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

Many Changes Afoot for Canadian Intellectual Property Law: Bill C-86

Article
November 30, 2018

Many Changes Afoot for Canadian Intellectual Property Law: Bill C-86

At Last – Government confirms June 17, 2019 implementation date of major amendments to the Trademarks Act

Article
November 15, 2018

At Last – Government confirms June 17, 2019 implementation date of major amendments to the Trademarks...

Canada moves ahead with fluid marks

Article
November 5, 2018

Canada moves ahead with fluid marks

Bill C-86 – Canadian Government proposes more changes to trademark rights in Canada

Article
October 31, 2018

Bill C-86 – Canadian Government proposes more changes to trademark rights in Canada

Officially Infringing — Court Empowers Plaintiff Against Official Mark Owner

Article
October 23, 2018

Officially Infringing — Court Empowers Plaintiff Against Official Mark Owner

Settlement Privilege and Domain Name Arbitrations -- the case of www.potterybarnbaby.ca

Article
October 19, 2018

Settlement Privilege and Domain Name Arbitrations -- the case of www.potterybarnbaby.ca

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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

AIPPI Canada Annual General Meeting
AIPPI Canada
November 22, 2018, Toronto, ON
Colloque sur la Propriété Intellectuelle 2018
Barreau du Québec
November 16, 2018, Montréal, QC
2018 Midwest IP Institute
Minnesota Continuing Legal Education
September 27, 2018, Minneapolis, MN