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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Fasken v Getemed
2022 TMOB 217Successfully defended international client’s trademark registration in Canada.Read More -
Randy River Inc v Osler, Hoskin & Harcourt LLP
2022 FC 1015Successfully defended client’s trademark registration in section 45 appeal.Read More -
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
Unparalleled Expertise in Trademark Oppositions & Cancellation Proceedings
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IAM & WTR
Canadian Patent Prosecution Firm of the Year
2024Global IP Awards -
MIP
Tier One Firm for Trademark Law
2014-2024IP Stars: Trademarks -
MIP
Canadian Trademark Disputes Firm of the Year
2009, 2011, 2014-2017, 2020 & 2022, 2024Managing IP Americas Awards -
WTR
12 leading trademark practitioners
2021 & 2024World Trademark Review 1000 – The World’s Leading Trademark Professionals -
WTR
Gold Band Firm
2011-2024World Trademark Review 1000 – The World’s Leading Trademark Professionals -
IAM & WTR
Canadian Trademark Firm of the Year
2023Global IP Awards -
WTR
13 leading trademark practitioners
2023World Trademark Review 1000 – The World’s Leading Trademark Professionals -
WTR
Four partners named as Global Leaders
2019, 2020 & 2022World Trademark Review -
WTR
14 leading trademark practitioners
2022World Trademark Review 1000 – The World’s Leading Trademark Professionals -
WTR
Five partners named as Global Leaders
2021World Trademark Review
Related Publications & Articles
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Canadian Trademark Law 2023: A Year in Review
2023 was an active year in Canadian trademark law. Canadian Courts addressed a wide range of issues, from licensing to comparative advertising to co-branding. This article highlights some important de...Read More -
Brand owners, pay attention: Extensions of time in Oppositions and cancellation proceedings will soon be significantly reduced in Canada
Recently the Canadian Trademarks Office announced that extensions of time available in Oppositions and Section 45 (non-use cancellation) proceedings will be significantly reduced after December 1st.Read More -
Canadian Trademark Law 2022: A Year in Review
The article highlights some of the most important new laws, cases, and practice directions from 2022 that brand owners should be aware of when doing business in Canada.Read More -
It’s official: Options for challenging “official marks” in Canada
“Official marks” are a unique feature of Canadian trademark law. Many trademark owners, even in Canada, are unaware of official marks. Those who are aware, are often unclear about the rights provided ...Read More -
The marking of trademarks in Canada
Trademark symbols are commonly seen in the Canadian and international marketplaces, and while they are easy to recognize, it’s important to understand the differences between them, their significance,...Read More -
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
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