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Trade-marks

A strong brand is the key to successful marketing of a company's products and services to maintain its market position. Also, trade-mark protection can extend beyond brands, to cover logos, product or container shapes and packaging. With a trade-mark registration being the only right of intellectual property that is potentially eternal, this right is indeed the keystone of any market success. The strength of a trade-mark rests largely upon its protection and enforcement, and as such, vigilance in the marketplace is paramount. Our trade-marks team, comprised of litigators, has the depth of expertise and wealth of experience that organizations from start-ups to multinationals rely upon to select, register, commercialize, and enforce trade-marks that protect their brands.

Team

Our team includes trade-mark lawyers and trade-mark agents who assist our clients with the protection and enforcement of their trade-mark rights, with a view to maximizing the protection available while avoiding needless expense. We also have an established and extensive network of foreign associates around the world with whom we work closely to ensure effective and efficient protection of our clients' interests both in Canada and abroad.

Services

Registrability (Availability and validity) searches and opinions
Infringement opinions
Filing and prosecution of applications to register trade-marks in Canada
Coordination, supervision and management of registration of trade-marks abroad
Obtaining complementary protection, whether by way of copyright or industrial design registrations
Opposition proceedings
Litigation
Enforcement proceedings, including extraordinary proceedings, such as seizures (also known as ''Anton Piller'' or ''John Doe'' Orders, which can be executed across Canada and in which we have developed a particular expertise), injunctions and liaising with public enforcement
Licensing
Trade-mark transactions
Trade-mark portfolio management

Client Work

Successfully Defended Bojeux

In trial of major trade-mark and copyright infringement action More

Worldwide and National Management of Trade-Mark Portfolios

For a number of major Canadian corporations and rightsholders More

Publications

Changes to Canadian Trade-Mark Opposition Practice in Force as of October 1, 2007

On October 1, 2007, the Canadian Trade-marks Office implemented changes to the procedures followed by the Trade-marks Opposition Board. More

Highlights of the U.S. Patent and Trademark Office Rule Changes

The United States Patent and Trademark Office (USPTO) has now adopted new rules of practice which, in some instances, will significantly change the way patent applications are prepared, filed, and prosecuted in the U.S. More

The spirit of the law -The Spirits International case

In Canada, trademark rights are acquired and maintained through use. More

Drug Name Confusion: Health Canada's "Look-alike, Sound-alike" Drug Name Review Policy

It has now been one year since Health Canada released a new policy to review drug and other health product names as part of its pre-market regulatory approval process. More

Former Distributor Retains Legitimate Interest in Disputed Domain Name

On November 15, 2006, in a domain name dispute submitted to the National Arbitration Forum pursuant to the Uniform Domain Name Dispute Resolution Policy (the "Policy") of the Internet Corporation For Assigned Names and Numbers (ICANN), an arbitration ... More

General Information - Trade marks

Overview; registering a trade-mark; common law trade-marks; licenses; trade-mark use; maintaining valid trade-marks. More

A Tip to Save You Money in Protecting Your Brand

On September 19, 2006, the Federal Court of Canada rendered a decision which will influence your document management policy. More

Permission to search

On 27 July 2006, Canada's highest judicial instance rendered its first decision1 on Anton Piller2 Orders (APO), an effective remedy often used by intellectual property rights owners to preserve evidence in their fight against counterfeit products. More

5 Lessons from the Supreme Court of Canada

Mattel and Veuve Clicquot Decisions. Trade-mark owners must diligently protect their marks. More

The State of Famous Marks in Canada

On June 2, 2006, Canada's highest court, the Supreme Court of Canada, allowed the mark CLIQUOT, used in relation with women's clothing boutiques, to co-exist in the marketplace with the famous VEUVE CLICQUOT branded champagnes, and allowed the mark ... More

Grey Goods: Encouraging News for Canadian Distributors

The bane of local distributors. They are genuine, thereby escaping anti-counterfeiting recourses based on trade-mark registrations,[i] but they are imported and sold in violation of the Canadian distributor's rights. More

Kirkbi & Lego Are Blocked from Asserting a Functional Trade-Mark

LEGO building blocks have fired the imagination of children and those young at heart for many years. More

The Importance of Applying to Register a Trade-mark Sooner Rather Than Later

Somehow, your marketing people were a bit dilatory. You've been using your trade-mark for some time, but they did not file an application to register it. More

Trade mark Application Requirements

Requirements & useful information; filing in Canada; mark made known in Canada; other types of marks. More

Media Highlights

Supreme Court of Canada: selling grey goods is not necessarily copyright infringement. - Decision rendered today in Euro-Excellence v. Kraft

Ogilvy Renault's experts explain the highly anticipated decision released today by the Supreme Court of Canada on grey goods. More

Ogilvy Renault Shines in International Rankings

Named best law firm in Canada; a leader in Trade Mark law and the only Canadian firm to stand out in International Arbitration and Project Finance More

Fame is not Everything, Supreme Court Rules

If you dine at a BARBIE'S Restaurant, would you think Mattel Inc. is the owner? Would you also expect that LES BOUTIQUES CLIQUOT, a women's clothing chain, had something to do with the famous VEUVE CLIQUOT champagne? More