Brigitte Chan

Partner

Montréal, 514.871.2920

Practice Group(s)

Industrial Designs
Trademarks
Litigation
Regulatory, Advertising & Marketing
Copyright & Digital Media

Education

LL.L., University of Ottawa, 1997
LL.B., University of Ottawa, 1999

Qualifications

Admitted to the Québec Bar, 1998
Admitted to the Ontario Bar, 2000
Registered Canadian Trademark Agent, 2005

Professional Memberships

Association des Praticiens du Droit des Marques et des Modèles (APRAM)
Association Littéraire & Artistique Internationale (ALAI)
Intellectual Property Institute of Canada (IPIC), Fellow
International Association for the Protection of Intellectual Property (AIPPI)
International Trademark Association (INTA)

Brigitte Chan

LL.L., LL.B.

Brigitte Chan is a partner with Bereskin & Parr LLP. Brigitte counsels clients in trademark clearance, prosecution, licensing and enforcement, as well as in industrial design, copyright, domain name and related Internet matters. Much of her practice involves portfolio management of Canadian and international companies, both on a domestic and international level. She not only provides legal advice but regularly participates in strategic decisions, including brand acquisitions.

Brigitte has been involved in reported decisions rendered by the Federal courts in both patent and trademark litigation, and has appeared before the Trade-marks Opposition Board. She holds both a Civil Law degree and a Common Law degree, and is a member of the Quebec and Ontario Bar. Brigitte also lectures and regularly acts as workshop leader at the McGill University/Intellectual Property Institute of Canada Summer Courses in Intellectual Property. She is a frequent author on various topics, including non-traditional marks, licensing and Quebec French language issues.

Brigitte is recognized in the Expert Guides: Trade Mark 2016 publication for Canada based on her IP expertise, and the 2016 Lexpert Guide to the Leading US/Canada Cross-border Corporate Lawyers in Canada.

She is fluent in English and French.

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Our People

Brigitte Chan

Brigitte Chan

LL.L., LL.B.

Partner
Montréal      Ph: 514.871.2920

Practice Group(s)
Industrial Designs
Trademarks
Litigation
Regulatory, Advertising & Marketing
Copyright & Digital Media

Education
LL.L., University of Ottawa, 1997
LL.B., University of Ottawa, 1999

Qualifications

Admitted to the Québec Bar, 1998
Admitted to the Ontario Bar, 2000
Registered Canadian Trademark Agent, 2005

Brigitte Chan is a partner with Bereskin & Parr LLP. Brigitte counsels clients in trademark clearance, prosecution, licensing and enforcement, as well as in industrial design, copyright, domain name and related Internet matters. Much of her practice involves portfolio management of Canadian and international companies, both on a domestic and international level. She not only provides legal advice but regularly participates in strategic decisions, including brand acquisitions.

Brigitte has been involved in reported decisions rendered by the Federal courts in both patent and trademark litigation, and has appeared before the Trade-marks Opposition Board. She holds both a Civil Law degree and a Common Law degree, and is a member of the Quebec and Ontario Bar. Brigitte also lectures and regularly acts as workshop leader at the McGill University/Intellectual Property Institute of Canada Summer Courses in Intellectual Property. She is a frequent author on various topics, including non-traditional marks, licensing and Quebec French language issues.

Brigitte is recognized in the Expert Guides: Trade Mark 2016 publication for Canada based on her IP expertise, and the 2016 Lexpert Guide to the Leading US/Canada Cross-border Corporate Lawyers in Canada.

She is fluent in English and French.

Articles

Speaking Engagements

New Signage Law in Québec

Bereskin & Parr
Webinar
December 1, 2016

Brand Owners: Get Ready to Add French to your Signage
On Decemeber 1st Bereskin & Parr Partners’s Brigitte Chan and François Larose discussed the new amendments to Regulations under Québec’s Charter of the French Language and how they affect companies doing business in Québec.

Highlights include:
•    An overview of the Charter of the French Language and its regulations
•    The trademark exception
•    The successful court battle by multi-national retailers against the Québec Government
•    Québec Government’s response: Legislative amendments
•    A review of the amendments and guidelines published by the OQLF
•    The impact of these amendments on companies doing business in Québec

Click here to view the webinar

2016 Summer Courses in Intellectual Property

McGill University / Intellectual Property Institute of Canada (IPIC)
Montréal, QC
July 18 - 29, 2016

As part of McGill University & Intellectual Property Institute of Canada (IPIC) summer courses on intellectual property, the following Bereskin & Parr partners will be presenting:

Noel Courage - “Patents: An Overview” on July 18, 2016

Stephen Beney – “Overview of Patent Cooperation Treaty” on July 20, 2016

François Larose – “Basics of Canadian Trademark Procurement – Opening Remarks” on July 25, 2016

Brigitte Chan – “Different Types of Applications, Examiners’ Reports & Responses, Post-Advertisement Matters” on July 26, 2016

Brigitte Chan, François Larose and Meghan Dillon will also be conducting a daily workshop at Intellectual Property Institute of Canada’s (IPIC) Understanding Trade-marks introductory course.

For more information please click here.

2015 Summer Courses in Intellectual Property

McGill University / Intellectual Property Institute of Canada (IPIC)
Montréal, QC
July 27 - 31, 2015

Brigitte Chan and Francois Larose will also be conducting a daily workshop at Intellectual Property Institute of Canada’s (IPIC) Understanding Trade-marks introductory course on July 28, 2015.

2014 Summer Courses in Intellectual Property

McGill University / Intellectual Property Institute of Canada (IPIC)
Montréal, QC
July 28, 2014 - August 1, 2014

Brigitte Chan and Francois Larose will be conducting a daily workshop at Intellectual Property Institute of Canada’s (IPIC) Understanding Trade-marks introductory course on July 23rd.

2011 Summer Courses in Intellectual Property

McGill University / Intellectual Property Institute of Canada (IPIC)
Montréal, QC
July 25, 2011 - August 10, 2011

Stephen M. Beney of Bereskin & Parr LLP will be speaking on PatentsWorldwide: Global Systems on July 27 at 8:30 a.m.

Brigitte Chan & François Larose of Bereskin & Parr LLP will be workshop leaders in the Understanding Trade-marks course on Responding to Examiner’s Reports from August 1-5.

Jonathan G. Colombo of Bereskin & Parr LLP will be speaking on:

  • Navigating Opposition Proceedings and Preparation of Evidence on August 8 at 8:40 a.m.
  • Review of Section 45 Proceedings – Proving Use or Non-Use of a Trade-mark on August 8 at 1:30 p.m.
  • Workshop on Opposition Proceedings on August 8 at 3:45 p.m.

Terry Edwards of Bereskin & Parr LLP is the Assistant Program Director of the Managing Trade-mark Disputes course.

For more information go to: http://www.mcgill.ca

Event Attendance

139th Annual Meeting

International Trademark Association (INTA)
Barcelona, ES
May 20 - 24, 2017

Daniel Bereskin, Janice Bereskin, Jonathan Burkinshaw, Mina Chana, Cynthia Rowden, Susan Keri, Meghan Dillon, Brigitte Chan, Terry Edwards, Sharyn Costin, François Larose, Lloyd Sarginson, Jennifer McKenzie, Jonathan Colombo, Scott MacKendrick, Mark Robbins and Catherine Lovrics will be attending the 139th INTA Annual Meeting.

For more information about meeting, please click here.

MARQUES 30th Annual Conference

MARQUES
Alicante, Spain
September 20 - 23, 2016

Brigitte Chan will be attending MARQUES 30th Annual Meeting in Alicante, Spain.

The theme of this year's conference BRANDS versus TRADEMARKS - TRADEMARKS versus BRANDS. This theme will be addressed through various sessions focusing on legal issues and the challenges of brands vs trademarks.

For more information on this conference, please click here.

International Trademark Association (INTA)

138th Annual Meeting
Orlando, Florida
May 21 - 25, 2016

Dan Bereskin, Lloyd Sarginson, Cynthia Rowden, Susan Keri, Scott MacKendrick, Terry Edwards, Jonathan Colombo, Jennifer McKenzie, Victor Krichker, Adam Bobker, Janice Bereskin, Brigitte Chan, François Larose, Mina Chana, Sharyn Costin, Meghan Dillon and Jonathan Burkinshaw will be attending the 138th INTA Annual Meeting in Orlando.

Speaking Engagements:

Saturday, May 21 2016
2:15pm - 3:15pm
Scott MacKendrick will be speaking the course International Trademark Law and Practice as part of the North American Panel

Sunday, May 22 2016
12pm - 2pm
Daniel Bereskin will be co-chairing the table topic session Trademark Confusion and Heuristics

2pm - 3:15pm
Daniel Bereskin will be speaking at the mock mediation session called Mediation Live! A Real-Life Mediation Experience

Monday, May 23 2016
8am - 10am
François Larose will be chairing the table topic session Lost in Translation: The Impact of Language Laws on Trademarks

Tuesday, May 24 2016
8am - 10am
Cynthia Rowden will be moderating the session Should TM registrations ever be granted or enforced if there is no use?

International Trademark Association (INTA)

137th Annual Meeting
San Diego, CA
May 2 - 6, 2015

Dan Bereskin, Lloyd Sarginson, Cynthia Rowden, Robert Storey, Susan Keri, Scott MacKendrick, Terry Edwards, Jonathan Colombo, Mark Robbins, Jennifer McKenzie, Victor Krichker, Janice Bereskin, Brigitte Chan, François Larose, Sharyn Costin, Meghan Dillon, Jonathan Burkinshaw and Lindsey Robinson will be attending the 137th INTA Annual Meeting in San Diego.

On Saturday, May 2, Scott MacKendrick will be on the North American panel at 11:15am as part of the “Course on International Trademark Law and Practice”. The course is designed to provide a comparative analysis of trademark law and practice in countries around the world. He will also be a moderating the table topic “Madrid Protocol, Nice Agreement, Singapore Treaty and Use: Major Changes to Canada's Trademark Regime” on Sunday, May 3 at noon.

Janice Bereskin will be speaking on Sunday, May 3 between 2pm and 3:15pm with other INTA leaders as part of the informative and interactive session "CSU50 INTA Committee Selection, Membership and Involvement: Behind the Curtain". The session will discuss the diverse and valuable benefits associated with active involvement in INTA.

To learn more about INTA and for further information about the meeting, please click here.

MARQUES

Spring Team Meeting
Alicante, Spain
March 5 - 6, 2015

Brigitte Chan will be attending this meeting.

To learn more about MARQUES and for further information about the meeting, please click here.

MARQUES

Spring Meeting 2014
Amsterdam, The Netherlands
March 6 - 7, 2014

Brigitte Chan will be attending this Conference.

For more information please click here.

International Trademark Association (INTA)

135th Annual Meeting
Dallas, TX
May 4 - 8, 2013

Dan Bereskin, Lloyd Sarginson, Cynthia Rowden, Robert Storey, Susan Keri, Scott MacKendrick, Terry Edwards, Jonathan Colombo, Jennifer McKenzie, Victor Krichker, Janice Bereskin, Brigitte Chan, François Larose, Mina ChanaSharyn Costin, Meghan Dillon, and Jonathan Burkinshaw are scheduled to attend.  

For more information go to: www.inta.org

Accolades

  • Expert Guides: Women in Business Law 2016
  • Expert Guides: Trade Mark 2016
  • Expert Guides: Women in Business Law 2015
  • Expert Guides: Guide to the World's Leading Women in Business Law 2014
  • Expert Guides: Guide to the World’s Leading Trade Mark Law Practitioners 2014

Professional Memberships

Association des Praticiens du Droit des Marques et des Modèles (APRAM)
Association Littéraire & Artistique Internationale (ALAI)
Intellectual Property Institute of Canada (IPIC), Fellow
International Association for the Protection of Intellectual Property (AIPPI)
International Trademark Association (INTA)

News

  • Québec Government’s Response to Ensure that French Appears on Commercial Signage
  • Special Alert: Important news for trademark owners doing business in Quebec: Appeal dismissed on Quebec signage issue

Media Coverage

  • Brigitte Chan was interviewed on CJAD 800 AM News Talk Radio and quoted in their online article “OQLF initiative may not be legal” on April 5, 2012. The news pieces focused on the Office québécois de la langue française’s launch of a campaign, telling businesses that they must add a French descriptor to their trademarked, English, commercial signs.

Litigation Cases

Cofely Services S.A. v. Asima Realty Ltd.
Represented Cofely Services in an appeal of a decision of the Registrar of Trade-marks expunging AXIMA and AXIMA & Design trademarks.
Counsel: Brigitte Chan
(2013), (T-1149-13)
Imperial Tobacco Canada Limited ats Philip Morris Products S.A.
Representing Imperial Tobacco in an appeal to the Federal Court by Philip Morris from an opposition decision in respect of Philip Morris’ application for the FLIP-TOP trademark.
Counsel: Brigitte Chan
(2013), (T-2066-13)
Sports Network Inc. et al. v. Jean Gagne et al.
Prosecuted a French language action for infringement of the trademark RDS for the production, broadcasting and distribution of television programs by a sports bar operating under the name RDS ZONE without the permission of the Sports Network.
Counsel: Adam Bobker and Brigitte Chan
(Reported decisions: 2009 CF 308)
(2007), (T-527-07)
Laboratoires Quinton Internationale S.L. v. Biss
Acting for Laboratoires Quinton, a European manufacturer of QUINTON therapeutic marine plasma, in a French language action to expunge a Canadian trademark registration for QUINTON held by a former Canadian distributor of QUINTON products. The trial of this action is scheduled for April 2016.
Counsel: Adam Bobker, Brigitte Chan and François Larose
(Reported decisions: 2010 FC 358)
(2006), (T-1554-06)
Asterix Security Hardware International Inc. ats. Les Editions Albert Rene S.A.R.L.
Defended Asterix Security Hardware in an action for copyright infringement and trademark infringement relating to the trademark ASTERIX and the copyright-protected character name Asterix.
Counsel: Robert MacFarlane and Brigitte Chan
(2001), (T-1988-01)
Illinois Tool Works Inc. et al. v. Cobra Anchors Co. Ltd.
Acted for ITW in an action and appeal for patent infringement relating to wall anchors.
Counsel: Robert MacFarlane, Andrew McIntosh and Brigitte Chan
(Reported decisions: 2002 FCT 829, 2003 FCA 358)
(1996), (T-2313-96; A-522-02)
 

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