Jeffrey Vicq is a partner of the firm and a member of the Intellectual Property and Information Technology Groups.

He has extensive experience with intellectual property law matters and with complex commercial law issues that typically arise in the development, implementation, exploitation and transfer of information technology-related products and services.

Work Highlights

Lead trade-mark counsel for world’s leading online retailer

  • Lead all aspects of Canadian trade-mark clearance, filing, registration, maintenance, and enforcement of trade-mark rights for the world’s leading online retailer. Additionally provide strategic international portfolio advice, copyright advice, and domain-name related service

Lead counsel for complex automated passport control solution project

  • External legal team lead on a multi-year project relating to the development and distribution of an automated passport control solution, addressing a wide range of procurement, technology, security, commercial, and intellectual property issues in various countries

Co-lead trade-mark counsel to world’s leading search engine services provider

  • Conduct all aspects of Canadian trade-mark clearance, filing, registration, maintenance and enforcement of trade-mark rights for the world’s leading search engine services provider. Additionally provide strategic domain-name related services
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Intellectual Property Services
Trade-mark registration, enforcement, licensing and portfolio counseling Copyright registration, enforcement, licensing and counseling
Domain name registration, acquisition and disputes Intellectual property audits and due diligence
Social media advice and counseling The transfer and commercialization of IP rights
Intellectual property aspects of employment and contractor agreements
Technology Law Services
Master agreements for the procurement of hardware, software and professional services Hardware and software design and development agreements
Software licensing and support agreements, including for SaaS, IaaS, and PaaS services Open source software licenses and related issues
Hosting and co-location agreements Outsourcing agreements
Licensing, bundling and distribution agreements Marketing and promotional agreements
Manufacturing, supply, distribution and sales representative agreements Website terms of use and privacy policies
Internal and external technology use policies Personal information protection, privacy policies and guidelines

Jeffrey is a frequent speaker and lecturer in both Canada and the United States on intellectual property and technology matters. He routinely authors articles outlining developments impacting businesses and organizations in the technology, information technology and education sectors.

Jeffrey has been repeatedly recognized as one of the Best Lawyers in Canada in the areas of technology law and information technology law.

With precise, business-practical and responsive service, Jeffrey supports his client’s efforts to advance their business goals.

Awards & Distinctions
  • World Trademark Review 1000, Leading Trademark Practitioner, Prosecution and Strategy
  • Best Lawyers in Canada, Technology Law and Information Technology Law
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Lead trade-mark counsel for world’s leading online retailer
  • Lead all aspects of Canadian trade-mark clearance, filing, registration, maintenance, and enforcement of trade-mark rights for the world’s leading online retailer. Additionally provide strategic international portfolio advice, copyright advice, and domain-name related service
Lead counsel for complex automated passport control solution project
  • External legal team lead on a multi-year project relating to the development and distribution of an automated passport control solution, addressing a wide range of procurement, technology, security, commercial, and intellectual property issues in various countries
Co-lead trade-mark counsel to world’s leading search engine services provider
  • Conduct all aspects of Canadian trade-mark clearance, filing, registration, maintenance and enforcement of trade-mark rights for the world’s leading search engine services provider. Additionally provide strategic domain-name related services
Legal leadership for enterprise software procurement
  • Lead several multi-year projects supporting the procurement of enterprise software solutions for preeminent Canadian post-secondary institution
Advisor to high-profile mobile handset manufacturer
  • Conduct Canadian trade-mark clearance, filing, registration, maintenance, and enforcement for leading manufacturer of mobile handsets and virtual reality displays
Trade-mark counsel to social media company
  • Provide trade-mark and marketing-related advice to the world’s best-known social microblogging company
Primary legal advisor to educational publisher
  • Lead a team supporting the leading publisher of online high school career & elective courses, advising on a broad range of technology, commercial, employment and intellectual property issues
Representation of leading restaurant brands
  • Team lead working with one of the world’s largest quick service restaurant companies, providing trade-mark clearance and filing services, as well as marketing-related advice, in support of several well-known brands
Outside counsel to leading technology administrative services organization
  • Provide legal advice relating to the procurement, implementation and support of enterprise cloud solutions for a leading technology administrative services organization
Canadian portfolio management for world’s largest aerospace company
  • Provide trade-mark filing, registration, maintenance, and enforcement services for one of the world’s largest aerospace manufacturers
External legal counsel to leading health care services providers
  • Serve as legal advisor on numerous projects relating to the procurement of enterprise software and hardware solutions for some of the largest health care service providers in Canada
Worldwide portfolio management for internationally beloved toy maker
  • Manage and coordinate enforcement of a global trade-mark portfolio covering stuffed animals, children’s toys, and gifts in Canada, the U.S., Europe, Australia, China, other parts of Asia, and Africa, and advise on acquisitions relating to that portfolio. Additionally, provide guidance on copyright and domain name issues
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Awards & Distinctions
  • World Trademark Review 1000, Leading Trademark Practitioner - Prosecution and Strategy
  • Best Lawyers in Canada, Technology Law and Information Technology Law
Industry Involvement
  • International Trademark Association, Trademark Legislation and Regulation Committee (Canada Subcommittee)
  • Intellectual Property Institute of Canada, Trade-mark Practice Committee
Education & Call to Bar
  • Master of Laws (Concentration in Law and Technology), University of Ottawa, 2007
  • Registered Canadian Trade-mark Agent
  • Calls to Bar: Saskatchewan, 1999; British Columbia, 2002
  • Bachelor of Laws, University of Saskatchewan, 1998
External Publications & Presentations
  • Quoted in N. Bennett, “Fast changing technology sector keeps lawyers and law firms on their toes”, Business in Vancouver Issue 1388 (June 7, 2016) 19
  • Intellectual Property Law – Copyright ChapterAnnual Review of Law & Practice, The Continuing Legal Education Society of British Columbia, 2016 (Author)
  • Mission: TransitionThe Trademark Lawyer Issue 1 2015 (February 2015) 30 (Co-author, with N. Melliship)
  • Intellectual Property Law – Copyright ChapterAnnual Review of Law & Practice, The Continuing Legal Education Society of British Columbia, 2015 (Author)
  • “Use Madrid Nice[ly]” – A Roundtable Discussion on the Omnibus Budget Bill Amendments to the Trade-marks Act“, Canadian Bar Association, 2014 (Co–author and Speaker, with K. MacDonald)
  • Intellectual Property Law – Copyright ChapterAnnual Review of Law & Practice, The Continuing Legal Education Society of British Columbia, 2014 (Author)
  • “Canadian Trade-mark Law: Old Eccentricities and New Developments”, Oregon State Bar Association – Intellectual Property Section, 2014 (Author and Speaker)
  • “Canadian Trade-mark Practice for U.S. Trademark Practitioners”, Seattle University School of Law, INTP 316: Trademark Administration, 2009-2013 (Guest Lecturer)
  • Quoted in I. Daro, “Royal Canadian Legion tells Reddit to remove poppy symbol over trademark concerns“, Canada.com/Postmedia, (29 October 2013)
  • “The New Copyright Modernization Act (Bill C-11)”, Canadian Bar Association, 2013 (Co-author and Speaker, with C. Wilson)
  • “Protecting Your Intellectual Property”, Business Beyond Borders—Central Okanagan Economic Development Commission, 2011 (Author and Speaker)
  • “Quirky Canucks: Eccentricities of the Canadian Trade-mark System”, WebIPHour – Association of Intellectual Property Firms, 2011 (Author and Speaker, with M. Roman).
  • “Intellectual Property Law – Copyright” Annual Review of Law & Practice, The Continuing Legal Education Society of British Columbia, 2011 (Author)
  • “Electronic Commerce in Canada: The Enforceability of Online Agreements and Consumer Protection Considerations”, 5th Annual Internet Law Conference, Calgary, Federated Press, 2011 (Author and Speaker)
  • “Canada considering big changes to trade-mark practice” International Lawyers Network The Bullet’iln’ Newsletter Volume 9:2, 2010 (Author)
  • “E-Exporting: Legal Considerations for Exporting Technology”, Foreign Affairs and International Trade Canada, 2010 (Author and Speaker)
  • “Report from Canada: Significant Prosecution Changes Coming?”, ITMA Review – The Journal of the Institute of Trade Mark Attorneys 379 (October 2010) 26, The Institute of Trade Mark Attorneys (UK)
  • “Canada’s faithful: avoiding fraud claims at the IPO” World Trademark Review Issue 27 (October / November 2010) 59
  • “Legal Issues for Digital Media”, Centre for Digital Media, Masters of Digital Media Program, 2008-2010 (Guest Lecturer)
  • Quoted in A. Smith, “Canada’s police force sounds ready to give up on IP enforcement” World Trademark Review – Daily (22 September 2010)
  • Quoted in A. Smith, “Is Canada finally preparing to join the 21st Century?World Trademark Review – Daily (2 June 2010)
  • Quoted in A. Smith, “As INTA kicks off, it’s clear that trademarks are backWorld Trademark Review – Daily (24 May 2010)
  • ‘Bad faith’ decisions bad news for trade-mark applicants?“, IP Osgoode IPilogue (10 May 2010)
  • Intellectual Property Law – Copyright ChapterAnnual Review of Law & Practice, The Continuing Legal Education Society of British Columbia, 2010 (Author)
  • How defamation defences benefit the TwitiverseThe Lawyers Weekly (12 February 2010) (Author)
  • Quoted in T. Little, “Political pressure results in Canadian consultation on Madrid adoptionWorld Trademark Review – Daily (12 January 2010)
  • “Quirky Canadians: Canadian Trade-mark Eccentricities for U.S. Practitioners”, Oregon State Bar Association – Intellectual Property Section, 2009 (Author and Speaker)
  • “Canadian Intellectual Property Office Tosses IP Applicants a Change-Up”, International Lawyers Network The Bullet”iln” Newsletter, Volume 8:2, 2009 (Author)
  • Quoted in A. Smith, “Psion surrenders NETBOOK trademarksWorld Trademark Review – Daily (2 June 2009)
  • “Report from Canada: More Changes to Opposition Practice”, ITMA Review – The Journal of the Institute of Trade Mark Attorneys 364 (April 2009) 32, The Institute of Trade Mark Attorneys (UK)
  • “Understanding Electronic Commerce in Canada: An Update”, 2nd Annual Internet Law Conference – Vancouver, Federated Press, 2009 (Author and Speaker)
  • Quoted in A. Smith, “Intel rejects Psion’s rights in latest NETBOOK clashWorld Trademark Review – Daily (24 March 2009)
  • Quoted in A. Smith, “Spare parts and cybersquatting: the fight for NETBOOKWorld Trademark Review – Daily (10 March 2009)
  • Quoted in C. Crosby, “Social Networking For Lawyers” The Lawyers Weekly (27 February 2009)
  • Interviewed by R. Daya, “2010 Motto” Global National, Global Television, Vancouver (26 September 2008)
  • Interviewed by M. Blanchard, “With Glowing Hearts” Calgary Today, 770 CHQR Radio, Calgary (26 September 2008)
  • Bouquets and Brickbats: The Informational Privacy of Canadians“, On The Identity Trail, 2006 (Author)
  • “Northern Exposure: Lessons from Canada’s National Privacy Law Regime”, Life, Liberty and Digital Rights, Association for Computing Machinery, 2006 (Author and Speaker)
  • On the Data Trail: A Report on the Canadian Data Brokerage Industry“, Canadian Internet Policy and Public Interest Clinic, 2006 (Co-author, with P. Lawson)
  • “Intellectual Property”, British Columbia Institute of Technology, Elex 8290: Engineering Law, 2005 (Speaker)
  • “An Intellectual Property Primer”, University of Victoria Business Law Clinic, 2001-2005 (Author and Speaker)
  • “Exempting BC and Alberta: Stitching the Seamless Continuum”, Canadian Privacy Law Review, I:9, 2004 (Co-author, with C. Wilson)
  • “Living With BC’s Privacy Legislation – What Charities Need To Know”, Pacific Business & Law Institute, 2004 (Author and Speaker)
  • “Securing Your Assets: Intellectual Property Protection”, Architectural Institute of British Columbia, 2004 (Author and Speaker)
  • “BC’s New Privacy Legislation – A Workshop”, The Alliance for Arts and Culture, 2004 (Author and Speaker)
  • “Intellectual Property for Software Engineers”, Association of Professional Engineers and Geoscientists of British Columbia, 2004 (Speaker)
  • Quoted in J. Heath-Rawlings, “Canadian, U.S. IP Law Gap Grows” The Globe and Mail (14 July 2003)
  • “Managing The Relationship: Private Sector Privacy in British Columbia”, The Association for Healthcare Philanthropy, 2003 (Author and Speaker)
  • “Important Decision Disallows Patenting of Higher Life Forms in Canada”, The Continuing Legal Education Society of British Columbia, 2002 (Author)
  • “Planning for Privacy”, Canadian Association of Gift Planners, 2002 (Author and Speaker)
  • “The Library of Babel: Advanced Legal Research Techniques”, Saskatchewan Legal Education Society, 2001 (Author and Speaker)
  • “The Progression of our ‘Consensual Hallucinations:’ Advanced Uses of the Internet and the Future of Legal Technology”, Saskatchewan Legal Education Society, 2001 (Author and Speaker)
  • “An Agricultural Biotechnology Primer for Lawyers”, Canadian Bar Association Bar Notes, 2001 (Co-author, with D. Konkin)