Skilled trademark lawyer helps brand owners protect, manage and monetize trademark portfolios
A highly experienced trademark lawyer, Graham’s counsel is sought after by brand owners focused on building and protecting their brands and reputations through efficient trademark clearance and prosecution. He regularly advises clients on effective strategies to manage and monetize their trademark portfolios and has successfully enforced clients’ trademark rights in Canada’s Federal and provincial courts.
Graham’s practice spans all aspects of trademark counselling, prosecution and litigation. He counsels brand owners through trademark selection, clearance and prosecution, as well as opposition proceedings, section 45 non-use, cancellation proceedings and invalidity expungement proceedings. His previous experience at the Canadian Trademarks Office benefits clients looking to defend their trademark applications and registrations before the Trademarks Opposition Board.
Graham counsels many famous brand owners, from leading professional sports teams to popular social media platforms to renowned consumer electronic companies to famous fashion houses, in the enforcement and protection of their IP rights in Canada.
Seasoned litigator and expert counsel for IP crime and anti-counterfeiting matters
Graham's litigation practice covers both the Federal and the provincial courts and extends to actions and summary applications for passing off, trademark and trade dress infringement, depreciation of goodwill and the importation, distribution, marketing and sale of counterfeit goods.
As one of the firm’s leading experts in anti-counterfeiting, Graham is also experienced in protecting brand owner’s marks both online, across online marketplaces and social media platforms, and at Canada’s borders, working closely with the Canada Border Services Agency to enforce clients’ trademarks and copyrights and prevent the importation of counterfeit goods and pirated works.
He sits on the Steering Committee of the Canadian Anti-Counterfeiting Network, and Chairs the Canadian Subcommittee of the International Trademark Association’s Anticounterfeiting Committee.
- Industry Involvement
- In the Media
- "Managing IP and Compliance Risks in a Digital World: Emerging legal issues related to use of artificial intelligence and data in digital business operations", (co-speakers: Patrick Roszell, Alice Tseng and Neil Padgett), Association of Corporate Counsel (ACC) Ontario webinar, September 28, 2022
- "Trademarks between Friends: Key differences in Canadian and U.S. Trademarks practice" (with Christian Bolduc), Smart & Biggar Webinar, May 19, 2022
- "Canadian and U.S. Trademark Prosecution: Northern (high)lights and key differences that brand owners and counsel should know" (with Kwan T. Loh), Smart & Biggar Webinar, July 8, 2021
- Panelist, "Meeting Distinctiveness Requirements for International Trademarks", Strafford Webinar, May 25, 2021
- Panelist, "Recreational Cannabis: Key intellectual property and advertising issues”, webinar, Ontario Bar Association, May 19, 2021
- Speaker, "The Perils of U.S. Centricity in Trademark Practice: What U.S. Companies and Their Attorneys Assume about Foreign TM Laws at Their Own Risk”, virtual conference, American Bar Association – Intellectual Property Law (ABA-IPL) Section conference, April 12, 2021
- Speaker, "IP Law: New industry and regulatory developments”, webinar, Canadian Lawyer, March 10, 2021
- Panelist, "Top 10 things to make your day more productive in an age of constant disruption and remote work", Canadian Lawyer Young Lawyers Summit, Virtual conference, November 24, 2020
- "Managing your organization's IP risk and opportunity" (with Patrick Roszell), Association for Corporate Counsel-Ontario and Smart and Biggar webinar, November 19, 2020
- Panelist, “Global Anticounterfeiting Enforcement: Hot Topics in a New Era,” Aftermarket IP Forum, Virtual conference, November 19, 2020
- Panelist, “The Strain I Own: Plant Breeders Rights and Patents” (co-panelist: Lei Liu), GrowUp Conference and Expo, Niagra Falls, Ontario, September 13, 2019
- Presenter, “Trademark Considerations for ‘Ganjapreneurs’”, Technology and Intellectual Property (TIP) Annual Conference, University of Toronto Law School, Toronto, Ontario, March 4, 2019
- Panelist, “Resources: Industry, Agencies & Organizations”, 23rd Annual Fraud and Anti-Counterfeiting Conference, Toronto, Ontario, October 5, 2018
- Keynote speaker, “Deconstructing NAFTA 2.0”, Canadian Anti-Counterfeiting Network (CACN) Annual General Meeting, Toronto, Ontario, October 3, 2018
- Presenter, “How to Protect Your Designs: Legal Protection in the Fields of Fashion, Graphic & Interior Design”, Ryerson Communication and Design Conference, Toronto, Ontario, March 3, 2017
- Member, International Trademark Association; member of the Anti-Counterfeiting Committee (2016-2021); member of the Unreal Campaign Committee (2022-2023)
- Member, Law Society of Ontario
- Member, Canadian Bar Association
- "Cannabis retailers have their work cut out for them in terms of trademark and brand strategy", World Trademark Review Daily, April 30, 2021
- "How the USMCA will affect Canadian IP", Managing Intellectual Property, October 3, 2018
- "Plant breeders’ rights overlooked in cannabis IP strategy", Law Times, June
- "Canada’s budding cannabis trade mark industry", Managing Intellectual Property, March 6, 2018
- ’“Tim Denis in the Morning”, NewsTalk 610 CKTB, September 28, 2015
- "Canadian copyright law 'remarkably complex", CBC News, September 24, 2015
- "Trade mark litigation in Canada: overview" (co-author: Mark Evans), Trade Mark Litigation Global Guide 2021 edition, Thomson Reuters, April 2022
- "End of the line: Federal Court finds Subway's trademark rights infringed by cannabis retailer", IP Litigator, September/October 2021 issue
- "Practical strategies for protecting and enforcing cannabis brands across North America" (co-author: Shabnam Malek), World Trademark Review, August 26, 2021
- "Don’t Let Your Brand Go to Pot: Challenges for Brand Owners in Canada’s Emerging Cannabis Industry" (co-author: Kwan Loh), The Licensing Journal, Volume 38, No. 4, April 2018
- "Trademark Law and Regulation" (co-authors: Daniel Davies, Jennifer Ponton), Lexis Practice Advisor Canada, September 2016
- "Court reinforces high standard for rejecting marks based on living individual's reputation" (co-author: Mark Evans), World Trademark Review Daily, July 22, 2014
- "Famous trade marks may help to insulate an allegedly confusing trade mark from a reasonable likelihood of confusion", Oxford Journal of Intellectual Property Law & Practice (2014) 9 (9): 706-708, July 9, 2014
- "Federal Court of Canada promotes a purposive interpretation of the remedial provisions of the Trademarks Act, with a view to providing greater access to relief", Oxford Journal of Intellectual Property Law & Practice (2014) 9 (8): 626-628, May 23, 2014
- "Harley-Davidson may sell Screamin' Eagle clothing in association with famous house mark" (co-author: Mark Evans), World Trademark Review Daily, March 20, 2014
- "What You Don't Know Can Hurt You: An Overview of Key Legislative Regimes Applicable to Information Technology and E-Commerce Law in Ontario", The Ontario Bar Association Institute, February 2012
- "Norwich Orders: A Remedy Adapted to the Digital World", Intellectual Property, Federated Press, Volume XVI, No. 4, December 2011