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

Getting Maximum IP From R&D

Article
July 2, 2020

Getting Maximum IP From R&D

JAVEX vs. JAVELO – Federal Court of Appeal applies Vavilov to first Trademark Opposition Appeal

Article
June 2, 2020

JAVEX vs. JAVELO – Federal Court of Appeal applies Vavilov to first Trademark Opposition Appeal

USPTO Initiative to Facilitate Getting COVID-19 Technologies to Market

Article
May 8, 2020

USPTO Initiative to Facilitate Getting COVID-19 Technologies to Market

Intellectual Property (IP) Best Practices in The Time of COVID-19

Article
May 7, 2020

Intellectual Property (IP) Best Practices in The Time of COVID-19

Mask Crusaders – Navigating Rampant False Marking, Counterfeiting and Fraud in the Medical Protective Equipment Marketplace (COVID-19)

Article
April 16, 2020

Mask Crusaders – Navigating Rampant False Marking, Counterfeiting and Fraud in the Medical Protective...

Impact of COVID-19 on Canadian Trademark Deadlines

Article
March 31, 2020

Impact of COVID-19 on Canadian Trademark Deadlines

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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

2020 IPIC/McGill Summer IP Courses
McGill School of Continuing Studies
July 6 - 22, 2020, Online
Navigating Trademark Trends When Change is the Only Constant
Bereskin & Parr LLP
June 3, 2020, Online
TIPG Career Series Part 3: Trademarks
Toronto Intellectual Property Group (TIPG)
June 1, 2020, Online

Speaking Engagements

Founder Fundamentals - IP, Trademarks & Patents
YSpace, York University
May 7, 2020, Markham, ON
Patent & Trademark Case Law Review Series
Intellectual Property Institute of Canada (IPIC)
March 6, 2020, Online