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  1. Intellectual property
  2. Leading individuals
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Who Represents Who

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A force in Canada and beyond, Gowling WLG’s premier intellectual property team provides specialist advice across all key pillars of IP protection, enforcement and commercialization. From prosecution to complex high-stakes litigation, the group advises major multinational brands, including Starbucks, Twitter and Bayer on strategic trademark and patent matters. The group is co-led by Robert MacDonald, who is recognized for his comprehensive trademark practice and manages the Canadian portfolios of several large multinationals. Contacts in the contentious space include Anthony Creber and Christopher Van Barr, who has first-class experience in patent, trademark and copyright litigation. On the more junior end, Michael Crichton leads the IP litigation and strategy group, and Vancouver-based Scott Foster focuses on contentious IP matters. Associate Nelson Godfrey is also recommended in Vancouver. Named lawyers are based in Ottawa unless otherwise stated.

Practice head(s):Robert MacDonald; Michael Crichton

Other key lawyers:Anthony Creber; Scott Foster; Nelson Godfrey; Christopher Van Barr

Testimonials

Gowling WLG’s attention to detail and client care goes beyond any other firm. We’re so comfortable with the relationship that we have developed we almost always proceed with their recommendation, which saves us a lot of time and energy that we can focus on our core business operations.’

For every other firm that we’ve worked with, there has always been a push and pull, with Gowlings it’s been smooth from our first conversation.’

Gowlings stands out for its great historical knowledge and its passion for clients’ brands.’

A highly responsive, available team comprised of thorough, diligent and detailed-oriented practitioners you hope to have on your side.’

Gowling WLG fields an incredibly efficient, high-quality IP team. Lawyers are highly strategic and exercise good judgement in how they spend my company’s money. I highly recommend it for IP litigation and prosecution work.’

Scott Foster is an excellent patent litigator; very strategic and highly efficient.’

Nelson Godfrey is tremendously knowledgeable, extremely professional and an excellent communicator.’

Key Clients

Starbucks

Twitter

Bayer

Takeda

Seedlings

Beam Suntory

Canadian Bank Note

Canadian Standards Association (CSA)

Horizon Pharma PLC

Eli Lilly & Company

Adidas

LG Electronics

United Airlines

Bombardier

CCM Hockey

Idenix Pharmaceuticals

Bristol-Myers Squibb Company

Work highlights

  • Represented Google LLC, Google Canada Corporation and Alphabet Inc. in patent litigation against Paid Search Engine Tools.
  • Represented Shire in patent enforcement litigation against Apotex for market exclusivity on Vyvanse.
  • Successfully defended a decision in the Federal Court of Appeal relating to damages awarded to Eli Lilly for infringement of eight process patents.
  • Represented Bayer in six pharmaceutical patent cases.
  • Advised Bombardier on the sale of a piece of its business, including the IP transfer.

With five offices from coast to coast, Canada’s largest IP boutique, Smart & Biggar, offers comprehensive national coverage of intellectual property law. The firm’s exclusive focus on IP translates to a broad service offering, which draws on specialist skill sets in advisory, transactional and contentious matters across the full range of patents, trademarks, industrial designs and copyrights. The firm has filed more patent and trademark applications than any Canadian firm, and is one of the top choices for complex litigation. Managing partner Steven Garland is a key contact in Ottawa, while trademark expert Mark Evans and pharmaceuticals litigator Gunars Gaikis are recommended in the Toronto office. Also recommended are Montreal-based litigator François Guay, and Mark Biernacki in Toronto.

Practice head(s):Steven Garland; François Guay; Daphne Lainson; Keltie Sim Luft; Elliott Simcoe; Kohji Suzuki; Jeremy Want

Other key lawyers:Mark Biernacki; Mark Evans; Gunars Gaikis

Testimonials

The most knowledgeable and progressive thinking IP firm in the country, with tremendous bench strength and depth. Lawyers have great availability, are top in their field and demonstrate very good relationship management skills.’

The Smart & Biggar team has remarkable depth and skill in all aspects of trial and appellate advocacy. Lawyers keep me well-informed, and deliver top value for our litigation dollars. The firm is, quite simply, best-in-class for high stakes IP litigation and counseling in Canada.’

The group is always keen to hear about developments in our business and to discuss how they can support us.’

Steven Garland, Jeremy Want, Colin Ingram and Dan Davies all deliver consistent, insightful work product in a cost-effective, timely, and efficient manner. Steven is an exceptionally gifted legal strategist and oral advocate: a pleasure to watch in court and the epitome of the "trusted counselor" out of court.’

Work highlights

  • Represented The Dow Chemical Company in contentious patent infringement proceedings against NOVA Chemicals Corporation.
  • Represented Cenovus Energy in a patent infringement action brought by Sikes in relation to a water treatment process for use in steam-assisted gravity drainage oil extraction.
  • Represented CNOOC against an appeal from an order of the Federal Court, which upheld and enforced a settlement agreement following a patent infringement action.

Highly regarded IP boutique Bereskin & Parr LLP provides specialist advice on all aspects of patent, trademark and copyright law, and IP litigation from its platforms in Toronto, Mississauga, Kitchener and Montreal. Founding partner Daniel Bereskin QC and counsel Cynthia Rowden stand out in particular for their expertise in trademark law. On the contentious side, Donald Cameron has niche expertise in technology-related matters. All named lawyers are based in Toronto. Micheline Gravelle acts as managing partner.

Practice head(s):Micheline Gravelle

Other key lawyers:Donald Cameron; Cynthia Rowden; Daniel Bereskin

DLA Piper (Canada) LLP’s internationally focused IP practice routinely links up with its worldwide network to reinforce and expand its relationships with multinational clients. Most notably, the team was part of a multi-jurisdictional dispute, coordinated by the firm’s Canadian arm, which saw Spin Master bring patent infringement actions against Mattel in Australia, Canada, Mexico, the UK and the US. The group also sets itself apart through its strong record in IP litigation, where it handles patent, trademark and copyright matters. Ronald Dimock is noted for his top-level litigation expertise, while Bruce Stratton has an emphasis on on patent disputes concerning computer-related technology. Alan Macek is also recommended.

Practice head(s):Chris Bennett; Bruce Stratton

Other key lawyers:Ronald Dimock; Alan Macek

Key Clients

Spin Master Corp.

BMW Group

Arctic Cat Inc.

Mountain Equipment Co-operative (“MEC”)

MIPS AB

Videotron

FGF Brands Inc.

Richter Gedeon Vegyeszeti Gyar RT (“Richter Gedeon”)

Tetra Tech Canada Inc.

Jempak Corporation

Petronas Energy Canada Ltd. (previously Progress Energy Canada Ltd.)

Edibles Arrangements LLC, Edible IP LLC, Edible International LLC

Work highlights

  • Represented Spin Master in bringing a patent infringement infringement action against Mattel concerning an expandable toy.
  • Represented BMW in a trademark infringement action concerning counterfeit automobile emblems.
  • Successfully represented Arctic Cat in defending a patent infringement action brought by Bombardier Recreational Products.
  • Advised Mountain Equipment Co-operative on all aspects of its global trademark portfolio, including clearance, registration, and enforcement.

The team at Goodmans regularly handles IP acquisition, commercialization and enforcement; however, the group is best known for its formidable patent litigation practice, which is pre-eminent in the generics space and has a close relationship with Canada’s largest generic drug producer, Apotex. Key figures include Harry Radomski, who leads the IP litigation group, Andrew Brodkin, who heads the firm’s wider litigation group. Dino Clarizio handles a mix of IP litigation and patent prosecution, while IP head Amalia Berg focuses on trademarks, copyright and confidential information.

Practice head(s):Harry Radomski; Andrew Brodkin; Amalia Berg

Other key lawyers:Dino Clarizio

Testimonials

The Goodmans IP team has developed a decades-long reputation at the top of the generic drug patent space, shaping patent law in Canada for a generation. They have a reputation as very strong counsel.

The team is a very collegial group; people rarely — if ever — leave the team, and they have fun practising. They make efforts to manage cases reasonably, so that they can focus their efforts on what’s most important.’

Goodmans’ high-quality legal work combined with outside-the-box thinking makes it a formidable opponent in any litigation context. They are one of the strongest, if not the strongest group acting on the generic side of the practice, with experienced advocates across all facets of the practice.’

Key Clients

Apotex Inc. / Apotex Pharmachem Inc.

Canadian Generic Pharmaceutical Association

Trudell Medical International

Wabtec Holding Corp.

Westinghouse Air Brake Technologies Corporation

MSA Technology, LLC

ToonBox Entertainment

Arterra Wines Canada

Give & Go Prepared Foods

SoulCycle Inc.

Mongohouse.com

Panacea Biotec

Work highlights

  • Defended Apotex in two patent infringement actions brought by Bristol-Myers Squibb under the recently revised Patented Medicines (Notice of Compliance) Regulations.
  • Defended Apotex in a patent case brought by Eli Lilly under the Patented Medicines (Notice of Compliance) Regulations.
  • Represented Mongohouse.com and Sheng Lan Mai in a complex copyright case.
  • Advised Evolution Technologies in a patent infringement case brought by Human Care Canada.

Best known for its strength in IP litigation, McCarthy Tétrault also handles a significant volume of trademark and patent prosecution, enforcement and acquisitions. In addition, the group routinely teams up with other departments in the firm to advise on commercial transactions and corporate support matters. Steven Mason heads the IP litigation practice and has experience in patent, copyright, regulatory and trade secrets disputes. Another key contact is litigator Barry Sookman, who focuses on IT, IP and privacy matters. On the non-contentious side, Alfred Macchione is a name to note for portfolio management. All named lawyers are based in Toronto.

Practice head(s):Alfred Macchione; Steven Mason

Other key lawyers:Barry Sookman

Key Clients

Akebia Therapeutics

National Football League

Merck & Co. Inc.

Allergan Inc. and Allergan, Inc.

Aux Sable Liquid Products

Sanofi

Bristol Myers Squibb

Cubist Pharmaceuticals LLC

Sunovion Pharmaceuticals Canada Inc.

MEG Energy

TELUS Communications Inc.

Canadian Retransmission Collective

Music Canada

Abbott Laboratories

Bell Canada

Zeltiq Aesthetics, Inc.

Astro Thermal Tec Ltd.

Otsuka Canada

Work highlights

  • Represented National Football League and Bell in a closely watched copyright case relating to simultaneous substitution of US and Canadian advertisements during the Super Bowl.
  • Successfully represented Aux Sable Liquid Products LP, Aux Sable Liquid Products Inc., and Aux Sable Canada Ltd. in bringing patent impeachment action against JL Energy.
  • Successfully represented Zeltiq in a trademark infringement and passing off action against a prominent local organization of clinics, New You.
  • Represented Allergan in bringing a patent action against Sandoz under the Patented Medicines (Notice of Compliance) Regulations.

Norton Rose Fulbright has a strong IP litigation practice, which is consistently engaged in all core areas of patents, copyrights, trademarks and industrial designs. Of late, Montreal-based IP practice head Judith Robinson has had particularly strong showings in patent and copyright litigation. The group is also strong in anti-counterfeiting matters, where Vancouver-based IP litigator Karen MacDonald is experienced in advising clients from the luxury goods and technology industries on anti-counterfeiting enforcement programs. The firm also handles non-contentious IP, including licensing, portfolio management and transactional support matters.

Practice head(s):Judith Robinson

Other key lawyers:Karen MacDonald

Testimonials

The team has decades of experience in the drafting and prosecution of patent applications in our field. The firm is focused on continuous improvement, being open to feedback and ready to implement changes where needed to meet our ongoing needs.’

This is a very well managed team, made up of lawyers who stay with the practice over the long term. Judith Robinson is one of the best trial lawyers in the country.’

Karen MacDonald is an excellent litigator and negotiator. She’s very knowledgeable in the luxury industry.’

Chris Wilson is a very trusted advisor. Knowledgeable, a treat to work with, and widely respected by the IP bar.

Karen MacDonald is very knowledgeable on the local laws and practices in Canada and provides helpful insight on the most practical ways to approach our cases. We have received great results as a result of her hard work and dedication.’

Key Clients

Bell Helicopter Textron Canada Limited

Eli Lilly

RBC

Innovative Medicines Canada (Rx&D)

Gilead Sciences  Inc.

GlaxoSmithKline Inc.

Bausch Health Companies Inc.

Servier Canada Inc. and Adir (Servier)

AstraZeneca

London Drugs Limited

Chanel Limited

TELUS Corporation

Electronic Arts Inc.

Accenture

Pfizer Inc.

Work highlights

  • Represented Genentech and Hoffmann-La Roche, as the plaintiffs, in the first four actions under the amended Patented Medicines (Notice of Compliance) Regulations.
  • Advised Human Care Canada in bringing a patent infringement action against Evolution Technologies.
  • Represented C.C. Jentsch Cellars in two trademark oppositions and a Federal Court passing off claim against a new winery,
  • Represented Wyeth in a patent impeachment action commenced by Merck Sharp & Dohme Corporation and Merck Canada.

Aitken Klee LLP is recognized for its specialist focus on representing pharmaceutical manufacturers in patent litigation. The Ottawa-based boutique is also a popular referral choice and enjoys strong relationships with major Canadian firms. Founding partner David Aitken ranks among the market’s leading patent litigators. Marcus Klee and Jonathan Stainsby are also experienced IP litigators. In addition to pharmaceuticals work, the firm also handles IP matters in the technology, natural resources and medical products sectors.

Bennett Jones LLP handles a mix of prosecution, litigation and transactional IP matters, with niche expertise in advising energy companies on their increasingly sophisticated IP requirements. Other industry strong suits include pharmaceuticals, agriculture and mining. Toronto-based Dominique Hussey, who is dual-qualified in Ontario and New York, heads the IP litigation practice and is equally adept in trademark and patent matters. Calgary-based Martin Kratz QC is noted for his expertise in IP law and technology.

Practice head(s):Stephen Burns; Dominique Hussey

Other key lawyers:Martin Kratz QC

Testimonials

Bennett Jones is terrific; we trust them with high-level matters.’

Dominique Hussey and Jeilah Chan are amazing. Smart, business-minded, responsive and reliable. My go-to team in Canada for all trademark matters.’

Key Clients

Amgen Inc.

ATCO Group / Canadian Utilities including subsidiaries: ATCO Electric, ATCO Gas, ATCO Pipelines, ATCO Australia, ATCO Energy Solutions, ATCO Power, ATCO Mexico, ATCO Structures & Logistics and ATCO Sustainable communities.

Aurobindo Pharma Inc.

Blue Ant Media Inc.

Canadian Natural Resources Ltd. (CNRL)

Coca-Cola

Consortium Book Distribution

Ferrero SpA

GoEasy

Guccio Gucci SpA

MEG Energy

Monsanto Canada Inc.

Square Inc.

TELUS Communications Company

Teva Canada/Teva Industries Ltd. 

TriWest Capital Partners

Work highlights

  • Represented Amgen in bringing a patent infringement action.
  • Represented Auro Pharma in navigating the Patent Act and Patented Medicines (Notice of Compliance) Regulations to get drugs to market.
  • Successfully represented Ferrero in multiple trademark opposition proceedings.
  • Advised financial services and mobile payments company Square on the strategy and prosecution of its patent, industrial design and trademark portfolio.

Borden Ladner Gervais LLP has an impressive record in IP portfolio management. Indeed, the firm is responsible for over 36,000 active patent applications and registrations, and over 39,000 trademark applications and registrations. On the contentious front, the firm handles a significant volume of patent and trademark infringement cases, and also houses a sizeable anti-piracy and anti-counterfeiting enforcement practice. Calgary-based Jason Howg leads the national group and specializes in patent law in the technology field. In Toronto, Justine Wiebe is noted for her robust trademark practice.

Practice head(s):Jason Howg

Other key lawyers:Justine Wiebe

Key Clients

Mobility View Incorporated

Millennium Pharmaceuticals, Inc.

Eli Lilly Canada Inc., Eli Lilly and Company, Lilly Del Caribe, Inc., Lilly S.A., and ICOS Corporation

Société des Produits Nestlé S.A.

Hollyweed North Cannabis Inc.

Supreme Cannabis Company Inc.

Work highlights

  • Advised Mobility View Incorporated on preparing and prosecuting patents in over 80 countries.
  • Represented Eli Lilly in several patent infringement actions.
  • Advised Hollyweed North Cannabis in coordinating and filing numerous trademarks for use in the cannabis industry.
  • Advised Supreme Cannabis Company on prosecution strategy and mark protection.

The service offering at¬†Osler, Hoskin & Harcourt LLP¬†is¬†weighted between portfolio management and litigation. In the management space,¬†the firm‚Äôs patent prosecution practice counts major multinationals such as Bayer Healthcare, Live Nation Worldwide and Fisher‚ÄďPrice among its key clients. On the litigation front, the firm is routinely engaged by leading players in the pharmaceuticals, life sciences and technology sectors. Ottawa-based Bradley White¬†leads¬†the IP litigation and patent prosecution practice, while seasoned litigator John Cotter¬†heads the highly regarded copyright group.

Practice head(s):Bradley White

Other key lawyers:John Cotter

Key Clients

Mylan Pharmaceuticals ULC

Samsung Bioepis Co., Ltd.

Celltrion Inc/TEVA Pharmaceuticals

Re:Sound Music Licensing Company

York University

Children’s Hospital of Eastern Ontario

Covidien LP

Dentsply Sirona

NBA Properties, Inc.

Green Centre Canada

Chartered Professional Accountants of Canada

Munchkin Inc.

Work highlights

  • Represented Mylan Pharmaceuticals in defending a patent infringement action brought by Eli Lilly.
  • Represented fish feed manufacturer, Skretting Canada, in a US patent dispute involving methods for raising fish.
  • Represented Shefa Franchises in successful trademark opposition proceedings.
  • Represented Re:Sound Music Licensing in copyright tariff enforcement litigation.

Highly regarded Quebec boutique Robic LLP exclusively handles IP law from its two bases in Montreal and Quebec City. The firm is particularly noted for its prolific trademark prosecution practice, and it is also a popular choice for patent filing, copyright matters and litigation. Montreal-based Bob Sotiriadis specializes in litigation, but also handles licensing and transactional IP. Laurent Carrière, also in Montreal, handles trademark and copyright matters.

Torys LLP is particularly impressive in IP litigation, with recent engagements from Edwards LifeSciences, Alcon, Sanofi Aventis, Nova Chemicals and Pfizer. On the non-contentious front, the group is well versed in licensing matters and IP transactions, and draws upon the wider firm’s full-service offering to advise on regulatory, privacy and taxation-related issues. Led by patent specialist Eileen McMahon, the Toronto-based group includes IP litigator Andrew Shaughnessy, who handles both patent and trademark cases, and Andrew Bernstein, who also focuses on IP litigation. Also recommended is up-and-coming partner Edward Fan, who advises on the acquisition, enforcement and exploitation of IP.

Practice head(s):Eileen McMahon; Andrew Shaughnessy

Other key lawyers:Andrew Bernstein; Edward Fan

Testimonials

Demonstrates a deep understanding of the law and changing political environment along with a deep understanding of the pharmaceutical industry and its business needs.’

Torys’ team understands both IP and regulatory rules and regulations in Canada and stays on top of all business-related matters. They understand both our IP and regulatory needs seamlessly, making our legal submissions that cover both aspects equally seamless.’

Lawyers possess very strong advocacy skills combined with strong technical expertise. Superior to other firms we have used in the past.’

Andrew Shaughnessy demonstrates exceptional advocacy skills and excellent client service. Edward Fan has very strong technical expertise in patents and provides excellent client service.’

Key Clients

DuPont/Pioneer Hi-Bred International

The Bank of Nova Scotia (Scotiabank)

Thomson Reuters

Procter & Gamble

Bally/Shuffle Master

Coty

Zoetis

AbbVie

Profound Medical

Resource Well Completion Technologies Inc.

Pfizer

Work highlights

  • Advised Procter & Gamble on trademark matters across several different product lines including: Olay, Pantene, Gillette and Head & Shoulders.
  • Advised Horizon Pharma regarding a Patented Medicine Prices Review Board public hearing concerning the price of the patented medicine cysteamine bitartrate.
  • Represented Edwards Lifesciences in a patent infringement action against Boston Scientific and LivaNova regarding transvascular cardiac valves.
  • Retained by NOVA to seek leave to appeal to the Supreme Court of Canada in a patent infringement action.

Distinguished by its global platform, Baker McKenzie stands out as a favourite among multinational corporations seeking portfolio management advice, with enviable multinational clients including Unilever and Zespri. Other key areas of expertise include anti-counterfeiting and patent litigation. Christopher Aide heads the IP practice and advises on portfolio management, brand protection and anti-counterfeiting matters. Also recommended is trademark specialist Stephanie Vaccari, who spearheads the Toronto office’s luxury and fashion group.

Testimonials

Baker McKenzie has resources all around the world. They have been able to connect me to experts wherever our business requires, not just for legal services but translation capabilities.’

Bakers’ Canada office is unique in that they offer flexible, business-friendly advice while maintaining a very deep bench and global capabilities. In-house counsel essentially get the experience of one of the world’s biggest law firms, coupled with the attention of a small boutique.’

The team takes the time to know and understand our business and to offer solutions that work for us. They realize we cannot take a one-size-fits-all approach to our legal issues, rather, we need business-friendly advice that helps us match the frenetic pace of our legal partners; Bakers understands this and adjusts accordingly.’

Everything you ask for is delivered in a timely manner. We particularly value the smooth and non-bureaucratic communication, useful advice, clear responses to questions and reasonable fees.’

Bakers is passionate about our business and our brands. They have high-level competence, but many firms have this, what stands them apart is the open and commercial relationship we have with the Baker team where the business comes first.’

Christopher Aide is always approachable, available and commercial with advice - we are not always faced with usual situations and he will ensure the right level of support is received by us.’

In my view, Stephanie Vaccari is the best trademark attorney in Canada. She works with the ease of a small-firm lawyer, but is backed by a deep bench of incredible professionals. Stephanie knows our business and gives advice with a rare business savvy.’

Key Clients

Meltwater News

Burlington Northern and Santa Fe Railway Company

Unilever

Fitbit

Zespri

Work highlights

  • Advised Unilever on trademark portfolio management.
  • Represented Burlington Northern and Santa Fe Railway Company in a patent infringement claim brought by Canadian National Railway.
  • Represented Meltwater News in a copyright infringement and breach of contract claim brought by several of Canada's largest online news publishers in respect of its online services.

Toronto-based Belmore Neidrauer LLP has a strong emphasis on sophisticated pharmaceutical patent litigation, but also has experience in trademark, copyright and confidential information-related disputes. Peter Wilcox is widely acknowledged as a leader in pharmaceutical and biotechnology patent litigation, and Jason Markwell has a solid record in life sciences-related cases.

Practice head(s):Peter Wilcox

Other key lawyers:Jason Markwell

Traditionally a strong performer on the transactional side, Blake, Cassels & Graydon LLP boosted its litigation capability in 2018 with the hires of Toronto-based IP litigators Melanie Baird and Andrew Skodyn from Lenczner Slaght LLP, both of whom have significant expertise in the biologics field. On the non-contentious front, the firm advises on prosecution, due diligence and transactional work, across the full range of patents, trademarks, copyright and industrial design issues. Toronto-based Anthony Prenol heads the national practice group.

Practice head(s):Anthony Prenol

Key Clients

Essential Energy Services Ltd.

OTI Lumionics

Nutrien Ltd.

Xero Limited

Impact Group LLC

Janssen Inc., Janssen Biotech Inc.

The Kennedy Trust for Rheumatology Research

Valeant Canada LP and

Depomed, Inc.

Cilag CmbH, Cilag AG

Work highlights

  • Represented Janssen, Cilag and the Kennedy Trust for Rheumatology Research in a precedent-setting patent impeachment and infringement action related to Remicade.
  • Advised IBM Corporation and IBM Canada in a passing-off action relating to IBM’s cloud computing services and technologies.
  • Advised OTI Lumionics in drafting and prosecuting its patent portfolio.

Cassels Brock & Blackwell LLP’s IP group is best known for its extensive experience in copyright and entertainment law. Headed by copyright and entertainment specialist Casey Chisick, the team advises on trademarks, patents and regulatory issues. Also recommended is Shane Hardy, who is noted for his broad trademark practice.

Practice head(s):Casey Chisick; Alison Hayman

Other key lawyers:Shane Hardy

IP and IT boutique Deeth Williams Wall LLP is perhaps best known for its experience in the tech sector, though the team also has strong experience in advising domestic and multinational clients from the pharmaceutical, biotechnology, cosmetics and food industries on prosecution, enforcement and contentious IP. A key name to note is Douglas Deeth, who advises on both IP and technology law.

Practice head(s):Gordon Jepson

Other key lawyers:Douglas Deeth

Fasken’s national practice covers the spectrum of IP issues, from IP audits and filing to portfolio management and litigation. The firm leverages its market-leading communications expertise in copyright matters, where it has recently been engaged by major telecoms clients such as Bell Canada, Cogeco and Spotify. Headed in Montreal by Julie Desrosiers, who specializes in patent litigation, the team also has broad expertise in patent and trademark matters. Associate Michael Shortt, who has an emphasis on the video game and artificial intelligence industries, and trademark specialist Jean-Philippe Mikus are also recommended in Montreal.

Practice head(s):Julie Desrosiers

Other key lawyers:Michael Shortt; Jean-Philippe Mikus

Testimonials

The team is world-class and puts forward timely and business-savvy advice.’

Fasken’s network of foreign correspondents is second to none. I rely on the firm to coordinate and bring back effective and actionable information - and they consistently deliver on this front. From complex copyright issues to strategic management of trademarks, the team is heads above other big firms that do IP in name only.’

Michael Shortt is a tank. He is energetic and passionate about IP and his work. He can bring very creative input to complex files, and shows a very refreshing balance of academic knowledge and more practical advice.’

Key Clients

Bell Canada, Cogeco, Google, Rogers, Shaw, Videotron & Spotify

Janssen Inc.

Bell Canada, TekSavvy, TELUS, Videotron, SaskTel, Cogeco, Canadian Network Operators Consortium, Xplornet and Shaw (“ISP Coalition”)

Eurocopter/Airbus Helicopter v Bell Textron

Bombardier Recreational Products (BRP)

Nuheara Limited

Uber Technologies Inc.

Element AI Inc.

Intuit Inc.

Endoceutics inc.

Barrick Gold Corporation

Dermarché Labs, LLC

Symbility Solutions Inc.

Jamieson Laboratories Ltd.

British Columbia Automobile Association

The Jim Pattison Group

Quadreal

White Spot Limited

Quebecor

Sensio Inc.

Amgen & Others

Greenhouse Grown Foods Ltd. (dba Windset Farms)

The Little Potato Company Ltd.

Kanuk

Quebec Government

L’Oréal

Fiera Capital Corporation

Work highlights

  • Represented Bell Canada, Cogeco, Google, Rogers, Shaw, Videotron and Spotify, as the applicants, in the judicial review of a Copyright Board decision setting the royalty rates to be paid by Online Music services.
  • Represented Janssen in seeking judicial review of the decision from the Health Minister of Quebec to remove one of its biologics from the list of drugs covered by the provincial plan.
  • Represented Bombardier Recreational Products in its patent infringement case against Arctic Cat.

Ridout & Maybee LLP has focused on IP law since its foundation in 1893, and thus has impressive experience across the full range of patents, trademarks, copyright, industrial designs and trade secrets. The sizeable Ontario boutique, which benefits from three platforms in Toronto, Ottawa and Burlington, files an average of 3,000 patent and 1,000 trademark applications per year. Kenneth Hanna is a key contact in Toronto. Janet Fuhrer was recently appointed as a judge of the Federal Court.

Toronto litigation boutique Lenczner Slaght LLP houses a compact but effective IP practice, which is routinely involved in patent and trademark disputes. The group distinguishes itself through its strong trial experience, particularly on the patent side, where department head Sana Halwani is highly regarded for her advocacy skills.

Practice head(s):Sana Halwani

Key Clients

Rovi Guides Inc. and TiVo Solutions Inc.

Valeant Canada; Valeant Pharmaceuticals Luxembourg

Collegium Pharmaceutical Inc.

Pfizer Canada Inc.

Rosseau Asset Management Ltd.

Stephen Bulger Gallery

Xerox Corporation

Toshiba Global Commerce Holdings Inc.; Toshiba Global Commerce Solutions Inc.

Ingram Micro

Meda Pharmaceuticals Canada Ltd

Work highlights

  • Represented TiVo Solutions, and its subsidiary Rovi Guides, in a patent infringement action concerning interactive television program guides, DVR technology and related technologies.
  • Represented Valeant in an application under the Patented Medicines (Notice of Compliance) Regulations concerning the medicine Wellbutrin XL.
  • Represented Rosseau Asset Management in a trademark infringement and passing off action.

Marks & Clerk fields a full-service IP offering from its bases in Ottawa and Toronto, and is also able to draw on the experience of specialists from across its 17-office international network. Best known for its trademark expertise, the practice also has strengths in patent and copyright matters. Grant Lynds in Ottawa is noted for patent and trademark litigation.

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