Professionals

Timothy Stevenson
Partner, Ottawa
Barrister and Solicitor,
Trademark Agent

 

CONTACT
Phone: 613.232.2486
Fax: 613.232.8440
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YEAR OF CALL
Ontario Bar 2006
QUALIFICATIONS
  • University of Victoria B.Sc. (Biochemistry) 2000
  • University of Victoria LL.B. 2005
  • Registered Trademark Agent 2008
 

Timothy Stevenson's practice focusses on trademarks and strategic brand management. He has over a decade of experience in representing some of the world’s most famous brands across a variety of industries.  His practice addresses all aspects of the trademark life cycle, including clearance, prosecution, cancellation, opposition and enforcement. In contentious matters, Timothy has successfully represented clients before the Trademarks Opposition Board, Federal Court and Federal Court of Appeal. He also has considerable expertise in domain name matters and the enforcement of trademarks and copyright online.

Timothy works with both large and small businesses in a variety of fields, including pharmaceuticals, electronics, consumer goods manufacturing, restaurants and food and beverage producers. His educational background in biochemistry and work experience in the field of pharmaceuticals are a particular asset to clients operating in these areas.

Timothy has published extensively on topics relating to trademark law and is an editor of IP Update — Canada, the firm's intellectual property law bulletin. Timothy is also a committee member with both the International Trademark Association (INTA) and the Intellectual Property Institute of Canada (IPIC), as well as a member of the Trademark Agent Examination Board which oversees the qualification of Trademark Agents in Canada.


Rankings and recognition

  • Recognized as an 'IP Star' in the 2014 and 2015 editions of Managing Intellectual Property’s IP Stars Handbook: Trademark & Copyright
PRACTICE AREAS
Trademarks
Litigation
Domain Names & Internet Law
Copyright & Media
Industrial Designs
IP Management & Strategic Counselling
 

PicMonkey International Limited and PicMonkey LLC v Whois Privacy Services Inc, CDRP Dispute No 00337 – Successfully recovered the domain picmonkey.ca on behalf of the Complainant in a CIRA Domain Name Dispute Resolution Proceeding (CDRP).

Ares Trading SA v Victor Vickland, 2017 TMOB 55 – Successfully represented the opponent Ares Trading S.A. in a trademark opposition proceeding in the field of medical computer software.   

Smart & Biggar v Adhoc Ventures Canada Inc, 2014 TMOB 259 – Successful cancellation for lack of use of a registration for the trademark INFINITI in association with golf equipment. 

Optrex Limited v Nameshield Inc, CIRA Case No. 00274 — Successfully obtained a transfer of the domain optrex.ca in a defended CIRA Domain Name Dispute Resolution Proceeding (CDRP).

911979 Alberta Ltd and Shoppers Drug Mart Inc v Hero Nutritionals Inc, 2014 TMOB 72 — Successfully represented the opponents 911979 Alberta Ltd. and Shoppers Drug Mart Inc. in a trademark opposition proceeding involving the trademark Sliceoflife.

dm-drogerie markt GmbH & Co KG v 911979 Alberta Ltd, 2014 TMOB 59 — Successfully represented the applicant in a trademark opposition matter involving the trademark BALEA.

Cheah v McDonald's Corp, 2012 TMOB 138 aff’d 2013 FC 774 — Successful opposition on behalf of McDonald’s Corporation to prevent registration of the trademark MACDIMSUM.

JTI Macdonald TM Corp v Imperial Tobacco Products Ltd, 2012 TMOB 117 aff’d 2013 FC 608 and Rothmans, Benson & Hedges Inc v Imperial Tobacco Products Ltd, 2012 TMOB 226 aff’d 2014 FC 300, aff’d 2015 FCA 111 — Successfully represented the applicant for a single colour trademark as applied to particular packaging.

Eli Lilly & Co v Apotex Inc, 2009 FC 991 — Successfully represented defendant by counterclaim, Shionogi & Co. Ltd., in this leading Canadian case on anti-trust claims relating to the use and assignment of patent rights.

Memberships

  • Member, International Trademark Association; INTA Bulletin Sub-committee Co-chair for Law and Practice North America
  • Associate, Intellectual Property Institute of Canada; member of the Anti-Counterfeiting Committee
  • Pharmaceutical Trademarks Group (PTMG)
  • Member, Trademark Agent Examination Board (2017-2019 term)


Speaking engagements

  • “International Case Round-up”, Pharmaceutical Trademark Group (PTMG) Fall Conference, Toronto, 2017
  • "IP trends in North America," International Legal Alliance Summit and Awards, New York City, 2016
  • Presentation on legal writing and research, Intellectual Property Institute of Canada Basics of Law training series, Ottawa, November 2009


Teaching activities

  • Guest lecture on intellectual property issues (with Jeffrey Coles), Industrial Applications of Chemistry class, Carleton University, November 2010, October 2012

Interviews

  • Quoted in Law Times -  January 30, 2017 in the article "Lawyer hopes to restart debate on grey marketing"
  • Quoted in Lexpert - October 2016 in the article "Trolls at the Gate"
  •  Quoted in The Lawyers Weekly - September 18, 2015 in the article "Judge draws distinction between search results, site characteristics"

Publications


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