Keltie Sim Luft is Chair of Smart & Biggar/Fetherstonhaugh and her practice has been focussed on the domestic and international clearance, prosecution, portfolio management, acquisition and licensing of trademarks for over 30 years. Her superior range of depth and experience covers all aspects of the trademark procurement process, including: providing availability and infringement opinions; filing and prosecuting applications; handling trademark oppositions, cancellation and enforcement matters; managing portfolios; and drafting and reviewing licensing, co-existence, joint venture and settlement agreements.
In addition, Keltie’s practice includes issues relating to marketing and advertising, including packaging and labelling regulations and review, print and broadcasting advertising review, contest and point of sale promotions, coupon and premium promotions and trade, competitor and misleading advertising complaints.
Keltie has acted on behalf of clients based in Canada and internationally operating within a vast array of industries, including pharmaceuticals and nutraceuticals, food manufacturing and distribution, personal care, financial services, clothing, publishing, industrial manufacturing and construction. On top of her unparalleled expertise, Keltie's commitment to frequent communication and responsiveness makes her an invaluable asset to any intellectual property management team.
Keltie is an editor of IP Update — Canada, the firm's intellectual property law bulletin.
Rankings and Recognition
- Included in the 11th edition (2017) of The Best Lawyers in Canada, recognized in Intellectual Property Law
- Selected to appear in 2016 edition of The Canadian Legal LEXPERT® Directory under Intellectual Property
- 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 2014
- Recognized annually as an 'IP Star' since the inaugural edition in 2014 of Managing Intellectual Property’s IP Stars Handbook: Trademark & Copyright
- Recognized annually in The Best Lawyers in Canada under Intellectual Property Law since 2011
- Recognized annually in Who's Who Legal: Trademarks since 2015
- Recognized annually since the inaugural edition in 2010 of Who's Who Legal: Canada under Trademarks
- Received a Licensing Executives Society award for significant contribution to the organization
Procter & Gamble v. Colgate-Palmolive Canada Inc. (2007) — Representing Colgate, successfully resisted opposition to Colgate application to register GREEN/WHITE/BLUE toothpaste design.
Canadian Trademark Registration No. 245,940 ELITE owned by T.S. Simms & Co. Limited maintained by decision of the Registrar dated March 23, 2006.
Abbott Laboratories v. Alcohol Countermeasure Systems Corp. (November 4, 2002) — Representing Alcohol Countermeasure Systems, obtained withdrawal of opposition by Abbott Laboratories to registration of ENSURE.
Societé des Produits Nestlé S.A. v. Wells' Dairy, Inc. (October 5, 2000) — Representing Nestlé, successfully opposed application for registration of POLAR TREATS by Wells’ Dairy.
Novartis Animal Health Canada Inc. v. Merck & Co., Inc. (May 10, 1999) — Representing Novartis Animal Health Canada, successfully opposed an application by Merck & Co. to register the trademark ELIMINEX.
Societé des Produits Nestlé S.A. v. Marek Pacanowski (December 1, 1997) — Representing Nestlé, successfully opposed application for registration of FRAPPE by Marek Pacanowski.
White Consolidated Industries, Inc. v Beam of Canada Inc. (1991), 39 C.P.R. (3d) 94 (Federal Court, Trial Division) — As co-counsel with John Morrissey, representing Beam of Canada, successfully defended a trademark action by White Consolidated.
Gorse et al. v Upwardor Corp. (1989), 25 C.P.R. (3d) 166 (Federal Court, Trial Division) — As co-counsel with John Morrissey, represented Paul Gorse in a patent infringement action.
- Fellow, Intellectual Property Institute of Canada
- Member, International Trademark Association
- Member, Association of European Trademark Owners (MARQUES); member of the MARQUES Programming Team
- Past member and trustee, Licensing Executives Society
- "Internal Affairs — An update on trademark marketing and licensing issues," panel discussion at the MARQUES Annual Conference, Berlin, Germany, September 2010
- "Brands In and Out of the Box: Who Handles Your Trademark Work?" panel discussion at the MARQUES Annual Conference, Noordwijk, The Netherlands, September 2008
- "Analyzing, Interpreting and Reporting on Trademark Searches," Thomson CompuMark Trademarks and the Internet Forum, Toronto, November 2007
- "Canadian Trademark Law: Prepare for Change," (co-author: Mark Evans), CCCA Magazine, Winter 2015
- "Text of CETA released" (co-authors: Daphne Lainson, Sheldon Hamilton, Nancy Pei, David Schwartz and Brian Isaac), IP Update — Canada, September 29, 2014; Lexology, September 29, 2014; Mondaq, October 3, 2014; CCCA Members Knowledge Centre, October 2014; International Law Office Intellectual Property Newsletter, November 3, 2014; World Trademark Review Daily, November 19, 2014
- "How to take advantage of changes to trade mark filing" (co-author: Philip Lapin), Managing Intellectual Property, September 2014
- "Canadian Government introduces extensive amendments to Trademarks Act in Economic Action Plan, 2014," IP Update — Canada, March 31, 2014; Lexology, March 31, 2014; Mondaq, March 31, 2014; CCCA Members Knowledge Centre, March 2014; International Law Office Intellectual Property Newsletter, April 14, 2014
- "The changing face of computer software trademark registrations," IP Connections, March/April 2013
- "Settling trademark disputes through co-existence," IP Connections, January/February 2013
- "Declining brands — How to revive them and why it's worth it," IP Connections, July/August 2012
- "Rx for your trademark – adding distinctiveness to register your brand," IP Connections, March/April 2012
- "Brave new trademarks – brandverbs and beyond," IP Connections, July/August 2011
- "Choosing a Winning Brand Name in Canada," Executive Counsel, June-July 2011
- "Trademark Registration in Canada: The Thorny Issue of Use," INTA Trademark Reporter, November-December 2010, Volume 100
- "You’ve received a cease & desist letter — now what?" IP Connections, November/December 2010
- "Likelihood of confusion between trademarks: would Homer Simpson be confused?" IP Connections, January/February 2009
- "Making Promises — warranties and indemnities in intellectual property agreements," IP Connections, November/December 2009
- "Get noticed: tips for increasing brand recognition and brand value," IP Connections, July/August 2009
- "Going organic with confidence," IP Connections, July/August 2009
- "911 for your IP," IP Connections, May/June 2009
- "Use it or lose it: maintaining your intellectual property portfolio in Canada," IP Connections, May/June 2009
- "It's all about the advertising," IP Connections, April/May 2009
- "Overcoming Canada’s Registration Hurdle," World Trademark Review, February/March 2009, Issue 17
- "The Canadian Regime for Protecting Against Pharmaceutical Trademark Confusion and Mistakes,"
INTA Trademark Reporter, September/October 2008, Volume 98
- "Geographic Indications," The Lawyer’s Weekly, November 2008, Volume 28, No. 18
- "Canada Publishes New Rules and Procedures for Opposition Proceedings," INTA Bulletin, November 1, 2007, Volume 62, No. 20
- "Canadian Government Announces Bill to Protect Olympic Symbols," INTA Bulletin, July 1, 2007, Volume 62, No. 12
- "Opposition Board Decision Reinforces Importance of Marketplace Evidence in Canada," INTA Bulletin, June 15, 2007, Volume 62, No. 11
- "Protecting Colour Trademarks in Canada," The Lawyer's Weekly, April 16, 2004
- "Branding for the Youth Market," The Lawyer's Weekly, April 16, 2004
- "Protecting Colour Trademarks," International Law Office Newsletter, June 7, 2004
- "Protecting Colour Marks in Canada," INTA Trademark Reporter, July/August 2004, Volume 94
- "The Relevant Date for Determining the Issue of Confusion in Trade Mark Oppositions," Patent and Trademark Institute of Canada Review, 1987, Volume 4, No. 1