Intellectual Property Law

Noted for both its depth of knowledge and its breadth of experience, the Cassels Intellectual Property team is widely recognized as one of the strongest in Canada. We advise domestic and international clients, in a wide range of industries, on the protection, management, and enforcement of all types of intellectual property.

COPYRIGHT

Our leading edge IP lawyers don’t just advise on copyright law – they help shape it. We’ve been involved in many of the key copyright developments in Canada over the last decade. Just a few of our recent engagements include:

  • Five appeals to the Supreme Court of Canada – SOCAN v. Bell Canada, Entertainment Software Association v. SOCAN, Rogers Communications v. SOCAN, Alberta v. Access Copyright, and Canadian Broadcasting Corporation v. SODRAC – that have collectively reshaped the Canadian copyright landscape
  • Two of the largest copyright class actions in Canadian history
  • Countless royalty proceedings before the Copyright Board of Canada, along with related litigation in the Federal Court and the Federal Court of Appeal
  • Copyright-related proceedings before the Canadian Competition Tribunal
  • Appearances before standing committees of the Canadian Parliament and Senate, charged with studying options for copyright reform

The Cassels team has represented clients in a wide range of industries, from music, film, TV, video games, and publishing to software, higher education, building products, and more. We add value to our copyright clients in many different ways, including:

  • Advice and counsel on Canadian and international copyright law
  • Copyright infringement litigation for copyright owners and users, as well as their representatives and insurers
  • Negotiating and drafting licence agreements
  • Copyright registration in Canada and the US
  • Chain of title analysis, including copyright reversion
  • Purchase and sale of copyright catalogues and other valuable assets

Known internationally for its expertise in the collective administration of copyright, the Cassels team also acts or has acted for a host of Canadian copyright collective societies and industry trade associations in proceedings before the Copyright Board of Canada. We also advise copyright users on compliance with certified, represent them as objectors and interveners in Copyright Board proceedings, and help them navigate other unique aspects of the Canadian copyright landscape.

TRADEMARKS

Our trademark lawyers advise some of the most valuable and high-profile Canadian and international brands – as well as referring law firms around the world – on the protection, enforcement and licensing of various intellectual properties. We assist our clients with:

  • Trademark applications
  • Opposition and expungement proceedings
  • Trademark litigation
  • Trademark searches nationally and internationally
  • Buying, selling, and licensing valuable marks

Our leading edge, in-house computerized trademark search facilities permit us to identify, without delay, whether a proposed trademark already exists in either Canada or the United States. We can conduct manual searches in Canada (three to four days or expedited to 48 hours), oversee trademark availability searches in the US and elsewhere, and file applications in Canada and around the world through our extensive network of foreign agents.

The Cassels team has a significant presence before the Trademark Opposition Board, which handles both opposition and summary cancellation proceedings. That has given rise to many related proceedings in the Federal Court and the Federal Court of Canada. We also work with clients on opposition proceedings in virtually all of the world’s most important trademark jurisdictions, including the United States, China, India, South Korea, the United Kingdom, France, Germany, Russia, Australia, Singapore, and the European Union.

Beyond our prosecution, opposition, and dispute practice, our trademark lawyers have become well-known for their strategic advice and counsel. We routinely apply our specialized expertise in areas well beyond traditional trademark practice, assisting clients and other law firms to execute complicated transactions involving intellectual property. We have extensive experience with trademark licensing, due diligence, and valuation, as well as with the purchase and sale of valuable brand assets.

PATENTS & INDUSTRIAL DESIGNS

Inventions and designs are often among a business’s most valuable assets. Our sophisticated team brings a multidisciplinary approach and a wealth of diverse experience to its work on patents and industrial designs. We work with our clients on all aspects of their global patent and industrial design strategies, including

  • Advising on the patentability of inventions and the registrability of industrial designs
  • Overseeing patent and industrial design searches in Canada and around the world
  • Preparing and filing applications under the Industrial Designs Act
  • Supervising the preparation, filing, and prosecution of patent applications in Canada and around the world
  • Assessing the ownership of rights in inventions and designs
  • Analyzing the scope of patent and industrial design rights
  • Negotiating licences and agreements
  • Conducting due diligence and other strategic reviews
  • Advising on commercial transactions involving patents and industrial designs
  • Conducting litigation relating to the enforcement and defence of patent and industrial design rights

INTELLECTUAL PROPERTY AUDITS AND POLICIES

Many companies find that, despite the value of intellectual property to their business, they place too little importance on understanding what IP they own, what IP they use, and how to secure the rights they rely on every day. Often, these issues come into focus on the eve of an important transaction, when it’s too late to implement optimal solutions. Other times, the issues become apparent only through litigation that could have been avoided.

The Cassels team helps clients realize value and manage risk by designing and conducting systematic intellectual property audits. A careful IP audit can help avoid unnecessary surprises and identify potential threats. It can also reveal underutilized or undervalued assets that can boost a company’s bottom line.

We also help clients secure their intellectual property rights proactively by developing internal policies to govern the ownership, management, registration, and use of IP, as well as employment and non-disclosure agreements that help ensure that their IP is protected from the moment of its creation.