Trademarks

Trademarks constitute an important and valuable component of the assets of many businesses and companies. Bereskin & Parr’s Trademarks practice group offers unparalleled experience in all aspects of trademark acquisition, registration and enforcement, which ensure that our clients’ trademarks are managed and protected effectively and efficiently.

We are experienced in advising our clients on creating and managing worldwide trademark portfolios, trademark disputes, managing domain name registrations and dispute resolution, and coordinating our clients’ Canadian needs with an international strategy – a competitive advantage when working on behalf of clients whose markets span the globe. Our clients range from local businesses and Canadian companies with international trademark portfolios, to major multinational companies in a variety of industries, including pharmaceuticals, computers, cosmetics, retailers, hotels and alcoholic beverages.

As one of the largest and most experienced groups in Canada, the team’s track record of creative, practical and cost-effective advice is reflected in our national and international reputation.

Our Services

The following is a list of services that members of our Trademarks practice group provide:

  • Strategic advice on managing national and international trademark portfolios
  • Trademark infringement and counterfeiting litigation and settlement
  • Searching, clearing, filing and registering trademarks and domain names
  • Opposition and cancellation proceedings
  • Negotiating and litigating trademark, trade name, trade dress, unfair competition and comparative advertising disputes
  • Providing transaction advice and due diligence in the evaluation and management of intellectual property in acquisitions, mergers, financings and bankruptcies
  • Negotiating and drafting licenses and franchise agreements
  • Advising on and conducting domain name disputes before the courts, the Internet Corporation for Assigned Names and Numbers (ICANN), and other administrative tribunals
  • Advising on other trademark, confidentiality and unfair competition issues that arise in cyberspace and e-commerce such as linking, framing, metatagging and cyberstuffing
  • Advising on rights of personality and privacy
  • Our clients receive a free trademark watching service for potentially conflicting, recently published marks in Canada

 

Recent Articles

Section 57 Applications “Drive” Amendments to the Trademarks Register

Article
June 14, 2019

Section 57 Applications “Drive” Amendments to the Trademarks Register

International Brand Protection for Canadian Companies: Using the Madrid Protocol to Expand Trademark Rights Abroad

Article
June 13, 2019

International Brand Protection for Canadian Companies: Using the Madrid Protocol to Expand Trademark...

New Trademarks Act Amendments in Government’s USMCA Implementing Legislation

Article
June 6, 2019

New Trademarks Act Amendments in Government’s USMCA Implementing Legislation

Are You Ready? Countdown to Implementation of Canada’s Amended Trademarks Act

Article
May 7, 2019

Are You Ready? Countdown to Implementation of Canada’s Amended Trademarks Act

Ten Things Brand Owners Should Know Before Using the Madrid Protocol to Obtain Rights in Canada

Article
April 18, 2019

Ten Things Brand Owners Should Know Before Using the Madrid Protocol to Obtain Rights in Canada

GSK Thwarts the Attempted “Scooping” of its HORLICKS Trademark

Article
March 13, 2019

GSK Thwarts the Attempted “Scooping” of its HORLICKS Trademark

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Practice Group Co-Leader

Jonathan Colombo Jonathan Colombo
B.A., M.A., LL.B.
Partner
416.957.1613  

Practice Group Co-Leader

Janice Bereskin Janice Bereskin
B.A.
Partner
416.957.1601  
All Practice Group Members

  

Webinars

Trademark Transition - Trade Dress for Success
Bereskin & Parr
December 12, 2018, Webinar
Expanding your Brand in China: A Primer for Canadian Businesses
Bereskin & Parr
January 26, 2017, Webinar: 12 - 1pm EST

Events

2019 Summer Courses in Intellectual Property
McGill School of Continuing Studies
July 8 - 24, 2019, Montreal, QC
Meetup #114 – Update to Trademark & Design Law
Silicon Halton
May 14, 2019, Oakville, ON
INTA Roundtable: Canadian Trademark Reform
International Trademark Association (INTA)
April 10 - 11, 2019, Philadelphia, PA