Intellectual property in Canada
The team at Gowling WLG 'truly does put the customer first'. Marked by 'great bench strength across all levels', the team has widely recognized strengths in IP protection and enforcement, complex litigation and commercialization. Among the department leaders are Vancouver-based Brian Kingwell, who has experience of patent matters the life sciences sector, and Robert MacDonald in Ottawa, who manages the Canadian portfolios of several large multinationals. Trademarks specialist Shelagh Carnegie co-heads the global IP group from the Toronto office, and Scott Foster leads the IP litigation group in the Vancouver office. Other contacts for IP disputes include Christopher Van Barr, 'IP guru' Anthony Creber and Ottawa-based IP litigation and strategy group chair Michael Crichton. Ronald Dimock joined from DLA Piper (Canada) LLP in January 2020. Nelson Godfrey was promoted to partner in January 2020.
Other key lawyers:
‘This team has great bench strength at all levels and uses a team approach to their benefit so that the appropriate level of work is completed by the person most-suited.’
‘Tony Creber is an IP guru and very capable of picking up complex client technology very quickly. Tony is a human dictionary of case law, strategic, very responsive and also very willing to consider client input and instruction.’
‘The team at Gowlings do truly put the customer first. Their focus is not billable hours, or a set in stone set of metrics to be achieved: it is to serve the best interests of the customers.’
‘Smart, experienced, common sense approaches. Excellent responsiveness.’
‘Real care about our shared clients and our professional relationship.’
Adidas / CCM Hockey
LG Electronics, Inc.
Philip Morris Brands Sarl
United Airlines, Inc.
Molson Coors Canada Inc.
Starbucks Corporation and related entities
Cummins Enterprises Inc. and David J. Cummings
Toys R Us
- Defended a decision in the Federal Court of Appeal relating to damages awarded to Eli Lilly for infringement of eight process patents.
- Acted as counsel to TA Foods Ltd. in proceedings before the Federal Court in which the Court granted summary judgment of non-infringement in a patent infringement action and interpreted and applied the new file wrapper estoppel provision of the Canadian Patent Act.
- Acted as counsel to Sport Maska Inc. doing business as CCM Hockey, the defendant in proceedings before the Federal Court in a case involving the “quarter” component of hockey skates.
Smart & Biggar is a market-leading IP boutique, with specialists in a full range of IP matters. A top choice for high-stakes disputes, the team acts for rights owners across a huge variety of industry sectors, but has built a particularly strong reputation in the areas of pharmaceuticals and life sciences. François Guay in Montréal is a hugely experienced litigator with expertise covering patents, trademarks, copyright and industrial designs. Sheldon Hamilton, who heads the litigation group, has particular experience in pharmaceutical litigation, as does Gunars Gaikis in Toronto. Mark Evans heads the Toronto office and is an authority on trademark protection, management and counselling services. Also recommended is Mark Biernacki, who focuses on trademark litigation and prosecution.
Bell Media Inc., Rogers Media Inc., Groupe TVA Inc.
Pampered Chef; subsidiary of Berkshire Hathaway
Land Title Survey Authority of British Columbia
Bauer Hockey Ltd.
Bel S.A. and Fromageries Bel Canada Inc.
Dr. Luc Bessette
J.R. Simplot Company and Simplot Canada (II) Limited
Canadian National Railway Company
- Represented Bell Media Inc., Rogers Media Inc., and Groupe TVA Inc. in litigation against the anonymous operators of the two of Canada’s most popular unauthorized IPTV services, operating under the name “GoldTV”.
- Represented Pampered Chef in litigation involving its PC logo, and alleged infringement of Loblaws’ “PC” trademark.
- Represented the Land Title Survey Authority of British Columbia in a copyright-related a class action brought on behalf of approximately 350 land surveyors of Ontario whose plans of survey were scanned and copied into the respondent Teranet’s digital database and made available online.
Bereskin & Parr LLP
IP boutique Bereskin & Parr LLP has capabilities in trademark, copyright and patent law, with core strengths in the areas of life sciences, technology and fintech, and chemicals. Donald Cameron has a strong reputation for IP litigation, particularly that relating to technology; Daniel Bereskin QC is highly regarded for his expertise in trademark law; and Micheline Gravelle acts as managing partner. The firm has offices in Toronto, Kitchener, Mississauga and Montréal.
DLA Piper (Canada) LLP
DLA Piper (Canada) LLP has a strong record in IP litigation, and is especially well equipped to handle multi-jurisdictional disputes, thanks in part to the firm's sprawling international platform. Areas of particular strength include pharmaceuticals and technology; Bruce Stratton in Toronto is recommended for his experience in disputes concerning computer-related technology. The team also noted for its work in the financial services, mining and energy sectors, and for its expertise in franchising. Litigator Sangeetha Punniyamoorthy chairs the practice and is recommended for her work on trademark enforcement and prosecution.
Other key lawyers:
Spin Master Corp.
Mountain Equipment Co-operative
Richter Gedeon Vegyeszeti Gyar RT
Tetra Tech Canada Inc.
Petronas Energy Canada Ltd. (previously Progress Energy Canada Ltd.)
Edibles Arrangements LLC, Edible IP LLC, Edible International LLC
Deeproot Green Infrastructures
Canadian Energy Services
Pfizer Inc., Pfizer Canada Inc.
- Defended Videotron in a patent infringement action brought by Rovi and Tivo, two US companies with significant patent licensing practices, on technology relating to interactive program guides.
- Represented a client in an appeal from an adverse finding in a patent infringement action and in damages litigation.
- Defended Pfizer in a patent infringement action brought by Janssen related to Janssen’s Remicade and Pfizer’s Inflectra, both of which are infliximab products for use in treating rheumatoid arthritis and various irritable bowel diseases.
According to clients, 'if you're looking for the gold standard in litigation, Goodmans LLP is one of the best'. The IP group is distinguished in part by its patent litigation practice, which is 'very strong' in the generics space and handles a significant amount of work for Apotex, a leading Canadian generics producer. Contacts for IP disputes include Dino Clarizio; Andrew Brodkin, 'a thorough tactician and orator'; Harry Radomski, who leads the IP litigation group; and Jaclyn Tilak, who has a growing practice in pharmaceutical disputes. The team also handles a wide range of non-contentious work, covering trademarks, copyright, and industrial designs, as well as trade secrets; group co-chair Amalia Berg is a key contact in this space.
‘Goodmans’ team has several decades of high-quality trial experience, and their turnover is very low. They are thoughtful and strategic in how they run cases, and they can expand or contract their team as needed. For pharmaceutical litigation, they are very strong within the Canadian field.’
‘The team has very good knowledge of case law, enabling them to make quick strategic decisions and quickly develop argument that supports these decisions. They think well on their feet and are well-attuned to their clients’ interests and how to advance them.’
‘Goodmans is one of a select few of tier one patent litigation teams in a market that is consolidating in Canada. Harry Radomski and Andrew Brodkin lead one of the top teams in the country, and are active in many leading litigations. They are thorough, and leave no stone unturned; if looking for the gold standard in litigation, this team is one of the best.’
‘Andrew Brodkin is a thorough tactician and orator.’
Apotex Inc. / Apotex Pharmachem Inc.
Canadian Generic Pharmaceutical Association
Trudell Medical International
Wabtec Holding Corp.
Westinghouse Air Brake Technologies Corporation
MSA Technology, LLC
Arterra Wines Canada
Give & Go Prepared Foods
Strataca Systems, LLC
Cognitive Systems Corp.
- Represented Gillette, Duracell and Procter & Gamble in an action commenced by Energizer under the Trademarks Act for depreciating the value of the goodwill of its ENERGIZER trademarks (related to the Energizer Bunny) and for making false or misleading statements in advertising DURACELL branded batteries.
- Defended Pharmascience in two patent infringement actions commenced by Teva, relating to Pharmascience’s intention to market low-cost subsequent entry versions of Teva’s Copaxone (glatiramer acetate) products, which are used to treat multiple sclerosis.
- Defended Apotex in a patent infringement actions commenced by Eli Lilly related to multiple patents covering the blockbuster ED drug, CIALIS. The trial was held in December 2019 and January-February 2020. The parties are awaiting a decision.
'Strategic, responsive and thorough', McCarthy Tétrault's IP group is perhaps best known for handling patent infringement, copyright and regulatory disputes. The practice group is most active in the areas of pharmaceuticals, telecoms and oil and gas. Group co-chair Steven Mason has a strong record in complex disputes; senior counsel Barry Sookman specializes in IP and IT litigation and arbitration, and has expertise in copyright and anti-piracy matters; and practice co-chair Alfred Macchione has extensive experience of the prosecution and management of patent and trademark portfolios. Named lawyers are based in the firm's Toronto office.
Other key lawyers:
‘McCarthy’s IP group is incredibly strategic, responsive and thorough. We have enjoyed working with them.’
The National Football League
Merck & Co
- Represented NFL and Bell in a challenge in the Supreme Court of a CRTC decision to ban the practice of “simultaneous substitution” for the Super Bowl.
- Acted for BMS in patent litigation in protection of ELIQUIS®, an anticoagulant drug.
- Advised Canopy Growth on all IP considerations associated with Canopy’s acquisition of Biosteel Sports Nutrition.
Norton Rose Fulbright has strengths in hard and soft IP, with highlights from the past year showing activity in IP-driven commercial transactions and a variety of IP litigation. A name to note in the patents space is Jung-Kay Chiu, who heads the national IP group, and has specialist expertise in patents regarding biotechnology and medical devices. Also recommended is Judith Robinson, who focuses on IP litigation, strategy and risk management. For trademarks, Karen MacDonald is a go-to name for clients from the luxury goods sector, bringing years of experience advising on large-scale anti-counterfeiting programs.
‘The Norton Rose team that manages our patent prosecution portfolio is excellent.’
Innovative Medicines Canada (Rx&D)
Canadian Tire Corporation, Limited
Royal Bank of Canada (RBC)
Johnson & Johnson
McCain Foods (Canada)
London Drugs Limited
Pfizer Canada ULC (Pfizer)
Mattel Canada Inc.
Biofert Manufacturing Inc.
- Represented the Canadian innovative pharmaceutical trade association, Innovative Medicines Canada, and 16 Canadian pharmaceutical companies in litigation against the Canadian Government seeking to strike down amendments to the Patented Medicines Regulations.
- Advised Canadian Tire Corporation, Limited on a broad range of intellectual property matters including brand strategy, trademark and labelling issues.
- Acted as counsel to the Royal Bank of Canada in numerous ongoing patent prosecution matters.
Based in the firm's Toronto office, the IP group at Torys has a very solid reputation in patent prosecution and IP litigation, with core strengths in the pharmaceuticals, agri-business, food and cosmetics sectors. Group lead Eileen McMahon specializes in patent law and patent strategy, as does partner Teresa Reguly. Edward Fan focuses on IP transactions, particularly in the technology sector. The group also fields a strong litigation team, with Andrew Bernstein and Andrew Shaughnessy noted for their work in pharmaceuticals-related patent disputes.
Horizon Pharma Inc.
Procter & Gamble
Canadian Tire Corporation, Limited
Canada Pension Plan Investment Board
Scientific Games Corporation
Novelis (Aditya Birla)
Shoppers Drug Mart
- Advised Horizon Pharma on inventorship, patent and data protection issues, as well as on a PMPRB public hearing, in relation to the patented medicine cysteamine bitartrate, sold under the trade name Procysbi.
- Act as trademark and patent counsel to Procter & Gamble for filing and prosecuting Canadian intellectual property.
- Represented Corteva Agriscience in all of its Canadian patent filings and prosecution, filing hundreds of Canadian patent applications relating to new varieties of canola, soybean and corn.
Aitken Klee LLP
Ottawa-based IP litigation boutique Aitken Klee LLP has a reputation for handling patent work involving pharmaceuticals and biologics, though the team has also shown activity in matters involving medical devices, natural resources, and IT and software. Contacts include Marcus Klee, who has additional experience in webcasting and environmental mediation, and Toronto-based Jonathan Stainsby.
Belmore Neidrauer LLP
Toronto-based IP boutique Belmore Neidrauer LLP is rated for its involvement in complex patent litigation in the areas of pharmaceuticals and biotechnology. Joint practice heads Peter Wilcox and Marian Wolanski both have considerable experience in biotech and pharmaceuticals cases; Wilcox is also key to the firm's strength in the agricultural sector and in oil field services. In addition to its standout patent work, the team also handles matters relating to copyrights, trademarks and confidential information.
Janssen (Johnson & Johnson)
National Oilwell Varco
Elea Vertriebs und Vermarktungsgesellschaft mbH
- Represented Pfizer in a patent infringement action alleging that Pfizer’s EpiPen infringed select claims of a seedlings patent for epinephrine auto-injector.
- Represented Janssen in a patent infringement action under the new PMNOC regulations concerning a product used to treat schizophrenia.
- Represented Janssen in a case alleging patent infringement by Apotex of a treatment for prostate cancer.
Bennett Jones LLP
Bennett Jones LLP has strengths in trademark and patent prosecution and portfolio management, IP-heavy transactional matters and high-value litigation. In this last area, the team is especially well known for handling matters involving concurrent litigation in the US and Canada. Covering hard and soft IP, the practice group advises a litany of well-known domestic and international clients on the registration and protection of large IP portfolios. Toronto-based Dominique Hussey handles trademark and patent litigation, and has experience in the area of pharmaceuticals. Stephen Burns in Calgary is a name to note for IP matters in the energy, utilities and infrastructure sectors.
Other key lawyers:
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.
Autumn Paper (Alexander McQueen)
Blue Ant Media Inc.
Bumble Bee Foods, LLC / Clover Leaf Holdings Company
Calgary Exhibition and Stampede Limited
Canadian Natural Resources Ltd.
De Havilland Aircraft of Canada Limited
Fuzhou Bonded Zone Hejili Equity Investment Limited Partnership
Guccio Gucci SpA
North West Redwater Partnership
The Canadian Copyright Licensing Agency
URUS Group LP and affiliates
Borden Ladner Gervais LLP
Borden Ladner Gervais LLP has experience across the spectrum of IP law, but stands out in particular for its portfolio management work. The firm runs a large practice group with a presence in several of the country's commercial centres, including Toronto, Ottawa, Calgary and Montréal. From across this nationwide network, the team handles a tremendous volume of patent and trademark registrations and applications. The team also stands out for its anti-piracy and anti-counterfeiting enforcement work. Jason Howg heads up the department from the Calgary office.
Other key lawyers:
Fasken advises large, well-known clients on a full range of IP matters, from portfolio management to strategic licensing to high-stakes litigation, covering trademarks, designs, copyrights and patents across a number of core industry sectors. The team has undergone an impressive period of growth over the past year. Among the new hires, Tony Morris joined from Norton Rose Fulbright in August 2019; senior counsel Jonathan Cutler joined from BCF Business Law in October 2019; Alain Leclerc (president of the Intellectual Property Institute of Canada) joined in December 2019; and Jason Markwell joined from Belmore Neidrauer LLP at the start of 2020. Two contacts for patent litigation are David Turgeon, who heads up the practice group, and Julie Desrosiers, who has a strong record of work in the pharmaceutical and agro-business sectors. Associate Michael Shortt is also recommended.
Other key lawyers:
‘Sharp knowledge; mandates executed quickly with high quality results.’
Merck Canada Inc.
Centre for Intellectual Property Policy and Ariel Katz
Pattison Outdoor Advertising
Bombardier Recreational Products (BRP)
Lupin Pharmaceuticals Inc
Bayer Canada Inc
Boehringer Ingelheim Canada Ltd/Ltée
Amgen & others
Element AI inc.
Pizzaiolo Restaurants Inc.
Entertainment Software Association
Quebecor Media Inc.
Uber Technologies inc.
Fiera Capital Corporation
Boots Company PLC
Holt, Renfrew & Co., Limited
Jamieson Laboratories Ltd.
The Jim Pattison Group
Greenhouse Grown Foods Ltd. (dba Windset Farms)
The Little Potato Company Ltd.
- Acted in a hostile takeover bid for the IP and IT assets related to the high-profile AEROPLAN loyalty program by Air Canada.
- Represented Bombardier Recreation Products Inc. (BRP) in a decade-long patent dispute against competitor Arctic Cat and obtained a permanent injunction to stop the sale, use and distribution of all infringing Arctic Cat snowmobiles in Canada.
- Represented multiple pharmaceutical companies in a constitutional challenge to the amendments to the Patented Medicines Regulations and to the work of the Patented Medicines Prices Review Board (PMPRB).
Osler, Hoskin & Harcourt LLP
Osler, Hoskin & Harcourt LLP is highlighted for its record in IP litigation, though the team also advises on trademark and patent prosecution, portfolio management, and IP-driven transactions. Toronto-based group chair John Cotter has experience in copyright and trademark litigation, as well as licensing disputes. In the patents space, the group is particularly in the pharmaceuticals sector, where Bradley White in Ottawa is a name to note.
Other key lawyers:
Robic LLP is an IP boutique providing a full range of IP services from its offices in Montréal and Quebec City. The firm houses a prolific trademark prosecution practice, and is also noted for its patent filing work. Other core strengths include copyright, industrial designs, and IP litigation. Bob Sotiriadis and Laurent Carrière are contacts in Montréal.
An integral piece of the firm's global IP service, the Toronto-based team at Baker McKenzie is active in multi-jurisdictional trademark portfolio management, brand protection, enforcement and anti-counterfeiting matters. Headed by Christopher Aide, the practice group has experience of a variety of industry sectors, including consumer goods, agriculture, and media and telecoms, but stands out in particular for its work in the fashion and luxury goods industries. The team has also handled patent litigation.
Burlington Northern and Santa Fe Railway Company (BNSF)
Cassels Brock & Blackwell LLP
Cassels Brock & Blackwell LLP's IP group is best known for its expertise in copyright law and is most active the entertainment industry. Casey Chisick is a key name here, providing litigation counsel and transactional advice. Chisick co-chairs the group alongside Alison Hayman, who focuses on trademark prosecution and enforcement. Both are based in Toronto.
Deeth Williams Wall LLP
Deeth Williams Wall LLP handles a variety of IP litigation, with particular expertise in technology and pharmaceutical patent litigation. Other key areas of work include trademark, trade secrets and anti-counterfeiting litigation. It also handles IP prosecution and enforcement. Founding partner Douglas Deeth is a contact in the team.
Toronto-based litigation boutique Lenczner Slaght is particularly well known for its record in patent cases, representing clients in the pharmaceuticals, IT, software and hi-tech sectors. Practice head and patent litigator Sana Halwani has extensive experience in headline domestic and cross-border disputes. In addition to patent disputes, the team also handles copyright, trademark, trade secret and misleading advertising disputes.
Other key lawyers:
Rovi Guides Inc. and TiVo Solutions Inc.
JAMP Pharma Corp
Rosseau Asset Management
Photech Environmental Solutions Inc.
Stephen Bulger Gallery and Stephen Bulger
- Acted as counsel to TiVo Solutions and its subsidiary Rovi Guides in three patent infringement actions, involving patents relating to interactive television program guides, DVR technology, and related technologies.
- Acted for Jamp Pharma Corporation in a filing notice of allegation setting out the legal and factual bases for the allegations relating to XARELTO (rivaroxaban), a medication indicated for prophylaxis of deep vein thrombosis.
- Acted as counsel to the Stephen Bulger Gallery in an action for copyright infringement in fine art photographs taken by the posthumously-discovered and now renowned photographer Vivian Maier.
Ridout & Maybee LLP
Specialist IP firm Ridout & Maybee LLP provides comprehensive litigation and strategy advice across patents, trademarks, copyrights and industrial designs. Areas of activity have included IT, chemicals, pharmaceuticals, forestry, energy and industrial design. The team has a presence in Burlington, Ottawa and Toronto, where senior litigator Kenneth Hanna is based.
Blake, Cassels & Graydon LLP has handled IP prosecution and enforcement, commercialization and disputes involving patents, trademarks, copyright, industrial designs and trade secrets. Litigator Melanie Baird is particularly known for her expertise in biologics and biosimilars. Group chair Chris Hunter has experience of IP acquisition and enforcement. The practice group saw a number of departures in February 2020, though still maintains a presence in Toronto, Calgary and Montréal.
Marks & Clerk
Marks & Clerk handles a full range of contentious and non-contentious IP work, covering patents, trademarks and copyrights. Patent litigator and engineering expert David Ruston is a key contact in Toronto, as is industrial specialist Jean-Charles Grégoire in Ottawa.
Stikeman Elliott LLP
Stikeman Elliott LLP's IP practice team has a track record in the acquisition and protection of IP rights, supporting clients with patents, trademarks, industrial designs and copyrights. Ottawa-based group head Justine Whitehead has extensive experience handling IP issues associated with corporate transactions.
Other key lawyers: