Heer Law

Trademarks; Trademark Prosecution; Trademark Clearance and Registrability; Brand Protection; Trademark Classification; Trademark Portfolio Management

Kimberley Baillie is a trademark agent at Heer Law with more than 20 years of experience in Canadian trademark prosecution and portfolio management.

She advises Canadian and international clients on trademark clearance, registrability, filing strategies, prosecution and the maintenance of trademark rights. Kimberley conducts clearance searches, provides registrability opinions and prepares responses to objections raised by the Canadian Intellectual Property Office, including office actions and provisional refusals. She also advises on evidence of use, acquired distinctiveness and strategies for overcoming objections to registration.

Kimberley works with start-ups, small and medium-sized businesses and large corporations. Her experience in both private practice and at the Canadian Intellectual Property Office gives her a detailed understanding of examination policy, procedure and the practical considerations affecting Canadian trademark applications.

She is internationally recognized for her expertise in the Nice Classification of goods and services. Since 2016, Kimberley has served as the Intellectual Property Institute of Canada’s representative to the World Intellectual Property Organization’s Nice Union Committee of Experts. She is ranked in the Bronze Tier for trademark prosecution by World Trademark Review 1000.

Kimberley became a registered Canadian trademark agent in 2006. She holds a Certificate in Intellectual Property from the World Intellectual Property Organization and is a graduate of Algonquin College’s legal administration studies program.

During her career, Kimberley has worked in private intellectual property practice, including at Smart & Biggar and Gowling WLG, and has held several positions within the Canadian Intellectual Property Office. Her CIPO roles included Trademark Examiner, Acting Manager of the Trademarks Branch and Acting Manager of Technical Policy.

Her work at CIPO included contributing to the implementation of the Nice Classification in Canada, Canada’s participation in TMClass with the European Union Intellectual Property Office and the training of Canadian trademark examiners. She received a CIPO CEO Sector Head Merit Award for her contributions to Canada’s adoption of the Nice Classification Agreement and a Director General Merit Award for her work training trademark examiners.

Kimberley has served as a developer of the College of Patent Agents and Trademark Agents’ trademark-agent knowledge examinations and previously sat on the Board for the Trademark Agent Examinations. She also contributed to the College’s Trademark Agent Professional Foundations Working Group.

She regularly writes and speaks on the Nice Classification and Canadian trademark practice. Her publications have addressed classification in the metaverse, changes to successive editions of the Nice Classification and Canada’s participation in meetings of the Nice Union Committee of Experts. She has presented on Nice Classification to professional audiences and on trademark issues to the World Intellectual Property Organization, the Business Development Bank of Canada and educational institutions.

English

• College of Patent Agents and Trademark Agents — registered trademark agent

• Intellectual Property Institute of Canada

• Co-Chair, Intellectual Property Institute of Canada IP Trade Policy Committee

• Nice Classification Expert and Intellectual Property Institute of Canada representative to the World Intellectual Property Organization Nice Union Committee of Experts

• Former member, Board for the Trademark Agent Examinations

• Contributor, College of Patent Agents and Trademark Agents Trademark Agent Professional Foundations Working Group