Ekaterina Tsimberis

Partner at Smart & Biggar

Ekaterina Tsimberis calls on 20 years of experience to advise her clients on trademark protection, management, enforcement and litigation, and to provide strategic counselling services. Her practice spans the entire branding lifecycle and she has significant expertise in all aspects of trademark law, including brand selection and clearance, trademark oppositions and cancellations, and trademark and trade dress litigation.

She successfully advocated for her clients before the Federal Court of Canada on litigations related to trademarks, industrial designs and passing off. She also represents clients in trademark oppositions and Section 45 proceedings (proving use/non-use of a registered trademark) before the Canadian Intellectual Property Office and the Federal Court.

Her innovative approach, including research-based evidence and strategies for litigation, has benefited clients and proven effective in cases relating to consumer perceptions in trade dress and brand protection. For example, in the Federal Court case involving Captain Morgan rum, (Diageo Canada v Heaven Hill Distilleries, 2017 FC 571), the use of consumer research as evidence was a key factor in winning the trial; it was recognised by the Marketing Research and Intelligence Association as “Best Multi-Stakeholder Research Initiative”.

Ms Tsimberis’s client base ranges from small and medium-size local enterprises to multinational corporations operating in Canada, the United States and Europe. She has advised clients in a wide variety of industries, including food and drink, apparel, shoe, fragrance, beauty products, sports equipment and insurance. Her clients also include foreign governmental bodies responsible for protecting their country’s appellations of origin and geographical indications for wines, spirits and food products.

Ms Tsimberis is recognised annually by leading Canadian and international publications including The Best Lawyers in Canada, The Canadian Legal Lexpert Directory and WIPR. Since 2014 she has been named a Top Female Legal Practitioner for Trademarks by Euromoney LMG.

Professional associations

  • AIDV
  • IPIC
  • INTA

Firm details

Smart & Biggar
1000 De La Gauchetière Street West
Suite 3300
Montreal QC H3B 4W5
Canada

Contact details

See firm profile