Firms To Watch: Intellectual property

Dentons is building its offering in intellectual property, led by Montréál-based Panagiota Dafniotis, leveraging the firm’s global network to advise on disputes and IP strategy.
Heer Law is an intellectual property boutique in Toronto, founded in 2014, that focuses on advising direct Canadian clients on the full range of contentious and advisory IP matters.

Intellectual property in Canada

Gowling WLG

Gowling WLGconsistently delivers top-notch work‘ in respect of IP protection, enforcement and commercialization matters, notably overseeing the portfolios of household names such as Starbucks, Royal Bank of Canada and Linde. Shelagh Carnegie, co-head of the firm’s global IP group, dedicates her practice to all stages of the trademark prosecution lifecycle meanwhile Laurent Massam is noted for his experience in first-of-their-kind copyright cases and regularly appears before the Federal Court of Appeal, the Copyright Board of Canada and the Ontario Superior Court of Justice; the pair operate from Toronto together with IP litigator Kelly Gill and trademarks expert Jodi English, both of whom garner client acclaim for their ‘great legal and practical business advice‘. Meanwhile at the Ottawa office, Martha Savoy heads the Canada and Russia trademarks department, specializing in trademark and copyright registration, enforcement and litigation; she is based alongside Christopher Van Barr who recently represented Google in a dispute with Paid Search Engine Tools, leading a team which included Michael Crichton, an expert in the technology industry. Douglas Fyfe‘s core strengths lie in clearing, licensing, registration and opposition matters while over in Vancouver, Nelson Godfrey is carving out a prominent reputation for his contentious work and fronts the local IP litigation team. Senior associate Nikolas Purcell was a new arrival in November 2021.

Testimonials

‘The team is very responsive, proactive and they leverage each other’s strengths and expertise internally to serve their clients. They are very strong communicators and are strategic with their management of issues.’

‘This firm responds quickly, clearly and efficiently. Moreover, the people are excellent, each and every one of them. Over a 20 year period, they have consistently delivered top-notch work.

‘Kelly Gill and Jodi English are amazing. They provide great legal and practical business advice. They are also super responsive and are reasonably priced for such great service.’

‘Our company has worked with Gowling WLG in Canada for many years. They have a very strong trademark department and we also use them to file copyrights and enforce our trademark rights.’

‘I have worked with Doug Fyfe for many years. Doug is very knowledgeable in Canadian trademark law and practices as well as comparable US law and practices. Doug is very responsive and personable. He provides solid and practical advice. I always recommend Doug when someone is looking for counsel in Canada.’

‘Diverse and broad knowledge of the field. Superb responsiveness and common sense advice and analysis. Well-organized. Excellent communication skills and transparency. Overall, really smart, experienced, and good people.’

‘Gowling has a depth and breadth that surpasses any other firm we have worked with in the past. They have a highly experienced partner/staff for our industry. We are primarily working with trademark IP, which can require an intimate knowledge of specifics, but we have also tested them with patent IP and they have been able to internally engage with engineering and science to lead us in the right direction. In our experience, this often requires seeking outside expertise, which seems to be lacking in other firms. Certainly they are our firm of choice.’

‘We’ve made great strides in pruning our trademark portfolio with Gowlings undertaking a review to identify marks we no longer use and are not relevant. Gowling has also resolved a few domain name issues that have been laying around for years by developing a new way to approach the disputes. Overall, Gowling has made great strides in ensuring we have a protect trademark portfolio while reducing costs for our company. Gowling is consistently thinking of ways to improve delivery of legal services rather than waiting for us to ask.’

Key clients

Eli Lilly

Astellas Pharma

JemPak Corporation

CCM (Sport Maska)

Google

Paypal

TA Foods

Society of Composers, Authors and Music Publishers of Canada

Bayer

Toys R Us

Weetabix

Harlequin Enterprises

Work highlights

  • Assisting client with securing protection and maintaining their brands in Canadian and international markets, with a total of more than 45 domestic and international marks.
  • Managing all of the client’s trademark prosecution and trademark enforcement needs in Canada.
  • Managing the voluminous trademark portfolio for a large and well-known publishing company with trademark interests to protect and enforce all over the world.

Smart & Biggar

Smart & Biggar, a market leading IP boutique, leverages a vast domestic network which is spread across its offices in Ottawa, Montréal, Toronto, Calgary and Vancouver; it supports clients on the full suite of IP and technology services, with particularly formidable expertise in patent and trademark application filings, as well as IP litigation. François Guay chairs the firm’s IP strategies group from its Montréal office and has broad, high-level experience across patents, trademarks, industrial designs, copyrights and trade secrets. Sheldon Hamilton is a leading patent litigator, particularly noted in the pharmaceuticals industry, and heads the contentious offering. Life sciences is the focus for Nancy Pei, while Graham Hood is a standout name for trademark prosecution, notably sitting on the Canadian Anti-Counterfeiting Networks Steering Committee. Recent highlights have included several high-profile cases at the Federal Court of Appeal, most notably the successful defence of Pampered Chef in the precedent-setting trademark infringement case of Loblaws Inc v Columbia Insurance Company, a matter co-led by Mark Evans, Mark Biernacki and Ottawa-based Steven Garland. Named lawyers operate from Toronto unless otherwise stated.

Key clients

Dow Chemicals Company

Exaltexx

Canadian National Railway Company

Dr. Luc Bessette

Pampered Chef

Grupo Bimbo

Lindt

Bauer Hockey

Bell Media

Groupe TVA

Rogers Media

Nintendo of America

Warner Bros. Entertainment

Amazon Content Services

Columbia Pictures Industries

Disney Enterprises

Netflix

Paramount Pictures

Sony Pictures Television

Universal City Studios Productions

Work highlights

  • Acted for Dow Chemicals Company in a $650m patent infringement dispute against Nova Chemicals which went to the Federal Court of Appeal.
  • Represented the client in a successful trademark infringement trial concerning the trademark HOSTESS, a well-known brand in the bakery field in Canada, on behalf of the bakery company, Grupo Bimbo.
  • Representing Bell, Rogers and Québecor at the Federal Court of Appeal against anonymous operators of the two of Canada’s most popular unauthorized IPTV services, operating under the name GoldTV.

DLA Piper (Canada) LLP

DLA Piper (Canada) LLP leverages the wider firm’s global reach to provide the full suite of brand protection and IP defence to a client list of multinationals and major Canadian companies. IP litigation is a standout strength, particularly on the patent side, with a recent highlight seeing Alan Macek and Bruce Stratton defending domestic telecoms provider Videotron against patent infringement action brought by two US companies. Chair of the firm’s IP and technology group in Canada, Sangeetha Punniyamoorthy, has broad IP litigation experience, appearing frequently at the Federal Court in trademark and patent litigation, as well as managing a number of trademark portfolios. Geoff Mowatt is a prominent IP litigator within the field of life sciences while Bentley Gaikis had a busy past year focused on patent disputes arising within the chemical, biotechnology, pharmaceutical and mechanical sectors. Named lawyers work from Toronto though the team also has representation in Vancouver where Chris Bennett thrives in relation to corporate brand and trademark protection.

Practice head(s):

Sangeetha Punniyamoorthy

Key clients

BMW Group

Pfizer

Mountain Equipment Co-operative (MEC)

Videotron

Tetra Tech Canada

Edibles Arrangements; Edible IP; Edible International

Deeproot Green Infrastructures

Canadian Energy Services

Work highlights

  • Acting for Videotron in a patent infringement action case brought against it by Rovi and Tivo on technology relating to interactive program guides.
  • Assisted Tetra Tech with an appeal from an adverse finding in a patent ‎infringement ‎action, as well as the ‎damages phase of ‎the litigation.‎
  • Advising Pfizer entities as co-counsel defending a patent infringement action brought by Janssen ‎related to Janssen’s Remicade and Pfizer’s Inflectra.

Goodmans LLP

A deep bench of IP litigators distinguishes Goodmans LLP from its competition. Andrew Brodkin, particularly well-versed in the assessment of damages, has notably appeared in the Supreme Court of Canada on multiple occasions meanwhile Harry Radomski is an experienced trial lawyer across all aspects of IP including patent, trademark and copyright disputes; the pair jointly lead the practice together with Amalia Berg, the key point of contact for non-contentious matters such as portfolio management, trademark clearance and prosecution and IP transactions. Jordan Scopa, a specialist in both disputes and licensing, has been especially active in the pharmaceutical sector of late, complimenting the wider team’s proficiency in the broadcasting, publishing, biotechnology, food and beverages, telecommunications, sports and entertainment sectors. At the more junior end, associate Jaclyn Tilak has appeared in a number of cases pertaining to patented medicines. Named lawyers are based at the Toronto office.

Key clients

Alvotech

Jamp Pharma

Seven Generations Energy

Novo Nordisk Canada

Apotex  / Apotex Pharmachem

Canadian Generic Pharmaceutical Association

Pharmascience

Advanced Powders & Coatings

Duracell

Google

Gemak Trust

SoulCycle

Trudell Medical International

Wabtec Holding

Westinghouse Air Brake Technologies

MSA Technology

ToonBox Entertainment

Arterra Wines Canada

Give & Go Prepared Foods

Mongohouse.com

Panacea Biotec

Strataca Systems

Cognitive Systems

Quantum Valley Fund

Work highlights

  • Acting for Jamp Pharma and its supplier Alvotech in patent infringement actions and actions under the patented medicines regulations against AbbVie.
  • Representing Novo Nordisk at the Federal Court in trademark infringement action relating to Sanofi’s use of its TRURAPI mark.
  • Advising Google on a patent infringement it has initiated action against Sonos relating to Sonos’s beam speaker products.

McCarthy Tétrault

Contentious matters are the standout forte for McCarthy Tétrault‘s practice which operates across all subsets of IP, providing representation before all levels of domestic courts in addition to international tribunals. Steven Mason has a number of high-profile victories at the Supreme Court of Canada under his belt, directing particular emphasis towards patent disputes, meanwhile Alfred Macchione oversees the prosecution and business IP practice and is often instructed by start-ups in the technology sector. Lisa Melanson heads the firm’s IP strategy initiative, managing global IP portfolios and leveraging her qualification at the New York Bar to support on cross-border mandates involving the US. Senior counsel Barry Sookman is a distinguished name in the field of copyright law whereas disputes experts Daniel Glover and Fiona Legere provide the group with a wealth of sector-specific expertise in fields such as retail, entertainment, technology, media, pharmaceutical and telecommunications. Named lawyers are based in Toronto with Vancouver-based Vincent Yip leading the firm’s Western Canadian IP practice.

Testimonials

‘Very business-oriented, great inhouse prior experience which is helpful setting strategy.’

Key clients

Nestlé

The National Football League

Bristol-Myers Squibb

Pfizer

Bell Canada

Music Canada

Teranet

MEG Energy

League, Inc.

Abbvie

Sirius XM

Dollarama

Merck & Co

Allergan

Telus

Rogers Communications

Work highlights

  • Representing Bristol-Myers Squibb and Pfizer in their actions involving blockbuster anticoagulant drug Eliquis.
  • Advising Music Canada and its members in a case before the Supreme Court regarding the scope of the new making available right under Canadian law.
  • Advising Merck Serono in an appeal to the Patent Appeal Board, which successfully overturned the Patent Office’s refusal of a patent application for a dosage regimen approved by Health Canada.

Norton Rose Fulbright

Norton Rose Fulbright compliments its vast international footprint with a broad domestic network, fielding IP lawyers across several of Canada’s key markets. Jung-Kay Chiu has a focus on IP acquisition, protection and exploitation in the biotech and medical devices sectors and leads the national practice from Toronto. Other region-tailored specialisms include aerospace in Québec, for which Sébastien Clark is the key contact, as well as marketing and branding in Vancouver, where Chris Wilson is particularly adept in the alcoholic beverages market. At the Calgary office, Elizabeth Williams possesses experience in both transactional and standalone IP matters while for litigation work, Karen MacDonald  in Vancouver is a standout, especially when it comes to infringement enforcement. Senior partner Judith Robinson retired in January 2021.

Practice head(s):

Jung-Kay Chiu

Testimonials

‘Strategic and creative ideas for all aspects of litigation. Excellent attention to detail and a consideration of the consequences of each action in the broader scheme of the litigation.’

‘It seems as though all team members are valued for their input. Training and opportunity is important. Everyone is intelligent, responsive and respectful.’

‘High caliber of knowledge and expertise in all areas of IP.’

‘Elizabeth Williams understands our business and offers excellent practical, business oriented advice.’

‘The team worked very well together as a group and was committed to obtaining the best possible result for the client.’

Key clients

AstraZeneca

FibroGen

Bodum USA

Canadian Tire Corporation

Gilead Sciences

Innovative Medicines Canada

London Drugs

Loops

Myant

Pfizer Canada

Re/Max

Viatris

Wyeth

Surewerx

Work highlights

  • Representing the Canadian innovative pharmaceutical trade association, Innovative Medicines Canada (IMC), and 16 Canadian pharmaceutical companies in litigation against the Canadian Government.
  • Acted for Pfizer in a patent infringement action commenced against it by Amgen under the pm(noc) proceedings relating to the biologic filgrastim.
  • Advising Canadian Tire Corporation, Limited in broad range of intellectual property matters including patent, trademark and industrial design litigation, trademark and labelling issues and brand management.

Osler, Hoskin & Harcourt LLP

Osler, Hoskin & Harcourt LLP provides a comprehensive IP offering which thrives on the disputes front though likewise manages the patent and trademark portfolios of a prestigious client list that includes Teva Canada, NBA Properties and Estée Lauder. IP litigator John Cotter is a standout for copyright matters, recently defending York University in a long-running lawsuit against Access Copyright which reached the Supreme Court in 2021; he leads the national practice from Toronto where fellow disputes expert Nathaniel Lipkus serves as a go-to for contentious patent and regulatory issues within the pharmaceutical and biotechnology sectors. In Ottawa, Barry Fong is frequently engaged in copyright, trademarks, domain names, and anti-counterfeiting enforcement affairs meanwhile Bradley White leads the firm’s patent litigation and prosecution practice with a track record in overseeing multijurisdictional disputes. The recently promoted Faylene Lunn is also based in the Capital from where she is often instructed on contentious pharmaceutical proceedings, distinctly leverages a doctorate in biochemistry and molecular biology.

Practice head(s):

John Cotter

Key clients

Teva Canada

Mylan Pharmaceuticals

Celltrion

Covidien LP

VMware

WOW Tech (formerly Standard Innovation Corporation)

Purdue Pharmaceuticals

Munchkin

Universities Canada

NBA Properties

Re: Sound Music Licensing Company

3M Innovative Properties

Samsung Bioepis

York University

Estee Lauder

Work highlights

  • Representing Mylan Pharmaceuticals ULC in defence of an action for patent infringement brought by Eli Lilly in relation to the drug tadalafil.
  • Defending Wow Tech Canada Ltd in a patent impeachment case against EIS Inc. The impeachment concerns the Canadian Patent No. 2,591,401, a device for personal stimulation. Wow Tech has also counterclaimed that EIS has infringed its Canadian Patent No. 2,591,401.
  • Acting as counsel to Munchkin Baby Canada, Ltd. and its U.S. affiliate in the defence of a Federal Court patent infringement action (T-151-16) relating to the defendants’ making and selling of cartridges for diaper pails.

Torys

The Toronto-based IP team at Torys concentrates on lifecycle management for its clients products, providing guidance on potential loss of market exclusivity and responding to IP disputes. One standout recent matter saw IP group chair Eileen McMahon and head of IP litigation Andrew Shaughnessy acting for Horizon Therapeutics in proceedings before the Patented Medicine Prices Review Board concerning allegations of excessive pricing. Andrew Bernstein has extensive litigation experience across all facets of IP, while on the transactional side, coordinator of the group, Edward Fan, is the key contact, honing his focus on the acquisition, exploitation and enforcement of IP. Teresa Reguly is particularly formidable in the biotechnology and medical device industries, and from a strong all-women pool of junior lawyers, counsels Nicole Mantini and Yolande Dufresne are particularly integral to the practice; the former due to her prominent reputation among North American and international pharmaceutical companies and the latter owing to her risk management and regulatory capabilities..  

Practice head(s):

Eileen McMahon

Testimonials

‘The team is exceptionally adept at managing complex matters for key Canadian clients.’

‘Michelle Nelles and Edward Fan are first-rate practitioners and people.’

Key clients

Sanofi-aventis Canada

Horizon Pharma

Amgen

Catalyst Pharmaceuticals

KYE Pharmaceuticals

Intellectual Property Owners Association

Access Copyright

Alcon Canada

Nova Chemicals

ViiV Healthcare (GlaxoSmithKline and Shinogi)

Astellas

LiquidPower Specialty Products

Work highlights

  • Advising Amgen on various Canadian corporate, regulatory and litigation and pre-litigation issues affecting the products of Amgen Canada, and serving as the lead patent counsel in a number of disputes in the Federal Court of Canada.    
  • Acting for Intellectual Property Owners Association in its application to the Federal Court of Canada to intervene in proceedings challenging federal regulations affecting the pricing of patented medicines under the patent act.
  • Acting for Catalyst Pharmaceuticals and KYE Pharmaceuticals in a judicial review of the decision of the Minister of Health to overlook the data protection of Catalyst’s orphan drug, Firdapse, which will be marketed in Canada by KYE.

Belmore Neidrauer LLP

IP boutique Belmore Neidrauer LLP‘s core strengths lie in the pharmaceuticals and biotechnology sectors, as evident in recent patent infringement cases where it provided respective representation to Pfizer and Janssen. The Toronto-based team is jointly coordinated by Peter Wilcox, an expert on complex patent validity and infringement matters, and Marian Wolanski, who focuses on patent litigation. Up-and-coming partner Stephanie Anderson already has a number of appeal matters under her belt. Nikolas Purcell left the firm in late 2021.

Practice head(s):

Peter Wilcox; Marian Wolanski

Other key lawyers:

Stephanie Anderson

Key clients

Pfizer

Janssen (Johnson & Johnson)

Bayer

Elea Vertriebs und Vermarktungsgesellschaft

Work highlights

  • Represented Pfizer in patent infringement action against Seedlings Life Science Ventures, who alleged that Pfizer’s EpiPen infringed select claims of a Seedlings patent for epinephrine auto-injectors.
  • Acted for Janssen in patent infringement action against Teva Canada under the new PM(NOC) Regulations concerning Janssen’s INVEGA SUSTENNA (paliperidone palmitate) product used to treat schizophrenia
  • Assisted Janssen with a patent dispute against Apotex at the Federal Court of Appeal.

Bennett Jones LLP

Bennett Jones LLP‘s broad IP practice covers prosecution, litigation, advisory and transactional advice from offices in Toronto, Edmonton and Calgary. Stephen Burns, is based at the latter office and focuses on M&A transactions with complex IP elements while over in Toronto, fellow practice co-head  Dominique Hussey is active on the contentious front, handling patent and trademark litigation with noted strength in the pharmaceutical sector. Jeilah Chan counts names such as Ferrero Group and Prada among her client list and supports with both IP strategy and litigation.  

Practice head(s):

Dominique Hussey; Stephen Burns

Other key lawyers:

Jeilah Chan; Sébastien Gittens

Key clients

Amgen Canada

Auro Pharma

Canadian Natural Resources

Enviro-Pro Geosynthetics

Autumn Paper (Alexander McQueen)

Square

Syncrude Canada

Tec Edmonton

Vaderstad Industries

Bottega Veneta

Prada

Canopy Growth

Tweed

Spectrum Canada

This Works

Tokyo Smoke

Champion Petfoods

Eci Software

Guccio Gucci

Ferrero Group

Beam Suntory

Kinnikinnick Foods

Novozymes

Blue Ant Media

Nate Hendley and James Lorimer and Company

Bayer

Canadian Utilities

Tru-wind Microdea

Pembina Pipeline Corporation

North West Redwater Partnership

Work highlights

  • Acting for Amgen in an action brought under amended PM(NOC) regulations pertaining to a patent infringement of Amgen’s NEUPOGEN product by Pfizer’s NIVYSTYM.
  • Advised Canadian Utilities on the sale of its entire Canadian fossil fuel-based electricity generation portfolio for approximately $835m.
  • Providing the client with strategic advice on the evolution of its famous brands and products, acquisition of IP, and the enforcement of its rights in Canada.

Borden Ladner Gervais LLP

Borden Ladner Gervais LLP assists an eclectic client base of domestic and multinational companies with strategic acquisition and IP protection matters across North America and internationally. In Ottawa, Jamie Mills‘s practice covers the full gamut of affairs though his foremost field of activity is patent litigation within the pharmaceutical field. Jason Howg heads the national department from Calgary while over at the Toronto office, Justine Wiebe runs a specialised trademarks practice, distinguished through her focus on non-traditional marks, pharmaceutical marks and trade dress.

Practice head(s):

Jason Howg

Work highlights

  • Responsible for preparing and directing the prosecution of Cryptomill’s international patent portfolio, and advising the company on technology and IP commercialization matters.
  • Representing the clients against all marketing generic companies in a number of appeals relating to patent infringement matters relating to the CIALIS and ADCIRCA tadalafil products.
  • Representing BIOTECanada, which has been granted leave to intervene before the Quebec Superior Court, in support of the applicants as part of an application for judicial review challenging the constitutional validity of the provisions pertaining to patented medicines in the Patent Act, as well as the Patented Medicines Regulations (including recent amendments).

Fasken

Fasken advises on the full range of strategic IP matters in addition litigation. After significant growth in 2019 and 2020, the team has organized in sub-groups focused on different niches of IP law, integrating the firm’s various offices across the country. Patent agent and litigator David Turgeon heads the practice from Montréal, where Julie Desrosiers often represents high-tech corporations in relation to the protection of their IP, trade secrets and strategic information; the pair are supported by associates Patricia Hénault, who handles IP-contract drafting in addition to disputes, and Michael Shortt, an expert in the artificial intelligence and video games industries.  

Practice head(s):

David Turgeon

Key clients

Pattison Outdoor Advertising.

Thermolec Ltée

Bombardier Recreational Products (BRP)

Merck Canada

L’Oréal

Medunik Canada

Equisoft

Cision

Entertainment Software Association

Canadian Broadcasting Corporation

Spotify

Quebecor Media

Bell Canada

Groupe Le Balthazar

Rogers Communications

Work highlights

  • Represented Bombardier Recreational Products in a multi-strand patent infringement dispute against Arctic Cat.
  • Advising Pattison Outdoor Advertising in a multi-faceted patent infringement dispute against T-Rex Property.
  • Acting for several pharmaceutical companies in a constitutional challenge to the federal government’s amendments to the patented medicines regulations and to the regulation of patented drug prices by the Patented Medicines Prices Review Board.

Baker McKenzie

Baker McKenzie‘s Toronto office plays a key role as part of the firm’s global network, frequently assisting multinationals and foreign companies with interests in Canada. Christopher Aide heads the practice and has more than 25 years’ experience advising on global trademark and design portfolio management, including for Unilever, who recently instructed the team on trademark infringement matter. Hailed by one client as ‘the go-to trademark attorney locally‘, Stephanie Vaccari serves as managing partner of the Toronto office and oversees a number of worldwide trademark portfolios in addition to her transactional and litigation work.  

Practice head(s):

Christopher Aide

Testimonials

‘Stephanie Vaccari is honest, ethical, responsive, compassionate, empathetic, and practical. Stephanie does great work.’

‘The team has an excellent expertise not only in legal framework and also in market practice that provides time and cost efficient legal service to the clients.’

‘Jim Holloway and Alexandra Lewis are great attorneys, and worked very diligently and professionally to get results that exceeded our expectations. Highly recommended.’

‘Baker offers a deep bench and world-class experience combined with the feel and treatment of a boutique. Despite this, the cost is market and is quite reasonable.’

‘Stephanie Vaccari is my go-to counsel in Canada. She handles all of our trademark work – from prosecution to contentious matters. Stephanie is one of Canada’s most accomplished practitioners and possibly the country’s best trademark attorney. She is practical and business-savvy, and is backed by a deep bench of expertise. In my view, she is the go-to trademark attorney locally. Her advice is not only spot-on, but she is able to resolve difficult business issues in a very practical and cost-effective way. I give her my highest recommendation.’

‘Good people who are passionate about our brands and business.’

‘Christopher Aide is our lead contact supported by Lillian Han on day to day trade mark portfolio side. Consistent high quality support – clear communication and excellent on timings. The team as a whole work really well together to deliver seamless IP support.’

Key clients

Kanal D

Unilever

Zespri

BNSF

Meltwater News

Work highlights

  • Representing a foreign broadcast entity in a copyright infringement case before the Federal Court arising from the unauthorized streaming of the company’s content via an IPTV service operating out of Canada.    
  • The Toronto office coordinates Unilever’s trademark portfolio in Canada, including trademark oppositions and disputes, as well as supporting grey market and parallel import disputes.
  • The firm has handled Zespri’s trademarks, designs and plant variety rights globally since 2009, including in Canada.

Blake, Cassels & Graydon LLP

Blake, Cassels & Graydon LLP‘s IP group handles work in a very diverse range of sectors and assists with transactional matters in addition to contentious affairs. Melanie Baird is particularly well-versed in matters in the life sciences space and is principally focused on disputes, so too is Andrew Skodyn who possesses considerable experience in representing pharmaceutical, technology and social media companies; the pair coordinate the practice alongside Chris Hunter whose workload includes IP-related M&A mandates, joint ventures and strategic licensing in addition to patent and trademark prosecution.  

Key clients

Janssen Inc, Janssen Biotech Inc., Cilag GmbH, Cilag AG, Actelion Pharmaceuticals Ltd (all members of the Johnson & Johnson family of companies)

Genentech Inc., Hoffman-La Roche Limited, Biogen Inc., and F. Hoffman-La Roche AG

International Business Machines Corporation and IBM Canada Limited

Mill Street Brewery

Medexus Pharmaceuticals Inc. Medexus Inc. and medac Gesellschaft für klinische Spezialpräparate mbH

Facebook Inc. and Instagram Inc.

Bausch Health Companies Inc. and Bausch Health, Canada Inc.

VerticalScope Inc.

WhitewaterWest Industries Ltd.

TBMBM Inc.

Centerbridge Partners L.P.

BMX Technologies

Clear Destination Inc.

GlaxoSmithKline Biologicals S.A

HgCapital LLP

lululemon athletica Canada Inc.

Moneris Solutions Corporation

Nasdaq, Inc.

SecureWorks Corp.

Work highlights

  • Acting for for Mill Street Brewery (owned by Labatt) in a passing off, trademark infringement, copyright infringement and competition claim brought by one of Canada’s most iconic bands.
  • Acted for the plaintiffs, in a patent infringement and validity action involving Rituxan (rituximab), an innovative biologic treatment for rheumatoid arthritis and Amgen’s proposed biosimilar product.
  • Acting for Facebook Inc. and Instagram Inc. in separate patent infringement actions relating to methods for the sharing of content on social media.

Lenczner Slaght

Litigation boutique Lenczner Slaght fields a dedicated IP team, headed by Sana Halwani; she recently provided representation to Tivo Solutions in three patent actions against Videotron, Bell Canada and Telus, respectively, which included the first two zoom trials at the Federal Court. The team’s patent trial experience includes PM(NOC) matters for pharmaceutical companies and a growing number of cases in the technology sector. The practice also litigates trade secret, copyright and trademark disputes and has grown steadily in recent years, most recently through the arrival of oil and gas, IT and biologics expert, Andrew Moeser, who joined from Gilbert’s LLP.

Practice head(s):

Sana Halwani

Other key lawyers:

Andrew Moeser; Cynthia Tape

Key clients

Xperi

Jamp Pharma

Voith Group

Mylan Pharmaceuticals

Pfizer Canada

The consortium in the Qualcomm class action

Authors Alliance

Neo Exchange

Aequitas Innovations

Rosseau Asset Management

Photech Environmental Solutions

Stephen Bulger Gallery and Stephen Bulger

Del Ridge Homes

Sof Surfaces

Work highlights

  • Action pursuant to the PM(NOC) Regulations relating to COPAXONE (glatiramer acetate injection), an immunomodulator medication used to treat multiple sclerosis.
  • Advising Jamp Pharma in actions pursuant to PM(NOC) regulations relating to JANUVIA (sitagliptin), a medication used to control high blood sugar in people with type 2 diabetes.
  • Advising Authors Alliance and Ariel Katz as interveners in an appeal to the Supreme Court of Canada addressing the issue of fair dealing and the question of whether tariffs set by the Copyright Board are mandatory.

Stikeman Elliott LLP

Stikeman Elliott LLP‘s sector strengths include food and beverages, technology, transportation and cannabis with Sony, Air Canada and Cirque de Soleil counted among the team’s clients. Jonathan Auerbach is adept in all facets of patent, trademark and copyright affairs, leveraging distinguished expertise in internet and business law; he jointly fronts the offering from Montréal together with Ottawa-based Justine Whitehead, a lawyer proficient in handling the IP aspects of corporate transactions, as well as the acquisition and protection of IP rights.

Key clients

Air Canada

Lyft, Inc.

Fédération Internationale de Football Association (FIFA)

Dell Corporation

The Wonderful Company

Sony

Under Armour, Inc.

Cirque du Soleil

Edwards Lifesciences Corporation

Pandora

Entertainment One

Work highlights

  • Exclusive counsel for all of Air Canada’s worldwide prosecution IP work.
  • Handling all of the client’s domestic Canadian trademark and industrial design prosecution work.
  • Representing FIFA with respect to IP enforcement in Canada for the past number of years including the FIFA World Cup™ tournaments in 2006,2010,2014 and 2018.  The team also provides counsel in relation to FIFA’s brand protection and any infringements of its trademarks and copyright works in Canada.