Professionals

Philip Lapin
Partner, Ottawa
Barrister and Solicitor,
Patent and Trademark Agent

 

CONTACT
Phone: 613.232.2486
Fax: 613.232.8440
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YEAR OF CALL
Ontario Bar 1995
QUALIFICATIONS
  • Queen's University B.Sc. Hons. (Computer Science) 1988
  • McGill University B.C.L./LL.B. 1992
  • Registered Trademark Agent 1995
  • Registered Patent Agent 1998
  • Registered to practise before the United States Patent and Trademark Office
 

Philip Lapin is recognized as one of Canada's leading trademark lawyers, and is the Chair of the firm's Trademark Practice Group. With more than 20 years of experience, Philip is responsible for managing and providing strategic advice concerning the trademark portfolios for many Canadian and multinational corporations.

Philip has handled the clearance, prosecution and registration of thousands of trademarks, and has particular expertise in trademark opposition and cancellation proceedings before the Trademarks Office.

In addition, Philip files, prosecutes and advises clients with respect to all aspects of Canadian industrial design law and practice.

Philip is the author of the "CANADA" section of the INTA Country Guides.

Philip was an adjunct professor at the University of Ottawa's engineering school for many years, teaching trademark law to non-lawyers. Philip is also a frequent speaker and author on a wide variety of trademark-related topics.

Philip was awarded the Marie F. Morency prize for obtaining the highest mark in Canada on the patent drafting examination.


Rankings and recognition

  • Selected to appear in 2016 edition of The Canadian Legal LEXPERT® Directory under Intellectual Property and Biotechnology
  • Recognized in the 2016 edition of World IP Review Leader
  • Recognized in World Trademark Review 1000 – The World's Leading Trademark Professionals 2016
  • Recognized in the 2016 edition of The Best Lawyers in Canada under Intellectual Property Law
  • Recognized annually as an 'IP Star' since the inaugural edition in 2014 of Managing Intellectual Property’s IP Stars Handbook: Trademark & Copyright
  • Recognized annually since the inaugural edition in 2011 of World Trademark Review 1000 – The Definitive Guide to Trademark Legal Services
  • Recognized in each edition of Euromoney's Expert Guides: Guide to the World's Leading Trademark Law Practitioners since 2008
  • Recognized in the 2015 edition of Who's Who Legal: Trademarks
PRACTICE AREAS
Trademarks
Patents
Industrial Designs
Industrial/Mechanical
Software/Information Technologies
Copyright & Media
IP Management & Strategic Counselling
Licensing & IP Transactions
Domain Names & Internet Law
 

Memberships

  • Fellow, Intellectual Property Institute of Canada; Chair of the Trademarks Practices Committee; past member of the International Trademark Issues Committee; past member of the Forums and Seminars Committee; past Co-chair and Co-editor of the IPIC Bulletin
  • Member, International Trademark Association; member of the Canada Amicus Subcommittee of the International Amicus Committee; past member of the Whois Subcommittee of the Internet Committee; past member of the Dilution and Well-Known Marks Committee; past member of the Parallel Imports Committee
  • Member; Canadian Trademark Agent Examination Board, 2010 - 2013 term
  • Member, Canadian Bar Association; past member of the Trademarks Committee


Speaking engagements

  • "Passing Off," webinar hosted by the Intellectual Property Institute of Canada, May 2016
  • “Trademark Case Law Review: Distinctiveness and Depreciation of Goodwill” (with Rob MacDonald), Intellectual Property Institute of Canada Webinar, April 2016
  • "Top IP Law Cases of the Year (Trademarks)," Intellectual Property Institute of Canada (IPIC) Annual Meeting, Banff, Alberta, October 2015
  • “Bills C-8 and 31:  What the Changes Mean for Trademark Law in Canada” (with Rob MacDonald), The Licensing Executive Society and The Intellectual Property Institute of Canada, Ottawa, April 2015
  • “Year in Review – 2014: Trademark Law Update” (with Rob MacDonald), Intellectual Property Institute of Canada Webinar, February 2015
  • "The New Trademarks Act under Bill C-31: Overview," Intellectual Property Institute of Canada Webinar, July 2014
  • "Trademark Agent Examination Prep Course - Exam Writing Tips," Intellectual Property Institute of Canada Webinar, May 2014 - November 2014
  • "Canadian IP Law Update: High Impact Trademark Law Decisions," Intellectual Property Institute of Canada Annual Meeting, Ottawa-Gatineau, September 2013
  • "The Protection of Geographical Indications in Canada," presented to the economic and commercial representatives of the European Union, Ottawa, March 2010
  • "Brand Equity: Maintaining the Value of Trademarks in Today's Marketplace," presented to the Ottawa chapter of the Canadian Corporate Counsel Association, Ottawa, September 2009
  • "Taking a Strategic Approach: International and Regional Resources," International Trademark Association Trademark Administrators Conference, Long Beach, CA, October 2007
  • "Section 45 (Expungement) Proceedings Under the Canadian Trademarks Act," Intellectual Property Institute of Canada Spring Meeting, Gatineau, QC, March 2007
  • "IP Transactions – The Basic and Beyond," presented to members of the Ottawa chapter of the Canadian Corporate Counsel Association, Ottawa, November 2006
  • "Should There be Trademark Rights in Public Icons?" (panellist), Intellectual Property of Canada Spring Meeting, April 2004
  • Presentations to new Examiners at the Canadian Trademarks Office on trademark confusion under section 12(1)(d) of the Canadian Trademarks Act, 2000, 2001 and 2002


Teaching activities

  • "Opposition Proceedings: Overview, Context and Strategy," IPIC-McGill course Understanding Trademarks, Montreal, 2002-2014
  • "Tips and Strategies in Opposition Proceedings" (workshop), IPIC-McGill course Understanding Trademarks, Montreal, 2002-2014
  • IPIC-McGill course Understanding Trademarks, Montreal, August 2003 – Program Director 
  • "Intellectual Property Law for Engineers" (adjunct professor) University of Ottawa, 2002-2009

Publications

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