Daniel R. Bereskin, Q.C.

Partner

Toronto, 416.957.1673

Practice Group(s)

Trademarks
Litigation
Licensing & Transactions
Copyright & Digital Media

Education

B.Sc. (Eng. Phys.), University of Saskatchewan, 1962
LL.B, University of Saskatchewan, 1962

Qualifications

Admitted to the Ontario Bar, 1964
Registered Canadian Patent Agent, 1964
Registered United States Patent Agent, 1965
Registered Canadian Trademark Agent, 1964
Appointed Queen’s Counsel, 1982
Professional Engineer (P.Eng.)

Professional Memberships

Association of European Trade Mark Owners (MARQUES)
Copyright Society of the USA (CSUSA)
European Communities Trade Mark Association (ECTA)
Institute of Trademark Attorneys (ITMA)
Intellectual Property Institute of Canada (IPIC), Fellow
International Association for the Protection of Intellectual Property (AIPPI)
International Trademark Association (INTA)
Toronto Intellectual Property Group (TIPG)

Daniel R. Bereskin, Q.C.

B.Sc. (Eng. Phys.), LL.B.

Dan Bereskin is a founding partner of Bereskin & Parr LLP.

Dan provides strategic planning and business advice relating to all aspects of intellectual property law.

Dan has served as legal counsel to the International Trademark Association (INTA), and as a member of the INTA Board of Directors. Dan is a recipient of the INTA President's Award for his long-standing service to INTA. He was named “Trademarks Lawyer of the Year” world-wide for eight consecutive years by Who’s Who Legal, received a Lifetime Achievement award by Worldleaders International IP Awards in 2007, and is the recipient of a Lexpert Zenith Award in 2012.  Dan was elected to the IP Hall of Fame in 2014.

Dan is the intellectual property judge of The Private Court, which provides mediation and arbitration services, and he is a mediator/arbitrator with ADR Chambers. He has also served as an Advisor to the American Law Institute on Transnational IP Dispute Jurisdiction, Choice of Law, and Judgment issues.

Dan is the author of more than fifty papers and articles on various intellectual property law subjects. He is the editor/author of International Trademark Dilution, currently in its third edition, a treatise published annually by West Publishing and Westlaw.  He wrote the Canada chapter in Famous and Well-Known Marks by Frederick Mostert published by INTA, and is the author of the trademarks chapter in Intellectual Property Disputes: Resolutions & Remedies by Ronald Dimock.

Bereskin & Parr LLP
Subscribe Twitter Linked-in RSS

Our People







International Trademark Dilution
by Daniel R. Bereskin, QC

 Bookmark this page  PDF this page  Print this page

Our People

Daniel R. Bereskin, Q.C.

Daniel R. Bereskin, Q.C.

B.Sc. (Eng. Phys.), LL.B.

Partner
Toronto      Ph: 416.957.1673

Practice Group(s)
Trademarks
Litigation
Licensing & Transactions
Copyright & Digital Media

Education
B.Sc. (Eng. Phys.), University of Saskatchewan, 1962
LL.B, University of Saskatchewan, 1962

Qualifications

Admitted to the Ontario Bar, 1964
Registered Canadian Patent Agent, 1964
Registered United States Patent Agent, 1965
Registered Canadian Trademark Agent, 1964
Appointed Queen’s Counsel, 1982
Professional Engineer (P.Eng.)

Dan Bereskin is a founding partner of Bereskin & Parr LLP.

Dan provides strategic planning and business advice relating to all aspects of intellectual property law.

Dan has served as legal counsel to the International Trademark Association (INTA), and as a member of the INTA Board of Directors. Dan is a recipient of the INTA President's Award for his long-standing service to INTA. He was named “Trademarks Lawyer of the Year” world-wide for eight consecutive years by Who’s Who Legal, received a Lifetime Achievement award by Worldleaders International IP Awards in 2007, and is the recipient of a Lexpert Zenith Award in 2012.  Dan was elected to the IP Hall of Fame in 2014.

Dan is the intellectual property judge of The Private Court, which provides mediation and arbitration services, and he is a mediator/arbitrator with ADR Chambers. He has also served as an Advisor to the American Law Institute on Transnational IP Dispute Jurisdiction, Choice of Law, and Judgment issues.

Dan is the author of more than fifty papers and articles on various intellectual property law subjects. He is the editor/author of International Trademark Dilution, currently in its third edition, a treatise published annually by West Publishing and Westlaw.  He wrote the Canada chapter in Famous and Well-Known Marks by Frederick Mostert published by INTA, and is the author of the trademarks chapter in Intellectual Property Disputes: Resolutions & Remedies by Ronald Dimock.

Articles

Initial Interest Confusion: Vancouver Community College v. Vancouver Career College
Dan Bereskin, Q.C.
February 6, 2017
Download PDF
Will Changes to Canada's Trademark Laws Simplify or Complicate Selection and Protection of New Brands?
Dan Bereskin, Q.C. and Cynthia Rowden
February 5, 2016
Download PDF
Canada's Ill-Conceived New “Trademark” Law: A Venture into Constitutional Quicksand
Dan Bereskin, Q.C.
October 23, 2014
Download PDF
Amendments to the Canadian Trademarks Act – 20 Points You Need to Know (The Bill is Just too Big for a Top 10 List!)
Dan Bereskin, Q.C. and Cynthia Rowden and Scott MacKendrick
June 19, 2014
Download PDF
Canada’s New Trademark Regime – Impact on Renewals, Allowance and Classification
Dan Bereskin, Q.C. and Cynthia Rowden and Scott MacKendrick
May 21, 2014
Download PDF
The International Comparative Guide to: Trade Marks 2014 - Canada Chapter
Dan Bereskin, Q.C. and Cynthia Rowden
May 1, 2014
Download PDF
Bill C-31: What are the Practical Issues of Trademark Rights in a Non-Use Regime?
Dan Bereskin, Q.C. and Cynthia Rowden and Scott MacKendrick
April 9, 2014
Download PDF
Bill C-31 and the proposed Trademarks Act: Is it Ultra Vires?
Dan Bereskin, Q.C.
April 4, 2014
Download PDF
Sweeping Changes to Canadian Trade-marks Act: At What Cost to Trademark Owners?
Dan Bereskin, Q.C. and Cynthia Rowden and Scott MacKendrick
April 1, 2014
Download PDF
Molson v. Miller: Termination of License Enjoined Pending Trial
Dan Bereskin, Q.C.
July 5, 2013
Download PDF
The International Comparative Legal Guide to: Trade Marks 2013 Edition (Canada Chapter)
Dan Bereskin, Q.C. and Cynthia Rowden
May 17, 2013
Download PDF
Top Ten Things for Trademark Owners to Know about Canada’s New Combating Counterfeit Products Act
Dan Bereskin, Q.C. and Cynthia Rowden
April 17, 2013
Download PDF
International Trademark Dilution, 2013 ed., a New Publication, Daniel R. Bereskin, Q.C. editor/author
April 17, 2013
Download PDF
Anti-dilution/Anti-free-riding Laws in the Unites States, Canada, and the EU: Bridges too Far?
Dan Bereskin, Q.C.
January 9, 2012
Download PDF

Speaking Engagements

2016 IT.CAN 20th Annual Conference

Canadian IT Law Association
Montréal, QC
October 24 - 25, 2016

Join Dan Bereskin, Victor Krichker, and Jill Jarvis-Tonus at the 2016 IT.CAN 20th Annual Conference from October 24 to 25.

On Tuesday, October 25 from 9:00 - 10:30 AM Dan Bereskin will be speaking on Trademarks during the International IP Updates for Technology Practice panel. 

The main object of this conference is to provide succinct and topical updates on developments in various areas of IT law as they relate to Canada.

The conference will take place at the Marriott Chateau Champlain Hotel in Montréal, QC.

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?

Global Intellectual Property Convention

7th GIPC 2015
Mumbai, India
January 15 - 17, 2015

Dan Bereskin and Bhupinder Randhawa will be speaking at the 7th Global Intellectual Property Convention 2015. Bereskin & Parr will be sponsoring the event.

Dan will be speaking on January 15th from on January 15th from 11:00 a.m. to 12:30 p.m., based on the theme “Power of IP: Gateway to Growth”, and Bhupinder will be speaking on January 16th from 4:00 p.m. to 6:00 p.m. on Technical Session X: Patentability in “High-Tech Fields – A Comparative Approach”.

GIPC is an annual meeting platform for Board-level IP managers, IP regulators and policy makers, as well as IP experts, litigators, investors and their advisers in a dialogue designed to discuss best practices and solutions to enhance IP management strategies.

For further information please click here.

INTA Annual Meeting

Roundtable Event; International Trademark Dilution
Hong Kong
May 14, 2014

Dan Bereskin will be chairing a Table Topic discussion group on the subject of International Trademark Dilution during the International Trademark Association (INTA) Annual Meeting in Hong Kong on Wednesday, May 14, 2014.

An active member of INTA, Dan has served as legal counsel and as a member of its Board of Directors. In 2004, Dan received the INTA President’s Award for his long-standing service to INTA. 

This marks INTA's 136th year in hosting the Annual Meeting, which focuses on education and networking and offers over 200 moderated discussions on a wide variety of timely and important issues.

Stellenbosch Institute for Advanced Study (STIAS), Faculty of Law, Stellenbosch University

International Intellectual Property Law Conference
Stellenbosch, South Africa
September 1 - 2, 2011

Daniel R. Bereskin of Bereskin & Parr LLP will be speaking at this event on Trade Mark Dilution and Freedom of Speech in Canada on September 2 at 11:40 a.m.

For more information go to: www.sun.ac.za/ipconference

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, Catherine Lovrics and Mark Robbins will be attending the 139th INTA Annual Meeting.

For more information about meeting, please click here.

INTA Leadership Meeting

International Trademark Association (INTA)
Hollywood, FL
November 15 - 18, 2016

Daniel R. Bereskin, Cynthia Rowden, Susan Keri, Scott MacKendrick, Jonathan Colombo, Mark Robbins, Janice Bereskin, Mina Chana and Jonathan Burkinshaw will be attending the INTA Leadership Meeting in Hollywood, FL.

Registrants of this invitation only event will have many opportunities to network with fellow volunteers at various receptions and to work with committees to further the Association's objectives and goals.

For more information on this meeting, please click here.

International Trademark Association

2015 Leadership Meeting
Panama City, Panama
November 17 - 20, 2015

Dan Bereskin, Cynthia Rowden, Susan Keri, Scott MacKendrick, Mark Robbins, Janice Bereskin and François Larose will be attending the 2015 Leadership Meeting.

To learn more about the event, please click here.

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.

AIPPI

World Intellectual Property Congress 2014
Toronto, ON
September 14 - 17, 2014

Bereskin & Parr is proud to be the 2014 lanyard sponsor of the AIPPI World Intellectual Property Congress and welcomes all congress attendees to Toronto.

Philip Mendes da Costa is the Chairperson for the AIPPI Organizing Committee and has been very involved in the overall congress organization.

Don MacOdrum, Jill Tonus, Ian McMillan, Noel Courage, David St-Martin and Kevin Shipley will be attending, and our 2014-2015 articling students, Maria Wei, Stephen Lam, Pasan Hapuarachchi, Teresa MacLean and Evan Reinblatt will be volunteers at the congress.

On Monday, September 15th from 2:00 p.m. to 5:30 p.m. Daniel Bereskin will be speaking on "Mock trial – International IP Arbitration".

The International Association for the Protection of Intellectual Property (AIPPI) is an international organization dedicated to the development and improvement of intellectual property. Further information about the event can be found here.

CIPCC

6th China IP Counsel Congress 2014
Shenzhen, China
May 15 - 16, 2014

Robert MacFarlane and Daniel Bereskin will be attending the 6th China IP Counsel Congress 2014, which is aimed at creating the best platform for China’s IP professionals and to promote the development of IP in the science and technology industries in Shenzhen and South China. Daniel Bereskin will also be attending the event.

Bob will be a speaker at the event, discussing the controversial Canadian doctrines of "Promise of the Patent" and "Sound Prediction", which have led to findings of patent invalidity in dozens of cases in the Federal Court of Canada. This will include: the Court's reasons for these doctrines, their scope and main characteristics, and recommendations to avoid their pitfalls when filing in patent applications in Canada.

The 6th China IP Counsel Congress 2014 will be hosted by JFPS Group and partnered with Shenzhen Institute of Standards and Technology. It is recognized as the most influential and professional event with latest information and compelling business opportunities for the IP practitioners in China.

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

  • 2017 MIP Lifetime Achievement Award
  • Chambers Global 2017
  • World IP Review: Leaders 2017
  • Who’s Who Legal Patents 2017
  • World Trademark Review 1000 2017
  • Lexpert Guide to the Leading U.S./Canada Cross-Border Corporate Lawyers in Canada
  • Chambers Canada 2017
  • Best Lawyers in Canada 2017
  • 2016 Canadian Legal Lexpert Directory
  • Who’s Who Legal: Trademarks 2016
  • Expert Guides: Trade Mark 2016
  • Who’s Who Legal: Patents 2016
  • Chambers Global: The World's Leading Lawyers for Business 2016
  • The Legal 500 Canada 2016
  • The 2016 Lexpert/American Lawyer Guide to the Leading 500 Lawyers in Canada
  • World Trademark Review 1000 - The World's Leading Trademark Professionals 2016
  • Who's Who Legal Canada 2015
  • Chambers Canada Guide 2016
  • Best Lawyers in Canada 2016
  • 2015 Canadian Legal Lexpert Directory
  • Who's Who Legal: Trademarks 2015
  • Life Membership - Law Society of Upper Canada
  • Managing Intellectual Property’s 2015 IP Stars Handbook: Trade mark and Copyright
  • Who’s Who Legal 100 2015
  • World Trademark Review 1000 – The World’s Leading Trademark Professionals 2015
  • The 2015 Lexpert/American Lawyer Guide to the Leading 500 Lawyers in Canada
  • The Legal 500 Canada 2015
  • Best Lawyers in Canada 2015
  • The International Who’s Who of Trademark Lawyers 2014
  • Awarded Intellectual Asset Management's (IAM) IP Hall of Fame
  • Expert Guides: Guide to the World’s Leading Trade Mark Law Practitioners 2014
  • The 2014 Canadian Legal Lexpert Directory
  • Managing Intellectual Property’s IP Stars Handbook 2014: Trade mark and Copyright
  • Chambers Global 2014
  • World Trademark Review 1000: The World's Leading Trademark Professionals 2014
  • Lexpert/American Lawyer Guide to the Leading 500 Lawyers in Canada 2014
  • Canadian Lawyer 2014-15
  • Who's Who Legal: Canada 2013
  • Best Lawyers in Canada 2014
  • Expert Guides: Best of the Best 2013
  • The International Who’s Who of Trademark Lawyers 2013
  • The Canadian Legal Lexpert Directory 2013
  • Who’s Who Legal's Trademark Lawyer of the Year 2013 for the eighth consecutive year
  • The International Who’s Who of Patent Lawyers 2013
  • Chambers Global: The World’s Leading Lawyers for Business 2013
  • World Trademark Review 1000: The World's Leading Trademark Professionals 2013
  • World Trademark Review 1000: The World's Leading Trademark Professionals 2013 - Luminaries Category
  • Lexpert/American Lawyer Guide to the Leading 500 Lawyers in Canada 2013
  • Winner of a Lexpert Zenith Award for “Leadership Through Change”
  • The International Who’s Who of Trademark Lawyers 2012
  • The Canadian Legal Lexpert Directory 2012
  • Who’s Who Legal's Trademark Lawyer of the Year for the seventh consecutive year
  • Expert Guides: Guide to the World's Leading Trade Mark Law Practitioners 2012
  • The International Who’s Who of Patent Lawyers 2012
  • World Trademark Review 1000: The World's Leading Trademark Professionals 2012
  • Chambers Global: The World’s Leading Lawyers for Business 2012
  • Lexpert/American Lawyer Guide to the Leading 500 Lawyers in Canada 2012
  • Who’s Who Legal: Canada 2011
  • The International Who’s Who of Trademark Lawyers 2011
  • Named the Best Lawyers’ Toronto Intellectual Property Law, Lawyer of the Year
  • Named one of Best Lawyers in Canada 2012
  • PLC Cross-border IP in Business Transactions Handbook 2011/2012
  • Expert Guides: The Best of the Best 2011
  • Lexpert/American Lawyer Guide to the Leading 500 Lawyers in Canada 2011
  • Best Lawyers in Canada 2011
  • Who’s Who Legal: Canada 2010
  • Who’s Who Legal's Trademark Lawyer of the Year for the fifth consecutive year, 2010
  • The International Who’s Who of Patent Lawyers 2010
  • Managing Intellectual Property (MIP) 2010
  • Chambers Global: The World’s Leading Lawyers for Business 2010
  • Expert Guides: Guide to the World's Leading Trade Mark Law Practitioners 2009
  • Lexpert/American Lawyer Guide to the Leading 500 Lawyers in Canada 2010
  • The International Who's Who of Trademark Lawyers 2009

Professional Memberships

Association of European Trade Mark Owners (MARQUES)
Copyright Society of the USA (CSUSA)
European Communities Trade Mark Association (ECTA)
Institute of Trademark Attorneys (ITMA)
Intellectual Property Institute of Canada (IPIC), Fellow
International Association for the Protection of Intellectual Property (AIPPI)
International Trademark Association (INTA)
Toronto Intellectual Property Group (TIPG)

News

  • International Trademark Dilution, 2013 ed., a New Publication, Daniel R. Bereskin, Q.C. editor/author

Media Coverage

  • Dan Bereskin quoted in the Lexpert article “Trademarks: Trolls at the Gate”
  • Dan Bereskin quoted in Managing Intellectual Property’s article “The Mad Men of IP”
  • Dan Bereskin is Quoted in Corporate Counsel Magazine
  • Dan Bereskin on “Canada’s Trademark Revolt”
  • Dan Bereskin is Quoted on Macdonald-Laurier Institute’s Inside Policy
  • Legal Post Looks to Dan Bereskin for His Views on Bill C-31
  • Daniel Bereskin was quoted in the article “The Web’s New Domain” published online on July 22, 2011, in Women’s Wear Daily.
  • Daniel Bereskin was quoted in the article “SCC gives test for trade-mark confusion” which was published in the June 10, 2011, edition of The Lawyers Weekly.
  • Daniel Bereskin was quoted in “SCC to consider rare trademark case” which was published in the January 31, 2011, edition of the Law Times.
  • Daniel Bereskin was quoted in the article “Top court to clarify test for confusingly similar trade-marks” in the January 21, 2011, edition of The Lawyers Weekly.

Litigation Cases

Masterpiece Inc. v. Alavida Lifestyles Inc.
Appeared on behalf of the International Trademark Association as intervener at the Supreme Court of Canada in an expungement proceeding relating to the trade mark MASTERPIECE LIVING for retirement residences.
Counsel: Dan Bereskin and Mark Robbins
(Reported decisions: 2011 SCC 27)
(2011), (SCC No. 33459)
Enterprise Rent-A-Car et al. v. Singer et al.
Represented Enterprise Rent-A-Car in passing off actions against a Canadian company that had misappropriated the goodwill in Canada attached to the ENTERPRISE trade name and trademark. The trial judge’s decision to enjoin the defendant was upheld on appeal by the Federal Court of Appeal.
Counsel: Dan Bereskin, Mike Charles, and Mark Robbins
(Reported decisions: 1998 CanLII 7405 (FCA))
(1993), (T-1078-93, T-397-93;)
 

About Us

Overview
People Clients Diversity and Inclusion

Accolades
Archives

Offices

Hours of Operation

Our People

All

Refine search by
Type Office Practice School

Services

Patents
Automotive Chemical Cleantech Electrical & Computer Technology Life Sciences Mechanical & Industrial Processes Medical Devices Nanotechnology Oil & Gas Plant Breeders’ Rights in Canada

Industrial Designs

Trademarks

Litigation

Financial Technology

IP Management & Strategic Counselling

Licensing & Transactions

Regulatory, Advertising & Marketing

Copyright & Digital Media

News & Publications

Newsroom
Archive

Articles
Article Archives

Newsletters

Media & Press

Litigation Cases
Patent Trademark Copyright

Subscribe

Webinars

Students

Overview

Articling Program

Summer Program

Recruitment
Articling Recruitment Second Year Recruitment First Year Recruitment Career Fairs

B&P Your University

Current Students

University Prizes

How to Apply

Events

Events Calendar

Student Events Calendar

Offices

Careers

Support Staff

Professionals

Students

Languages

English

Français

中国语

日本語

Search