IP counsel with an eye for fine details and a grasp on the big picture
Throughout his career, Kwan has worked to protect and enforce some of the world’s most valuable brands. Known for his attention to detail, thoughtfulness, and collaborative approach, Kwan provides practical trademark advice based not only upon the law, but also on broader strategic business considerations that are unique to every client’s case.
In his trademark prosecution practice, Kwan regularly handles a wide range of matters across the trademark life cycle. Additionally, drawing on more than 10 years of litigation experience, he is able to proactively identify and counsel on potential points of contention, mitigating risks and unnecessary costs for his clients.
Savvy trademark strategist and experienced legal advocate
As a solicitor, Kwan focuses on trademark clearance, filing and prosecuting trademark applications with the Canadian Intellectual Property Office, and trademark portfolio strategy and management in Canada and around the world. Kwan also advises on IP-related contracts including licenses, assignments and other commercial agreements.
When it comes to litigation, Kwan is experienced in handling complex trademark disputes, including appearances before the Federal Court and Federal Court of Appeal on trademark infringement, descriptiveness and genericism claims, and matters of confusion relating to foreign language trademarks in Canada. He also has a successful track record appearing before the Trademarks Office on trademark opposition and summary cancellation proceedings.
Kwan’s clients span a wide variety of fields, including high-tech companies, internet companies, industrial manufacturers, online retailers, food and beverage companies, financial institutions, and hospitality companies, and from a wide variety of backgrounds, ranging from local start-up companies to multinational conglomerates. With a reputation as “thoroughly experienced in his field” (WTR 1000, 2020), Kwan is described as “responsive, organized, creative, and very easy to work with”, and clients have complimented his ability to work through issues and find creative ways to achieve business objectives (WTR 1000, 2021).
Kwan is comfortable communicating in Mandarin and has the ability to converse in Cantonese. This proficiency is an asset in working with clients who operate within the internationally-driven business community of the modern era.
- Industry Involvement
- In the Media
- "Beyond trademarks: Branding from a broader perspective", (co-speakers: Joanne Nardi, Alexandre Fallon and Jennifer McKenzie), Intellectual Property Institute of Canada (IPIC) annual conference, September 29, 2022
- "Distinctly Canadian: Unique Aspects of Trademark Prosecution in Canada", (co-presenter: Tierney GB Deluzio), Smart & Biggar webinar, July 14, 2022
- Guest instructor for "Intellectual Property in the Cannabis Context”, Osgoode Certificate in Cannabis Law and Regulation, Osgoode Hall Law School, April 2022
- "Top 10 Intellectual Property Cases of 2021", IP & Technology Law Section, the Canadian Bar Association (British Columbia Branch), February 23, 2022
- Intellectual Property for Litigators course, Continuing Legal Education Society of BC (CLEBC), November 2021
- "Canadian and U.S. Trademark Prosecution: Northern (high)lights and key differences that brand owners and counsel should know" (with Graham Hood), Smart & Biggar webinar, July 8, 2021
- Guest instructor for "Intellectual Property in the Cannabis Context”, Osgoode Certificate in Cannabis Law and Regulation, Osgoode Hall Law School, February 2021
- "Strategies for in-house counsel to manage intellectual property risk and opportunity" (with Evan Nuttall, Jonas Gifford, and Laura Easton), Association for Corporate Counsel-Alberta and Smart & Biggar webinar, November 26, 2020
- "One Year Later – Navigating Canada’s TM Law Changes" (with Philip Lapin and Jamie-Lynn Kraft), Smart & Biggar webinar, May 2020
- "Safeguard Your Business and Create Value - Why IP Matters for Technology Companies" (with Jonas Gifford and Matthew Leaper), BC Tech Association, Vancouver, March 7, 2019
- Former Chair, IP & Technology Law Section, Canadian Bar Association, British Columbia Branch
- Fellow, Intellectual Property Institute of Canada (IPIC)
- Mentor, The IPIC Mentorship Program
- Member, International Trademark Association; member of the Famous and Well-Known Marks Committee (2020-2023); member of the Anti-counterfeiting Committee (2018-2019); member of the Intellectual Property Office Practices Committee – Canadian Subcommittee (2014-2017)
- Guest lecturer on intellectual property topics, Association of Professional Engineers and Geoscientists of British Columbia (APEGBC), 2011 to 2013
- "How has Canada's trademark landscape changed and what lies ahead?" (co-author: Jamie-Lynn Kraft), Managing Intellectual Property, July 10, 2020
- "Don’t Let Your Brand Go to Pot: Challenges for Brand Owners in Canada’s Emerging Cannabis Industry " (co-author: Graham Hood), The Licensing Journal , Volume 38, No. 4, April 2018
- Quoted in "Smart & Biggar lawyers explore issues impacting brand owners with trademarks to file and protect", Canadian Lawyer Magazine, July 21, 2022
- Quoted in "Canada’s budding cannabis trade mark industry", Managing Intellectual Property,
March 6, 2018