Canada’s Intellectual Property Firm

Philip Lapin

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Philip Lapin

Principal
  • Smart & Biggar LP
Language(s): English

Expertise across all trademark issues with particular skills in opposition and cancellation proceedings

More than 25 years of experience and a high rate of success has earned Philip Lapin recognition as one of Canada's leading trademark lawyers. Philip, who chairs the firm’s Trademark Operations Group, manages and provides strategic advice on trademark portfolios for many Canadian and multinational corporations. He 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.

Depth of experience is key to trademark success

Clients benefit from Philip’s ability to listen and ask insightful questions about their ultimate business goals, which enables him to resolve their complex trademark issues in a creative, strategic and timely way.

Philip is known for his unwavering commitment to producing high quality work. Through collaboration with colleagues and experts, he dedicates time and focus to ensure that he has the right answers and strategies for his clients.

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

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

Qualifications

  • News
  • Speaking
  • Industry Involvement
  • In the Media
  • "Trademark Update" as part of the 28th Intellectual Property Law: The Year in Review conference,  Law Society of Ontario, Toronto, Ontario, January 22, 2024
  • "Canadian tips under the Madrid Protocol: Unique and unusual issues to consider when pursuing a Canadian designation" (with Nora Labbancz), Smart & Biggar webinar, October 12, 2023
  • "Opposition Proceedings: Overview, Context & Strategy", IPIC/McGill Summer IP Courses 2023, July 12, 2023
  • “Communication Breakdown and Cultural Faux Pas: Why People from Different Countries Have Trouble Communicating with Each Other”, Moderator, INTA Annual Meeting, Singapore, May 2023
  • "Fast Track your Trademark Applications in Canada: Expediting Canadian Trademark Examination" (with Jamie-Lynn Kraft), Smart & Biggar webinar, April 20, 2022
  • "Opposition Proceedings:  Overview, context & strategy", IPIC/McGill Summer IP Courses 2021, July 14, 2021
  • "Best Practices in Trademarks: Responding to 'Not Inherently Distinctive' Objections" (with Coleen Morrison, Judy Tom and Donna White), Intellectual Property Institute of Canada (IPIC) webinar, July 8, 2021
  • "The Canadian Difference: Exploring the unique issues of designating Canada in Madrid Protocol trademark applications" (with Jamie-Lynn Kraft), Smart & Biggar webinar, May 18, 2021
  • "What every in-house counsel needs to know about Intellectual Property law" (with Daniel Anthony and Lionel Fishman), Association for Corporate Counsel-Ontario and Smart & Biggar webinar, May 2020
  • "One Year Later – Navigating Canada’s TM Law Changes" (with Kwan T Loh and Jamie-Lynn Kraft), Smart & Biggar webinar, May 2020
  • “How Will Brand Clearance, Filing + Prosecution Differ in a “Use-less” Regime?” (with Cameron Weir and Tom Kurys) as part of the seminar "Canada’s New Trademark Regime: The Practical, Tactical Guide to Navigating the Sweeping Changes," Osgoode Hall Law School Professional Development, Toronto, April 2019
  • "The New Non-traditional Marks in Canada: What Are They and How Do You Protect Them?" (with Jason Robertson), International Trademark Association (INTA) Non-Traditional Marks Committee webinar, June 17, 2019
  • "Brand Owners and Counsel: Strategies for Navigating Canada's Trademark Changes" (with Keltie Sim Luft, Mark Evans and Andrea Kroetch), Webinar Series, October 25, 2018
  • "Trademark Case Law Review: Descriptiveness and Depreciation of Goodwill” (with Rob MacDonald), Intellectual Property Institute of Canada webinar, April 2018.
  • "The New Trademark Regulations: What to expect and how to prepare,” Intellectual Property Institute of Canada, Informals Group and Licensing Executive Society, Ottawa, March 2018.
  • “What US attorneys need to know about protecting trademarks in Canada,” California State Bar – Business Law Section webinar, November 2017
  • “What US Brand Owners Need to Know about Canada’s Trademark Changes – Legislation and Enforcement” (with Mark Evans), Managing Intellectual Property – Global Trademark Roadshow in Palo Alto, California on June 21, 2017 and New York City on June 23, 2017
  • “Trademark Case Law Review: Distinctive of Origin and Depreciation of Goodwill” (with Rob MacDonald), Intellectual Property Institute of Canada Webinar, April 2017
  • “Best Practices Before the Trademarks Office,” (with the Director General of the Trademarks Office), Intellectual Property Institute of Canada (IPIC) Annual Meeting, Quebec City, Quebec, September, 2016
  • "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

Memberships

  • Fellow, Intellectual Property Institute of Canada; former Chair of the Trademarks Practices Committee; former member of the International Trademark Issues Committee; former member of the Forums and Seminars Committee; former Co-chair and Co-editor of the IPIC Bulletin
  • Member, International Trademark Association (INTA); member of the Professional Development Committee (2022-2025); member of the Non-Traditional Marks Committee (2016-2021); former member of the Canada Amicus Subcommittee of the International Amicus Committee; former member of the Whois Subcommittee of the Internet Committee; former member of the Dilution and Well-Known Marks Committee; former member of the Parallel Imports Committee
  • Member, Canadian Trademark Agent Examination Board, 2010 - 2013 term
  • Member, Canadian Bar Association; former member of the Trademarks Committee

Teaching Activities

  • "Opposition proceedings: Overview, context and strategy," IPIC-McGill course Understanding Trademarks, Montréal, July 13, 2022
  • "Opposition Proceedings: Overview, Context and Strategy," IPIC-McGill course Understanding Trademarks, Montreal, 2002-2017
  • "Tips and Strategies in Opposition Proceedings" (workshop), IPIC-McGill course Understanding Trademarks, Montreal, 2002-2016
  • IPIC-McGill course Understanding Trademarks, Montreal, August 2003 – Program Director 
  • "Intellectual Property Law for Engineers" (adjunct professor), University of Ottawa, 2002-2009

Interviews

Publications

  • "It’s Official: Options for Challenging “Official Marks” in Canada", (co-author: Jamie-Lynn Kraft), Best Lawyers, September 30, 2022
  • "Smell test", Intellectual Property Magazine, April 28, 2020
  • "Brand clearance challenges in ‘use-less’ regime" (co-author: Erica Gotfrit), The Lawyer's Daily, June 17, 2019
  • "CANADA: New Trademark Law Coming into Force June 17, 2019", INTA Bulletin, May 1, 2019
  • "How do changes to Canada's IP law affect European right holders?" (co-author David Schwartz), Managing Intellectual Property, April 24, 2018
  • "Trump wins lawsuit involving licensor's obligations" (co-author: Nicole Vidineu), World Trademark Review, December 13, 2016
  • "Significant Changes to Canadian Trade Mark Law", ECTA Bulletin, October 2015
  • "How to take advantage of changes to trade mark filing" (co-author: Keltie Sim Luft), Managing Intellectual Property, September 2014
  • "Registering Trademarks in Canada is About To Get A Whole Lot Easier. Brand-Owners Cheer ... But So Do Trademark Pirates" (co-author: Kohji Suzuki), Corporate Counsel IP Canada Report, August 2014
  • "Proposed Canadian Combating Counterfeit Products Act Introduced" (co-author: Brian P. Isaac), Intellectual Property Magazine, May 2013
  • "CANADA Significant Change in Canadian Law… or Perhaps Not," INTA Bulletin, April 15, 2013, Vol. 68 No. 8
  • "Lawyer Barbie Goes to Court", Trademark World, September 2007
  • "Prepared the CANADA section of the "Country Guides" portal on the International Trademark Association (INTA) website