Trademark Litigation

A trademark dispute is rarely just about a logo. It is about whether a business can keep operating under the name its customers know, and about the goodwill sitting behind that name.

Trademarks in Canada are federal. Registration and opposition run through the Canadian Intellectual Property Office, and an infringement claim can go to the Federal Court or to the Superior Court of Quebec, each with its own advantages depending on what you need and how fast you need it. Unregistered rights are protected too, through passing off and through the extracontractual liability rules in the Civil Code.

Quebec adds a layer. The province's language legislation governs how a mark can appear in commercial publications, on packaging and on public signage, including what French has to accompany a mark displayed in another language. A brand that is perfectly defensible as a matter of trademark law can still be non-compliant on a storefront in Montreal, and the two questions are worth answering together.

These files move on two tracks. There is the question of rights, and there is the commercial question of what the business needs to be able to do next week. We keep both in view.

Where we act

• Infringement and passing-off claims
• Oppositions and responses to opposition
• Cease-and-desist correspondence, sent and received
• Injunctions to stop continuing use
• Disputes over licensing and permitted use
• Claims involving depreciation of goodwill
• Coexistence and settlement agreements
• Language compliance questions affecting marks used in Quebec

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