seamless access to the Chinese courts and IP offices; and
  • a new office in Shanghai, an extension of Gowling WLG’s IP agency in Beijing. This office will complement the firm's existing locations in Beijing and Guangzhou, as well as Aquila Law's office in Chongqing.

Prosecution

Directly through our offices in Canada, Russia, China and the UAE — as well as through our extensive network of trusted international associates — we offer clients a full range of trademark prosecution services. From filing to managing large international portfolios to supporting complex transactions, our professionals deliver practical, cost-effective legal advice to help commercialise and maximise your IP assets.

Enforcement and litigation

Our prosecution services are matched by formidable enforcement capabilities spanning all our global offices. Our services encompass opposition proceedings, infringement, cancellations and invalidations, passing off, dilution, anti-counterfeiting, trans-shipping and parallel import matters.

We regularly appear before all levels of court in the United Kingdom, Europe, Russia and Canada, and manage and coordinate litigation in other jurisdictions. Members of our team have represented clients successfully in a wide range of matters, including with respect to trademark validity, the misappropriation of confidential information and theft of trade secrets, defamation, and IP licensing disputes. From ‘bet the company’ litigation to the smallest skirmish, we work tirelessly to ensure we achieve optimal outcomes for our international clientele.

Transactions

Our global IP transactions team has a rich track record advising on a breadth of IP transactional and cross-border matters, including with respect to transfers, coexistence, joint ownership, licensing and recordals, securitisation of intellectual property, brand clearance and franchise contracts — as well as the IP aspects of corporate transactions (including M&A, joint venture and hive offs). Our team also has particular experience in life sciences, IT, competition/antitrust and employment transactions.

Full-service offering

Outside our IP practice, Gowling WLG is equipped to advise clients in virtually every area of law relevant to business. This comprehensive offering gives our team the ability to seamlessly harmonise our clients’ IP interests with other facets of their organisation, and in turn develop a more holistic picture of their business objectives. This is one of our core strengths and a key differentiator from other IP service providers — whether they are full-service firms or boutiques.

Recognition

Our IP practice and the professionals who comprise it are routinely recognised by the world’s foremost IP publications. In 2021 alone, our team received multiple distinctions:

  • World Trademark Review selected 11 Gowling WLG professionals across four countries, more than any other firm in the world, for inclusion in the 2021 edition of WTR Global Leaders; and
  • Gowling WLG was named among the top 26 international trademark firms in the 2021 edition of WTR 1000. The guide also recognised 39 Gowling WLG trademark professionals around the world who together earned a total of 47 listings across multiple areas.


 

 

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