A dominant force in contentious matters with the Canadian Trademarks Office
Trolls. Increased trademark filings. Unused trademark registrations. Battling for market share. A highly competitive brand landscape.
Proceedings before the Canadian Trademarks Office are becoming increasingly contentious and we are ready to ensure that our clients’ valuable trademark rights and business interests are strongly and strategically protected.
Smart & Biggar is a dominant force in trademark law and litigation and we have successfully handled thousands of trademark opposition proceedings, non-use cancellation proceedings and related appeals on behalf of our clients. This track record of success, covering a vast range of industries, is the direct result of combining our sophisticated advocacy skills and experience with an in-depth knowledge of trademark law and opposition practice.
Our lawyers and trademark agents provide effective, practical and focused advice and representation and are highly experienced in all aspects of opposition and cancellation proceedings. In helping our clients develop strategies for success, we provide a complete range of services including: implementing trademark monitoring and investigation programs, providing counselling and advice on the competitive landscape and the likelihood of success, gathering evidence and preparing affidavits, preparing expert and survey reports, conducting cross-examinations of fact experts and witnesses, and written and oral advocacy before the Opposition Board and in appeal proceedings.
Key Contacts
Client Success
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Friedrich Geldbach Gmbh v M. Geldbach (Shanxi) Flange & Fittings Co, Ltd
2019 FC 1301Successfully invalidated the registration of a confusing trademark that was blocking the Applicant’s pending trademark application. The Applicant was successful on each ground of invalidity pled...Read More -
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Dundee Corporation v Goodman International Limited
2017 TMOB 137Successfully represented the applicant in these two oppositions to register the marks GOODMAN and GOODMAN & Design.Read More -
Bauer Hockey Corp v Easton Hockey Canada, Inc
2016 FC 1373Successfully represented Bauer Hockey Corp. in reversing a decision of the Trademark Opposition Board in a section 45 cancellation proceeding, maintaining on the register a trademark consisting of the...Read More -
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American Express Marketing & Development Corp v Black Card, LLC
Represented the applicant in these multiple oppositions. Successfully resolved with all oppositions rejected.Read More
Unparalleled Expertise in Trademark Oppositions & Cancellation Proceedings
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WTR
Four partners named as Global Leaders
2019 & 2020World Trademark Review -
MIP
Tier One Firm for Trademark Law
2014-2020IP Stars Handbook: Trademark & Copyright -
MIP
Canadian Trademark Contentious Firm of the Year
2009, 2011, 2014 - 2017 & 2020Managing IP Americas Awards -
WTR
Gold Band Firm
2011-2020World Trademark Review 1000 – The World’s Leading Trademark Professionals -
WTR
11 leading trademark practitioners
2020World Trademark Review 1000 – The World’s Leading Trademark Professionals -
MIP
Eight IP Stars in Trademark Law
2019IP Stars Handbook: Trademark & Copyright -
WTR
Six leading trademark practitioners
2019World Trademark Review 1000 – The World’s Leading Trademark Professionals -
Who's Who Legal
Four leading trademark practitioners
2019Who's Who Legal: Trademarks -
Who's Who Legal
17 leading IP experts
2019Who's Who Legal: Canada -
Euromoney LMG
Eight leading trademark experts
2016-2018Expert Guides: Trade Mark
Related Publications & Articles
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Yes, CIPO really will be writing to your client instead of to you
If you filed a Madrid application on behalf of your client, and designated Canada, you should have received a “Courtesy Letter” from the Canadian Intellectual Property Office (CIPO).Read More -
It’s the final countdown: Top 10 changes to Canada’s trademark law in 2019
After five years of anticipation, sweeping changes to Canada’s trademark law will finally come into force on June 17, 2019.Read More -
ACT NOW: Follow this ‘TO DO’ list to save money on Canadian trademarks before June 17th
By now you have probably heard that Canada’s trademark regime is changing, bringing about dramatic amendments to our law, regulations and practice.Read More -
Year-end Round-up: Notable Trademark Case Law From 2018
There were many interesting trademark cases coming out of 2018, a few of which are discussed below.Read More -
Trademarks in Canada: A year of change and global harmony
2018 was an exciting year for the trademarks profession in Canada. The long awaited changes to our trademark law will finally be implemented this year, which will be bring us in line with rest of the ...Read More -
The date is set: June 17, 2019 — Canada’s New Trademark Law will be in Force
After years of uncertainty, a date has been finally been set for the implementation of Canada’s new trademark law. The new law will come into force on June 17, 2019.Read More -
New Bill C-86 introduces many more changes to IP laws
On October 29, 2018, the Canadian Government introduced Bill C-86, A second Act to implement certain provisions of the budget tabled in Parliament on February 27, 2018 and other measures.Read More -
You don’t need to build it for them to come: Federal Court affirms trademark “use” for services does not require bricks and mortar business in Canada
Non-Canadian hoteliers have reason for celebration following the release of the Federal Court of Canada’s anticipated decision in Hilton Worldwide Holding LLP v Miller Thomson LLP, 2018 FC 895 (Hilton...Read More
Related News & Media
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Smart & Biggar partners hailed as “highly experienced,” “highly respected”, “skilled” and “one of the strongest trademarks experts” by Who’s Who Legal: Trademarks 2020
Smart & Biggar is pleased to share that three partners are listed in the Who’s Who Legal: Trademarks 2020 guide as being among the world’s leading lawyers in trademarks.Read More -
Mark Evans named Canada’s “Outstanding Practitioner of the Year: Trademarks” by Managing Intellectual Property
Smart & Biggar is proud to announce Mark Evans, Toronto managing partner, was named Canada’s “Outstanding Practitioner of the Year: Trademarks” by Managing Intellectual Property (MIP) as part of the 2...Read More -
5 Smart & Biggar associates have qualified to become Canadian trademark agents
Smart & Biggar is pleased to congratulate four associates — Tierney GB Deluzio in Toronto, Elodie Dion and Olivier Jean-Lévesque in Montreal, and Nora Labbancz in Ottawa — who wrote and passed the Tra...Read More -
Smart & Biggar, “the leading IP boutique in the trademarks space,” ranks as Gold Tier for Canadian trademarks in WTR 1000
Smart & Biggar comes out on top with a ‘gold tier’ ranking for Canadian trademarks in the 2020 World Trademark Review 1000 (WTR 1000) – The World’s Leading Trademark Professionals.Read More -
Chambers Global recognizes Smart & Biggar for “bench strength and quality representation” with Band 1 rankings in Intellectual Property and Intellectual Property: Litigation
Smart & Biggar is pleased to share that the firm continues to lead the market earning rankings as a Band 1 Intellectual Property law firm in the 2020 edition of Chambers Global – The World’s Leading L...Read More -
14 Smart & Biggar practitioners recognized in the 2020 edition of WIPR Leaders
Smart & Biggar is pleased to share that fourteen of the firm’s lawyers and agents have been recognized in the 2020 World IP Review (WIPR) Leaders, a comprehensive guide to the top intellectual propert...Read More -
Smart & Biggar shortlisted for seven North America awards by Managing Intellectual Property
Smart & Biggar is pleased to share that the firm has been shortlisted for an impressive and industry-leading seven Canadian IP awards at Managing Intellectual Property’s 2020 North America Awards.Read More -
Smart & Biggar makes a strong showing with 17 practitioners listed in Who’s Who Legal: Canada 2019
Who’s Who Legal: Canada recently published their 2019 guide, naming 17 Smart & Biggar lawyers and agents among Canada’s leading experts in Patents, Patent Agency, Trademarks, and Life Sciences.Read More