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.
Key Contacts
Client Success
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Ultima Food Inc v M-C Dairy Company (1991) Limited
2022 TMOB 011Successfully represented the opponent in these six oppositions to register images of cartoon-like characters.Read More -
Andrea Wilson, c.o.b. as Achieve v AchieveForum, Inc
2022 TMOB 264Successfully represented the applicant in this opposition to the mark ACHIEVEFORUM.Read More -
Institut National de l’Origine et de la Qualité v Établissements Rivoire-Jacquemin, Société Anonyme
2021 TMOB 162Successfully opposed the registration of the trademark JURAMAN of Établissements Rivoire-Jacquemin SA, in association with “cheeses, except blue cheeses”, on behalf of the Opponent Institut National d...Read More -
Michaels v Unitop Spolka Z Organiczona Odpowiedzialnoscia
2020 FC 1031Successfully obtained a costs award for successfully defending the client on appeal.Read More -
JTI-Macdonald TM Corp v Kabushiki Kaisha Studio Ghibli
2020 TMOB 123Successfully defended an opposition to registration of the client’s famous Studio Ghibli design mark.Read More -
Michaels v Unitop Spolka Z Organiczona Odpowiedzialnoscia
2020 FC 937Successfully defended the client’s family of SESAME SNAPS trademark registrations from a cancellation attack.Read More -
Anenda Systems Inc v EasyTrim Reveals Inc
2020 TMOB 96Successfully opposed three trademark applications on the basis that the marks depicted functional aspects of the goods (building siding materials). A rare finding of non-registrability due to function...Read More -
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, as t...Read More
Unparalleled Expertise in Trademark Oppositions & Cancellation Proceedings
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MIP
Tier One Firm for Trademark Law
2014-2022IP Stars: Trademarks -
WTR
14 leading trademark practitioners
2022World Trademark Review 1000 – The World’s Leading Trademark Professionals -
WTR
Gold Band Firm
2011-2022World Trademark Review 1000 – The World’s Leading Trademark Professionals -
MIP
Nine IP Stars in Trademark Law
2022IP Stars: Trademarks -
WTR
12 leading trademark practitioners
2021World Trademark Review 1000 – The World’s Leading Trademark Professionals -
WTR
Four partners named as Global Leaders
2019 & 2020World Trademark Review -
MIP
Canadian Trademark Contentious Firm of the Year
2009, 2011, 2014-2017 & 2020-2022Managing IP Americas Awards -
WTR
11 leading trademark practitioners
2020World Trademark Review 1000 – The World’s Leading Trademark Professionals -
Who's Who Legal
19 leading IP experts
2019Who's Who Legal: Canada -
MIP
Eight IP Stars in Trademark Law
2019 & 2021IP Stars: Trademarks
Related Publications & Articles
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Supreme Court of Canada denies leave to appeal in Travelway Group International Inc v Group III International Ltd
The Supreme Court of Canada has now put an end to a dispute between Wenger SA, Group III International Ltd and Holiday Group Inc (collectively, “Wenger”) and Travelway Group International Inc (“Travel...Read More -
Down, but not out – initial adverse decision not a bar to future recovery of .ca domain name
A pair of recent decisions under the Canadian Internet Registration Authority (“CIRA”) Domain Name Dispute Resolution Policy (“CDRP”) demonstrate that a trademark owner who fails to obtain a domain na...Read More -
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
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 t...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...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 Leadi...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 pro...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