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

Infringement, Expungement, No Damages—Oh My!

Article
September 17, 2019

Infringement, Expungement, No Damages—Oh My!

You Need More than Reservation Services to Reserve and Preserve Your Rights in Canada

Article
August 21, 2019

You Need More than Reservation Services to Reserve and Preserve Your Rights in Canada

Canada’s New Trademark Regime: Cost-Saving Tips and Recommendations

Article
August 14, 2019

Canada’s New Trademark Regime: Cost-Saving Tips and Recommendations

When Parody Misses the Mark

Article
July 29, 2019

When Parody Misses the Mark

© that ™! Why it’s Important to Confirm You Own Copyright in Your Logo

Article
July 17, 2019

© that ™! Why it’s Important to Confirm You Own Copyright in Your Logo

An Overview Concerning Canadian Trademark Reform

Article
June 24, 2019

An Overview Concerning Canadian Trademark Reform

view more

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

The Dark Web and Blockchain for Trademark Counsel
American Bar Association (ABA)
September 10, 2019, Webinar
Patent & Trademark Case Law Review Series
Intellectual Property Institute of Canada (IPIC)
April 1, 2019, Webinar

Speaking Engagements

IP Seminar: Protecting Cannabis and Artificial Intelligence (AI)
Bereskin & Parr LLP
September 26, 2019, Montreal, QC
Borders: International, National and Local Cooperation to Keep the Flow of Counterfeits Out 
Kestenberg Siegal Lipkus LLP (KSL)
September 18, 2019, Toronto, ON
Young Practitioners & Trademark Administrators Roundtable and Reception
INTA: International Trademark Association
September 12, 2019, Toronto, ON