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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

2021 Year in Review: Key Trademark Cases in Canada

Article
January 18, 2022

2021 Year in Review: Key Trademark Cases in Canada

Trademark bad faith considered by the Federal Court

Article
January 6, 2022

Trademark bad faith considered by the Federal Court

A Way with Words: Strategies for Reducing the Likelihood of an Objection to Description of Goods and Services in Canadian Trademark Applications

Article
November 16, 2021

A Way with Words: Strategies for Reducing the Likelihood of an Objection to Description of Goods...

One Person’s Trash is Another Person’s Treasure Part II: The Right to Repair Movement in the United States

Article
September 15, 2021

One Person’s Trash is Another Person’s Treasure Part II: The Right to Repair Movement in the United...

Exhaustion Doesn’t Apply: Repurposing of Original Branded Parts Leads to Findings of Infringement, Passing Off and Depreciation of Goodwill

Article
July 12, 2021

Exhaustion Doesn’t Apply: Repurposing of Original Branded Parts Leads to Findings of Infringement,...

Impacts of Artificial Intelligence on Branding

Article
May 31, 2021

Impacts of Artificial Intelligence on Branding

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Practice Group Leader

Janice Bereskin Janice Bereskin
B.A.
Partner
416.957.1601  email Janice Bereskin
All Practice Group Members

  

Webinars

IP Best Practices for Regional Innovation Centres
Spark Centre
October 16, 2020, Online
Understanding and Protecting Your Intellectual Property
George Brown
August 18, 2020, Online

Speaking Engagements

Make Your Mark: Trademark and Branding Essentials for Entrepreneurs
Northern Ontario Angels (NOA)
January 27, 2022, Online
IP Masterclass: Build Your Company’s Strategic IP Plan
Spark Centre
January 20, 2022, Online
IP Workshop - Trademarks 101
Spark Centre
June 24, 2021, Online