Osler

Canada

Address:
First Canadian Place
100 King Street West
Canada
M5X 1B8

+1 416 362 2111


Key contacts:

Chair: John Cotter

Quick facts:

Established: 1862
Number of Partners: 8
Number of IP Practitioners: 30
Languages: English, French, Spanish, Arabic


Osler acts as an integral business partner by developing and executing global intellectual property strategies in prosecution and litigation that align with our client’s objectives. Our firm represents a vast client base in complex litigation in every field of IP, before every level of the Canadian courts and before international tribunals. We have coordinated and managed prosecution and litigation strategies throughout multiple jurisdictions, and our international reputation for excellence in Canadian IP patent litigation has been built on our winning litigation record. We also supervise the filing and prosecution of patent applications outside of North America on behalf of our clients through our network of foreign associate law firms.

We have extensive experience in drafting, filing, prosecuting and maintaining patent and industrial design applications in Canada, including for leading Canadian and multinational companies. Our patent agents, most of whom are PhD or Masters qualified, are highly proficient in dealing with patent protection and patent avoidance issues in the design, engineering and manufacturing of products, and particularly products to be distributed simultaneously in multiple jurisdictions. We regularly conduct freedom-to-operate studies and render opinions in respect of Canadian patents for our clients.

Our firm routinely acts as counsel to the world’s largest and leading generic pharmaceutical companies, including Mylan Pharmaceuticals, Teva Canada, Samsung Bioepsis, Celltrion Inc, and many others, and we have particular expertise in representing and advising international and domestic innovators in areas of technology, biotech, life sciences, electronics and consumer products.

Osler has in-depth experience in clearing, registering, maintaining and enforcing trade-mark rights in Canada and internationally, on managing domestic and international portfolios for leading Canadian and global corporations and in successfully representing clients’ interests before the courts and intellectual property administrative tribunals. We also service an extensive network of foreign law and agency firms, assisting those firms in protecting the Canadian rights of their clients. For many consecutive years, Osler has been among the top filers of trade-mark applications with the Canadian Intellectual Property Office (“CIPO”) with over 2000 trade-mark applications filed in the last two years.

A selection of Osler’s trade-mark clients include Air Products Canada, Ltd., American Eagle Outfitters, Bank of Montreal, Bass Pro Shops, Bausch & Lomb Inc., H.D. Lee, Live Nation Worldwide, Inc., 3M, Eddie Bauer, Estée Lauder, Fisher–Price, Hugo Boss Canada, LinkedIn Corporation, Mattel, Inc., Matsushita, NBA Properties, Inc., National Women's Hockey League, Phillips 66, Sidewalk Labs, Starbucks, Sullivan Entertainment Inc. and Wrangler Apparel. . In addition, Osler provides Canadian trade-mark services for clients of a wide network of international law firms.

Osler’s Intellectual Property team is also represents clients in disputes and litigation involving copyright (including infringement claims, ownership disputes and Copyright Board tariff proceedings), trade-marks (including infringement claims, expungement proceedings and Trade-Mark Opposition Board proceedings), domain names, trade secrets/confidential information and misleading advertising. Our clients include Re:Sound and Universities Canada. Osler also has a leading anti-counterfeiting practice where we represent such major brands as Hugo Boss. 

 

Network Memberships: INTA, AIPPI, LES, IPIC, CBA, ABA

 

Last updated 8th October 2019

Practice Areas: Copyright, Designs, IP transactions, Life sciences, Patent contentious, Patent litigation, Patent office proceedings, Patent prosecution, Patent strategy & counseling, Trade mark contentious, Trade mark litigation, Trade mark office proceedings, Trade mark prosecution, Trade mark strategy & counseling

Sector Expertise: Artificial intelligence, Arts, Biotechnology, Chemistry, Computer technology & services, Construction & materials, E-commerce, Electrical, Electronics, Fashion & luxury goods, FMCG, Food & beverage, Hospitality & leisure, Healthcare, ICT & software, Industrials, Instruments, Internet, Life sciences, Manufacturing, Mechanical, Media, Music, Pharmaceutical, Professional services, Publishing, Retail, Sports, Technology hardware, Telecommunication, Universities & research, Utilities