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  1. Intellectual property
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Who Represents Who

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Highly regarded IP firm Bereskin & Parr LLP handles the full range of patent, trademark and copyright mattes, including litigation. Cynthia Rowden leads on trademark matters and assists Canadian clients with international trademark portfolios and brand protection. Litigation head Donald Cameron advises on all areas of IP litigation, including trade secrets, as well as trademark prosecution, and has particular expertise acting for clients in the pharmaceutical and technology sectors. Litigator Donald MacOdrum has experience acting for clients at all levels of the Ontario court system, as well as the Federal Court and Supreme Court. Robert MacFarlane and Jonathan Colombo are also recommended. Founding partner Daniel Bereskin QC is a key name in the market and often handles arbitration and mediation. All individuals mentioned are based in the firm’s Toronto office.

Gowling WLG’s team advises on all aspects of IP law, with particular strength in trademark and patent litigation in the pharmaceutical and life sciences sector. In Ottawa, department head Robert MacDonald, Monique Couture and associate Matthew Boyd successfully represented Home Hardware before the Federal Court of Appeal in appealing a 2015 decision regarding Benjamin Moore’s registration of the ‘NATURA’ trademark. Christopher Van Barr and Patrick Smith, who are based in Ottawa and Calgary respectively, have been acting for Idenix Pharmaceuticals in a patent infringement and impeachment trial brought against Gilead Sciences regarding the latter’s hepatitis C drug Sovaldi. Other names to note are Anthony Creber in Ottawa, Kelly Gill in Toronto and Hélène D’Iorio in Montreal. Associate Kiernan Murphy is also recommended in Ottawa.

Considered a ‘go-to’ IP firm, Smart & Biggar/Fetherstonhaugh’s ‘top-notch trial lawyers’ act for a wide range of national and multinational clients across various sectors, including Bell Canada, Rogers and Black Card LLC. In Ottawa, the well-regarded Steven Garland, Jeremy Want and Colin Ingram have been acting for Dow Chemical in a patent infringement claim brought against Nova Chemicals regarding the manufacture and sale of Nova’s ‘SURPASS’ polymers. Montreal-based François Guay and associate Guillaume Ste-Marie successfully represented Unilin Beheer BV and Flooring Industries in litigation brought against a Montreal-based importer and distributor of counterfeit flooring products before the Federal Court. In Toronto, firm chair Keltie Luft, Mark Evans, Gunars Gaikis and Yoon Kang are names to note. Timothy Stevenson and Mark Pidkowich were promoted to partner in the Ottawa and Vancouver offices respectively. The firm was strengthened by the arrival of Norman Bacal in Toronto from Heenan Blaikie. Timothy Lo retired.

DLA Piper (Canada) LLP’s ‘incredibly knowledgeable and responsive’ team ‘instils confidence’ in clients. The group excels in trademark, patent and copyright protection, as well as clearance. Vancouver-based practice co-head Chris Bennett has been leading advice to Mountain Equipment Co-op on all matters regarding the company’s global trademark portfolio, including clearance, registration and enforcement. On the contentious side, co-head Bruce Stratton and Geoffrey Mowatt represented MIPS in a patent infringement claim brought against Bauer regarding Bauer’s RE-AKT hockey helmets. The highly regarded Ronald Dimock successfully represented Pollard Banknote in a patent infringement action brought against Scientific Games regarding Pollard Banknote’s scratch-off lottery tickets. Clients also recommend David Foulds and Sangeetha Punniyamoorthy, who is an ‘incredible resource’. Associate Ryan Evans is also recommended. All individuals are based in Toronto unless otherwise stated.

McCarthy Tétrault’s IP group primarily handles litigation, with a strong focus on patent infringement and licensing disputes. National group head Steven Mason has been defending Bell Canada in two patent infringement cases brought before the Federal Court by MediaTube and Two Way Media respectively regarding Bell Canada’s Fibe TV business. Mason and David Tait advised Bristol-Myers Squibb on several patent infringement cases brought against a number companies (including Teva, Actavis Generics, Mylan and Sandoz) regarding the client’s drugs for the treatment of, respectively, leukaemia and HIV/AIDS: Sprycel and Reyataz. Barry Sookman, Daniel Glover and Vancouver-based Miranda Lam successfully assisted a number of Canadian and international clients with obtaining an injunction ordering Google to block infringing search results from counterfeiters in a precedent-setting case brought before the Supreme Court. Alfred Macchione and Steven Tanner are also recommended. All individuals are based in Toronto unless otherwise stated. Andrew Reddon has retired.

Norton Rose Fulbright’s ‘excellent’ and ‘very responsive’ group advises on a broad spectrum of IP work, including transactional and litigation matters. National practice head Judith Robinson, who is based in Montreal, successfully defended Bell Helicopter against a series of patent infringement claims brought by Airbus. Robinson, along with IP litigation head Jordana Sanft in Toronto and Brian Daley in Montreal, also acted for Gilead Sciences in three patent infringement actions brought against AbbVie before the Federal Court. In Toronto, Patrick Kierans and Kristin Wall represented Innovative Medicines Canada before the Supreme Court regarding intervention status in AstraZeneca Canada Inc et al v Apotex Inc following AstraZeneca’s appeal of the invalidation of its patent for Nexium. Also in Toronto, Lorelei Graham and Anna Wilkinson have been advising Mirexus on various patent applications. The department also includes Jung-Kay Chiu, who leads on patent and other IP transactions, senior partner Brian Gray, Louisa Pontrelli and Anthony de Fazekas in Toronto; Claude Brunet in Montreal; and Richard Johnson, Chris Wilson and Karen MacDonald in Vancouver. The group was strengthened by the arrivals of Louis Gratton in Montreal as of counsel from Rio Tinto, and Mark Davis and Sara Zborovski in Toronto from Belmore Neidrauer LLP and DLA Piper (Canada) LLP respectively.

IP litigation firm Aitken Klee LLP is experienced acting for clients at all levels of the court system, including the Supreme Court. In Ottawa, co-founders David Aitken and Marcus Klee successfully assisted Teva with obtaining a damages award of over C$105m CAD in Teva Canada Limited v Pfizer Canada Inc regarding Teva’s venlafaxine product. In Toronto, Jonathan Stainsby and Bill Mayo are names to note.

Clients regard Bennett Jones LLP’s ‘outstanding’ practice as ‘nothing less than exceptional’. It handles contentious and non-contentious mandates for clients across a wide range of sectors, including energy, technology and pharmaceuticals. Group head Stephen Burns, who is based in Calgary, advised Sanjel Corporation on the IP aspects of a complex cross-border restructuring proceeding, including the sale of patent and trademark rights. Toronto-based IP litigation head Dominique Hussey has been defending Aurobindo Pharma in a number of patent matters brought by Eli Lilly before the Federal Court. Also in Toronto, the ‘highly attentive and personableMartin Kratz QC assisted Always Books with the protection and licensing negotiations regarding the client’s brand of sports books. Other clients include Coca-Cola, Telus and Teva.

Blake, Cassels & Graydon LLP’s team advises on the full gamut of IP matters for both national and multinational clients. Group head Anthony Prenol advised Suncor Energy on the IP aspects of the sale of the company’s Petro-Canada Lubricants business to a subsidiary of HollyFrontier, which is valued at $1.13bn. Gary Daniel assisted Baring Private Equity Asia with the IP aspects of the client’s $137m acquisition of a 35% stake in Telus International. Sheldon Burshtein and Antonio Turco are also recommended. All partners in the IP group are based in Toronto and Montreal.

Borden Ladner Gervais LLP’s group acts for national and international clients across all areas of IP law, including patent, trademark, copyright and trade secrets. Toronto-based Gordon Zimmerman advised Lindt on a trademark infringement matter brought against Freddo before the Federal Court regarding Lindt’s Gold Bunny. In Ottawa, Jamie Mills has been acting for Millennium Pharmaceuticals and Janssen Pharmaceuticals in a countersuit against Teva regarding the infringement of the Velcade product. Of counsel LuAnne Morrow, who is based in Calgary, is also recommended. Jeff Gordon and Jason Mueller-Neuhaus were promoted in Toronto and Ottawa office, respectively. The Ottawa office was strengthened by the arrival of Peter Cooke as of counsel from Low Murchison Radnoff LLP.

The national IP department at Fasken Martineau DuMoulin LLP acts for clients across a range of sectors, including pharmaceuticals and technology. The Montreal team excels in IP litigation, while the Toronto and Vancouver offices primarily handle transactional matters. Montreal-based Marek Nitoslawski represented Bombardier in a number of patent infringement cases brought against Arctic Cat before the Federal Court regarding the client’s rider-forward technology for snowmobiles. In Ottawa, Jay Kerr-Wilson acted for a consortium of Canadian cable and satellite companies (Rogers, Shaw, Quebecor Media, Cogeco, Bell Canada and Telus) in litigation brought before the Copyright Board of Canada regarding retransmission copyright royalties valued at over C$500m. The department is led by Julie Desrosiers in Montreal. David Wotherspoon is now at MLT Aikins LLP.

Goodmans’ practice handles a range of contentious and non-contentious IP matters, with particular expertise in transactional matters and work in the entertainment sector, including copyright clearance, licensing and prosecution. Group head Amalia Berg led advice to Golf Town and Golfsmith International on all IP aspects concerning the sale of Golf Town to a subsidiary of Fairfax Financial Holdings. Andrew Brodkin, who leads the wider litigation department, and Dino Clarizio successfully acted for Apotex in litigation brought against Allergan alleging the invalidity of Allergan’s gatifloxacin eye drop patent. IP litigation head Harry Radomski is also recommended. Other clients include Four Seasons, Trudell Medical International and Wabtec Corporation.

Osler, Hoskin & Harcourt LLP’s department advises on all areas of IP law, including trademark, copyright and patent prosecution. Practice head Bradley White, who is based in Ottawa, and Vincent de Grandpré defended Samsung Bioepis in patent proceedings brought by Amgen Canada and Immunex Corporation regarding the drug Enbrel. White and Nathaniel Lipkus have been representing Skretting in a cross-border patent dispute regarding methods for raising fish. John Cotter and Ottawa-based senior counsel Glen Bloom continued to act for Re:Sound in a number of proceedings brought before the Copyright Board of Review and the Federal Court of Appeal concerning tariffs. The well-regarded May Cheng represented CPA Canada in trademark litigation against the Association of Chartered Certified Accountants UK. All partners are based in Toronto unless otherwise stated.

Stikeman Elliott LLP’s team has particular expertise in transactional matters, but also handles contentious and other non-contentious issues. Ottawa-based group head Justine Whitehead advised Emtek on the client’s strategic partnership with Blackberry, including licensing matters concerning Blackberry’s messenger technology. In Montreal, Jonathan Auerbach led advice to Vail Resorts on the IP aspects of its C$1.4bn acquisition of Whistler Blackcomb. On the litigation side, Auerbach has been representing SmartCloud in proceedings brought against IBM before the Ontario Superior Court of Justice and Trademarks Opposition Board regarding IBM’s ‘SmartCloud’ mark. Ottawa-based Nicholas McHaffie is also recommended. Other clients include Facebook, Sony and Air Canada.

The ‘excellent’ team at Torys acts for clients across a broad range of sectors, including agriculture, technology and pharmaceuticals. ‘Highly recommended’ co-head Eileen McMahon and Edward Fan have been leading the advice to DuPont on all patent matters regarding the client’s agricultural products, including patent strategy and prosecution. McMahon has also been assisting AbbVie with the management of the client’s IP portfolio. On the contentious side, IP co-head Andrew Shaughnessy and litigation head Andrew Bernstein have been acting for Procter & Gamble in a number of patent and trademark proceedings. Teresa Reguly was promoted to partner in 2016. Other clients include Loblaws, CIBC and Thomson Reuters. The team is based in Toronto.

Baker McKenzie’s ‘extremely experienced’ and ‘excellent’ practice handles a wide range of matters, from trademark disputes and domain name disputes to copyright litigation and reputational matters. Team head Christopher Aide is noted for global brand protection, enforcement and anti-counterfeiting matters; the ‘superb’ Stephanie Vaccari, who has ‘tremendous client-service focus’, has extensive experience handling trademark matters, including portfolio management and infringement proceedings; and litigator William Richardson often acts for clients in the pharmaceuticals sector. All partners are based in Toronto.

Cassels Brock & Blackwell LLP’s team represents clients in a range of sectors, with a strong focus on IT, communications and entertainment. Casey Chisick, who is co-head of the firm’s wider intellectual property, sports and entertainment group, often advises on transactional matters. Chiswick also has considerable experience acting for clients in copyright litigation. The team includes Shane Hardy, who often advises on trademark enforcement. Alison Hayman and litigator Tim Pinos are also recommended.

Based in Toronto, boutique Deeth Williams Wall LLP has considerable experience handling cross-border contentious and non-contentious IP matters, including in relation to trade secrets, domain names and industrial designs. Douglas Deeth primarily handles litigation and licensing matters, including pharmaceutical patent litigation. Gervas Wall often advises on regulatory matters related to patents and trade secrets as well as handles copyright litigation. Other names to note are Marijo Coates and Victor Butsky, both of whom have experience handling licensing matters.

Lenczner Slaght LLP’s team primarily handles IP litigation and has particular expertise in the pharmaceuticals and technology sectors. Practice head Andrew Skodyn led advice to IBM in trademark infringement proceedings brought by SmartCloud before the Ontario Superior Court of Justice regarding the client’s ‘SmartCloud’ mark. Tom Curry represented Pfizer in patent litigation brought by Teva regarding the drug pregabalin. The team was strengthened by the arrival of Sana Halwani from Gilbert's LLP. Melanie Baird was promoted to partner. Marguerite Ethier has retired.

IP firm Ridout & Maybee LLP handles the full spectrum of IP matters for clients in the technology and pharmaceutical sectors. In Ottawa, Janet Fuhrer primarily handles trademark and copyright issues, including clearance, domain name matters and litigation. Other names to note are David Greer, Kenneth Hanna and David Heller in Toronto.

Quebec-based boutique Robic LLP handles all aspects of IP law across various sectors, including engineering, software development and life sciences. In Montreal, François Grenier primarily assists clients with patent and trademark litigation. Bob Sotiriadis, who is also in Montreal, advises mainly on licensing and transactional matters, as well as portfolio management and due diligence.

Sim, Ashton & McKay LLP has experience representing clients before all levels of the court system, including the Ontario Superior Court of Justice, Federal Court and Supreme Court. Senior consultant Michael Stewart primarily acts for clients in the technology and life sciences sectors. Trademark specialist Toni Polson Ashton handles portfolio management, prosecution and licensing. The team also includes litigator Kenneth McKay.

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