Trusted trademark adviser and litigator excels in creative, sophisticated IP solutions
A trusted advisor to her trademark and litigation clients, Ekaterina knows how to build a sophisticated, innovative legal strategy, piece by piece, that aligns with her clients’ business goals. Ekaterina helps clients in strengthening their brands and trademarks, well positioning them for her to enforce them in Canada.
Calling on over 20 years of experience, she advises her clients on trademark protection, management, enforcement, litigation and strategic counselling services. Her practice spans the entire branding lifecycle and she has significant expertise in all aspects of trademark law, including brand selection and clearance, trademark oppositions and cancellations, trademark and trade dress litigation.
She successfully advocated for her clients before the Federal Court of Canada on litigations related to trademarks, industrial designs and passing-off. She also represents clients in trademark oppositions and section 45 proceedings (proving use/non-use of a registered trademark) before the Canadian Intellectual Property Office and the Federal Court.
Her innovative approach, including research-based evidence and strategies for litigation, has benefited clients and proven effective in cases relating to consumer perceptions in trade dress and brand protection. For example, in the Federal Court case involving Captain Morgan rum, [Diageo Canada v Heaven Hill Distilleries et al, 2017 FC 571], the use of consumer research as evidence was a key factor in winning the trial, and was recognized by the Marketing Research and Intelligence Association as “Best Multi-Stakeholder Research Initiative”.
Clients have described Ekaterina as a litigator who “garners a lot of respect in the industry [and] has built a niche for herself in the Montreal market” (WTR 1000, 2020).
Helping protect and enforce valuable trademarks and geographical indications
Ekaterina has extensive experience with assisting clients in the enforcement of their intellectual property rights against third-party infringers, including trademarks, trade dresses, industrial designs, copyright, protected geographical indications and foreign appellations of origin. From sending cease and desist letters, negotiating settlements, and when necessary, filing lawsuits, Ekaterina provides enforcement plans fit to measure each of her client’s needs and budgets.
Recognized for her skill in negotiations, clients have applauded her ability to “[put} herself in the position of opposing parties to figure out what she needs to do. She gives very precise advice and is focused on practical action, not only theory.” (WTR 1000, 2021).
Her client base ranges from small and medium-sized local enterprises to multinational corporations operating in Canada, the United States and Europe. She has advised clients in a wide variety of industries, including food and drink, apparel, shoe, fragrance, beauty products, sports equipment, and insurance. Her clients also include foreign governmental bodies responsible for protecting their country’s appellations of origin and geographical indications for wines, spirits, and food products.
- Industry Involvement
- In the Media
- "Location Matters: Understanding geographical indications and other indicators of origin in a Canadian context”, (with Olivier Jean-Lévesque), Smart & Biggar Webinar, September 16, 2021
- “Best Practices: Preparing Evidence in Trademark Matters”, Intellectual Property Institute of Canada (IPIC) Webinar, June 22, 2021
- "Year in Review in IP Law", Intellectual Property Institute of Canada (IPIC) Webinar, February 12, 2021
- "Geographical Indications Update", AIDV Canada Annual Conference, Vancouver, BC, February 24, 2020
- "Design Rights, Copyright and Trade Dress: Protecting Product Designs Globally", IPIC’s 2019 Annual Conference, Ottawa-Gatineau, September 26, 2019
- "Geographical Indications and other indicators, of origin and of source",
A New International Reality for Brands in Canada, G3, December 2016, Montreal
- "The Canadian Wine Market: From State Monopoly and Trade Barriers to IP Regimes", AIDV International Conference in Siena, Italy, September 2016
- Trademark oppositions, Continuing Education Service of the Quebec Bar, November 2003
- Fellow, Intellectual Property Institute of Canada; member of the Litigation Committee; member of the Women in IP Network for the 2015-2017 term
- Member, International Trademark Association; member of the Geographical Indications Committee (2020-2023); member of the Alternative Dispute Resolution Committee (2016-2019); subcommittee Chair of the Enforcement Committee General Trademark Enforcement Matters (2014-2015); former member of the Enforcement Committee; former member of the Trade Names Subcommittee of the Enforcement Committee
- Board Member, Association des juristes du droit de la vigne et du vin (AIDV)
- Member, Association des practiciens du droit des marques et des modèles (APRAM)
- Member, Board of Trade of Metropolitan Montreal
- Member, Greek Lyceum of Women in Montreal
- Member, Patient Advisory Committee for the Quebec initiative to improve quality of life and palliative care through the comprehensive application of patient-reported outcomes.
- Director, IPIC-McGill Understanding Trademarks Course, Montreal, July 2019: As Director, Ekaterina worked tirelessly at updating all the course materials in the face of the recent widespread amendments to the Trademarks Act
- Assistant Director, IPIC-McGill Understanding Trademarks Course, Montreal, 2017 and 2018
- Workshop Leader for Tips and Strategies in Opposition Proceedings, IPIC-McGill Understanding Trademarks Course, Montreal, 2018
- Workshop Leader for Trademark Searches and Risk Assessments, IPIC-McGill Understanding Trademarks Course, Montreal, 2015-2018
- "Vancouver Island whisky maker in battle with Scottish association over name", CBC News, July 7, 2021
- "The cheeky T-shirt that keeps Anne of Green Gables's guardians on edge", Maclean's, October 5, 2020
- "New opportunities for GI protection in Canada; food brands warned to tread carefully", World Trademark Review Daily, September 20, 2017
- "La propriete intellectuelle en cinq questions", Les Affaires on December 13, 2014
- "Philip Morris a violé la marque déposée MARLBORO d’Imperial Tobacco Canada", Le Monde Juridique Le magazine des juristes du Québec (volume 20, number 6), 2012
- “Global Wine Law - An AIDV Guide: Canadian chapter” (co-author: Olivier Jean-Lévesque), International Association of Lawyers for Vine and Wine Law,
- "No smoke without fire" (co-author: François Guay), Intellectual Property Magazine, June
- "How do design and copyright interact?: Canada" (co-author: François Guay), Managing Intellectual Property, December 2012
- "What Every Trademark Litigator Needs to Know About Trademark Oppositions", Développements récents en droit de la propriété intellectuelle (2003), Service de la formation permanente du Barreau du Québec, vol. 197, pages 69-108
Cited with Approval by Courts
Ekaterina Tsimberis' article, titled "What Every Trademark Litigator Needs to Know About Trademark Oppositions" at page 73, was cited with approval by the Quebec Court of Appeal on March 30, 2012 when the appellate court issued its long-awaited and publicized decision in Industries Lassonde Inc. and A. Lassonde Inc. v. L'Oasis d'Olivia Inc., 2012 QCCA 593, and held that the Appellants acted in a manner that is in conformity with the practice when they instituted both a trademark infringement action in the Superior Court of Quebec alongside a trademark opposition proceeding before the Trademarks Office.