Trade-Mark Prosecution and Enforcement


Clark Wilson LLP’s Intellectual Property Group provides cost-effective legal services to assist you in identifying, protecting and enforcing your trade-mark rights locally, nationally and internationally. Our trade-marks practice covers a wide-range of industries and our professionals have years of hands-on experience with a wide range of issues.

Trade-Mark Clearance: By conducting extensive searches of available data bases, we assist clients to determine the availability of proposed trade-marks and the strength of existing trade-marks in the marketplace. By carefully and extensively carrying out research in this area we strive to help clients avoid costly and unnecessary disputes.

Filing and Prosecution of Applications for Registration: We prepare, file and prosecute applications to register trade-marks at the Canadian Intellectual Property Office, including applications for word marks, design marks, distinguishing guises, certification marks, official marks and other non-traditional forms of trade-marks. Through a network of international agents, we arrange for trade-mark registrations in virtually every industrialized country in the world.

Licensing, Acquisition and Divestiture: When opportunities arise or business plans change with respect to trade-mark portfolios, we assist in the acquisition, sale, licensing or other exploitation of our clients’ trade-mark rights.

Enforcement: When trade-mark rights are infringed by or are in conflict with the rights of other parties, we assist clients through a variety of litigation and administrative proceedings, including proceedings before the Trade-Marks Opposition Board, the Federal Court of Canada and the provincial Courts. Where litigation is not the best option, we assist our clients to negotiate cost-effective settlements.

Domain Name Acquisition and Disputes: No marketing plan these days is complete without a well thought-out domain name strategy. We assist in the acquisition of domain name rights, either through registration or negotiation and acquisition. We also assist clients to obtain transfers of domain names from unauthorized registrants through various dispute resolution policies and other procedures.

Interface with other Intellectual Property Rights: As well as recognizing relevant trade-mark issues, our lawyers analyse and advise on the interplay of other intellectual property rights such as copyright, industrial design, trade-secret and patent rights. Through a diverse range of skills and experience, we offer our clients experienced, leading edge counsel in all of these areas to ensure they obtain the maximum return from their intellectual property assets.

Staying Current: Our lawyers are the authors of Canadian Trademark Blog ( which provides regular updates on events, practice developments and case law. We also publish a quarterly publication regarding IP issues generally, Knowledge Bytes.

For additional information:

If you require any further information, please contact Jeffrey Vicq.