Professionals

Ekaterina Tsimberis
Partner, Montreal
Barrister and Solicitor,
Trademark Agent

 

CONTACT
Phone: 514.954.1500
Fax: 514.954.1396
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YEAR OF CALL
Quebec Bar 1999
QUALIFICATIONS
  • McGill University B.Sc. (Physiology) 1995
  • Université de Montréal LL.B. 1998
  • Registered Trademark Agent 2001
 

Ekaterina Tsimberis’ practice focuses on providing sophisticated trademark protection, management, enforcement, litigation and strategic counselling services. Her practice spans the entire branding lifecycle and she has highly significant experience and expertise in all aspects of trademark law, including trademark and trade-dress litigation, brand selection and clearance, trademark oppositions and cancellations.

Ekaterina Tsimberis has practised in the field of intellectual property law for 15 years with a focus on trademark litigation and trademark law.  

She calls on over a decade of experience to assist clients faced with litigation related to trademark infringement, copyright infringement and passing-off proceedings before the Federal Court of Canada. She also represents clients in trademark oppositions and section 45 proceedings (proving use/non-use of a registered trademark) before the Canadian Intellectual Property Office and the Federal Court.

Ekaterina has extensive experience with assisting clients in the enforcement of their intellectual property rights against third-party infringers, including trademarks, trade dresses, patents, industrial designs, copyrights, protected geographical indications and foreign appellations of origin. Her innovative approach includes using research-based evidence and strategies for litigation which has benefited clients and proven effective in cases relating to consumer perceptions in trade dress and brand protection. For example, in the Federal Court case involving Captain Morgan rum, [Diageo Canada v Heaven Hill Distilleries et al, 2017 FC 571] the use of consumer research as evidence was not only key factor in winning the trial, it was also recognized by the Marketing Research and Intelligence Association as “Best Multi-Stakeholder Research Initiative” and cited for re-energizing the use of survey evidence by the law profession.
  
As a Canadian trademark agent, Ekaterina also acts on behalf of local and foreign clients before the Canadian Intellectual Property Office to secure trademark registrations, oppose applications, and strike out registrations, as well as obtaining protection of geographical indications. She regularly provides registrability and availability opinions to clients looking to select new trademarks or to expand the range of products and services covered by existing trademarks. Ekaterina also provides trademark infringement and validity opinions. She manages extensive trademark portfolios and provides strategic counselling to assist clients with identifying, building and defending their most important intellectual property assets. In addition to obtaining trademark protection in Canada, she works to obtain trademark registrations abroad for clients through the firm's vast network of foreign correspondents.

Through the course of her career, Ekaterina has developed a number of specialized skills, including:

  • counselling clients and working in concert with survey experts in the design and implementation of consumer surveys required in the context of trademark proceedings or disputes on issues relating to confusion, reputation, public perception and distinctiveness of trademarks; and
  • protecting foreign appellations of origin in Canada for a variety of products such as wines and cheeses.

Ekaterina's client activities involve small and medium enterprises, and multinational corporations operating in Canada, the United States and Europe. She has worked with organizations representing a wide variety of industries, including food and drink, apparel, shoe, fragrance, beauty products, hockey equipment, and insurance. She has also assisted foreign governmental bodies that are responsible for ensuring the protection of their country’s appellations of origin and indications of origin abroad.

Rankings and recognition

  • Awarded the “Best Multi-Stakeholder Research Initiative”, by the Marketing Research and Intelligence Association, alongside CorbinPartners, for consumer survey research conducted in Diageo Canada v Heaven Hill Distilleries et al, 2017 FC 571
  • Recognized in the 2018 and 2019 edition of The Best Lawyers in Canada under Intellectual Property Law
  • Recognized as a World IP Review Leader since 2017
  • Recognized in The Canadian Legal LEXPERT® Directory under Intellectual Property since 2016
  • The only Canadian to be recognized by Euromoney LMG Americas Women in Business Law Awards as a Rising Star in Intellectual Property in 2015
  • Recognized annually since 2014 in Euromoney's Expert Guides: Women in Business Law as a top female legal practitioner in the area of trademarks
  • Recognized in Euromoney’s Expert Guides: Guide to the World's Leading Trademark Law Practitioners since 2014
PRACTICE AREAS
Litigation
Trademarks
Copyright & Media
Patents
Industrial Designs
IP Management & Strategic Counselling
Licensing & IP Transactions
IP Crime
 
LANGUAGES SPOKEN
English
French
Greek
 

Diageo Canada v Heaven Hill Distilleries et al, 2017 FC 571 — Successfully represented Plaintiff in protecting and enforcing CAPTAIN MORGAN trade dress. Defendant was held liable for trademark infringement, passing off and depreciation of goodwill, and required to destroy or deliver up infringing ADMIRAL NELSON’S product, and compensate Plaintiff for legal fees and damages or profits.

Sport Maska Inc v Bauer Hockey Corp., 2016 FCA 44 Successfully represented (with François Guay and Jean-Sébastien Dupont) the Respondent Bauer Hockey before The Federal Court of Appeal. The latter revisited the law on third party interventions and upheld the decisions of the motions judge (2014 FC 853) and prothonotary of the Federal Court (2014 FC 594) dismissing a motion brought by Bauer Hockey’s competitor, Reebok-CCM, to intervene in appeal proceedings initiated by Bauer Hockey from a decision of the Registrar of Trademarks to expunge one of Bauer Hockey’s trademarks in the context of summary administrative proceedings initiated by another of Bauer Hockey’s competitors, Easton Sports.

Chanel S de RL v Cultural Connections LLC, 2014 TMOB 126 (CanLII) — Successful opposition proceeding on behalf of the opponent Chanel S de RL against the registration of the trademark EDEN ALLURE & Tree Design. Cultural Connections LLC’s appeal T-1894-14 to the Federal Court discontinued.

Bodum USA Inc and PI Design AG v Trudeau Corporation (1889) Inc, 2012 FC 1128 — Successfully represented the respondent Trudeau Corporation in an industrial design infringement action where the Court rejected the plaintiffs’ claim of industrial design infringement and declared their industrial design registrations invalid. This is the first industrial design infringement decision on the merits emanating from any level of the Federal Court since a 1993 amendment to the infringement provisions of the Industrial Design Act.

Institut National des Appellations d’Origine v Vincor (Quebec) Inc. (2003), 32 C.P.R. (4th) 279 (T.M.O.B) (Carrière, J.) — Successful opposition proceeding on behalf of the opponent Institut National des Appellations d’Origine against the registration of the trademark SAVEUR DE PROVENCE.

Memberships

  • Fellow, Intellectual Property Institute of Canada; member of the Litigation Committee; member of the Women in IP Network for the 2015-2017 term
  • Member, International Trademark Association; Member, Alternative Dispute Resolution Committee for the 2016-2017 term; previously subcommittee Chair of the Enforcement Committee General Trademark Enforcement Matters; member of the Enforcement Committee; former member of the Trade Names Subcommittee of the Enforcement Committee
  • Member, Association des juristes du droit de la vigne et du vin (AIDV)
  • Member, Association des practiciens du droit des marques et des modèles (APRAM)
  • Member, Board of Trade of Metropolitan Montreal


Speaking engagements

  • "Indications géographiques et autres indicateurs, d’origine et de source" (Geographical Indications and other indicators, of origin and of source) given at the conference "Une nouvelle réalité internationale pour les marques au Canada" (A new international reality for brands in Canada) organised by the University of Montreal in association with the University of Geneva and the Université libre de Brussels (the “G3”), December 2016
  • The Canadian Wine Market: From State Monopoly and Trade Barriers to IP Regimes”, AIDV International Conference in Siena, Italy, September 2016
  • Trademark oppositions, Continuing Education Service of the Quebec Bar, November 2003

Teaching activities

  • Assistant Director, IPIC-McGill Understanding Trademarks Course, Montreal, 2017 and 2018
  • Trademark Searches and Risk Assessments (workshop), IPIC-McGill Understanding Trademarks Course, Montreal, 2015 and 2016

Publications


Cited with Approval by Courts

  • Ekaterina Tsimberis' article, titled "What Every Trademark Litigator Needs to Know About Trademark Oppositions" at page 73, was cited with approval by the Quebec Court of Appeal on March 30, 2012 when the appellate court issued its long-awaited and publicized decision in Industries Lassonde Inc. and A. Lassonde Inc. v. L'Oasis d'Olivia Inc., 2012 QCCA 593, and held that the Appellants acted in a manner that is in conformity with the practice when they instituted both a trademark infringement action in the Superior Court of Quebec alongside a trademark opposition proceeding before the Trademarks Office.

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