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, which are then well positioned for her to enforce them in Canada.
Ekaterina calls on 20 years of experience to advise 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”.
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.
Ekaterina's client base ranges from small and medium size 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.
Qualifications
- News
- Speaking
- Industry Involvement
- In the Media
- “Design Rights, Copyright and Trade Dress: Protecting Product Designs Globally”, IPIC’s 2019 Annual Conference, Ottawa-Gatineau, September 26, 2019
- “A Trademark Lawyer’s Experience with Surveys in Trademark Cases”, Regroupement des praticiens du droit des marques de commerce (RPM), Fall, 2019
- "Indications géographiques et autres indicateurs, d’origine et de source" (Geographical Indications and other indicators, of origin and of source) given at the conference "Une nouvelle réalité internationale pour les marques au Canada" (A new international reality for brands in Canada) organised by the University of Montreal in association with the University of Geneva and the Université libre de Brussels (the “G3”), December 2016
- “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
Memberships
- 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; former member of the Alternative Dispute Resolution Committee (2016-2019); former 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.
Teaching Activities
- 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
Publications
- Quoted in the article "New opportunities for GI protection in Canada; food brands warned to tread carefully," which appeared in World Trademark Review Daily, September 20, 2017
- "No smoke without fire" (co-author: François Guay), Intellectual Property Magazine, June 2015
- Quoted in the article "La propriete intellectuelle en cinq questions," which appeared in Les Affaires on December 13, 2014
- "How do design and copyright interact?: Canada" (co-author: François Guay), Managing Intellectual Property, December 2012
- "Smart & Biggar prevails in precedent-setting case as Court declares Bodum's industrial designs invalid," November 2012
- Mentioned in the article "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
- "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.