Trade-Mark Services

Our firm offers a complete range of trade-mark services. The firm uses trade-mark portfolio management tools that ensure quick and effective tracking of the various steps in the registration and renewal process. Each member of our trade-mark law team practices equally well in French and in English. Our firm has particular experience in trade-mark matters relating to goods and services in the spheres of high technology, biotechnology, health, entertainment, multimedia, telecommunications, retailing, finance and manufacturing. In addition to serving Canadian businesses, our firm also has trade-mark law clientele from the United States and Europe.

We are well placed to analyze the situation of owners of Canadian or foreign marks and counsel how best to maximize their protection in Canada.We counsel our clients on a preventive basis as they develop their trade-marks in order to verify the availability of a proposed trade-mark and to explain potential strengths and weaknesses of each trade-mark option. We work with a network of foreign correspondents to develop protection strategies on a world wide scale according to the objectives of each client.

Our services:

Research and advice in view of registration

• Preliminary and full trade-mark availability searches
• Opinions concerning the availability and infringement of trade-marks
• Research and investigation concerning the use of trade-marks in Canada
• Research concerning the availability of trade names and corporate names
• Research concerning the availability and infringement of domain names

Filing services

• Filing and prosecution of trade-mark applications before the Canadian Intellectual Property Office
• Registration of trade names with provincial authorities
• Registration of domain names
• Representations before the trade-mark examiner following an examination report
• Representations within the context of opposition procedures filed by third parties

Trade-mark litigation

• Opposition procedures against trade-mark applications
• Procedures under section 45 of the Trade-marks Act to compel the owner of a registered trade-mark to show actual use of the mark
• Arbitration and mediation proceedings concerning domain names and other trade-mark related issues

Portfolio management services

• Renewal of registered trade-marks
• Strategic advice in the development of a Canadian and international trade-marks portfolio
• Examination of samples to verify the appropriate use of the trade-marks according to the requirements of Canadian law

Contracts

• Drafting of trade-mark licensing agreements and various other agreements involving trade-marks (distribution, franchise, strategic alliance, etc.)
• Drafting and filing of trade-mark assignments
• Drafting and filing, if need be, of domain name assignments and leases
• Trade-mark due diligence within the context of commercial contracts, mergers and acquisitions

The lawyers of our trade-mark practice group:

• Campbell J. Stuart - Head of the practice group

Table of Typical Fees in Trade-Mark Matters

* these fees are indicative only; they exclude disbursements such as photocopy, facsimile, long distance and messenger costs.

These and other client services are billed according to the hourly rates of the members of our firm working on the file and the disbursements incurred in the provision of services.