Sharon E. Groom 

Co-Chair, Trademarks and Licensing
Toronto  t: 416.865.7152  |  e: sharon.groom@mcmillan.ca

Sharon E. Groom

Toronto
Brookfield Place, Suite 4400
181 Bay Street
Toronto, Ontario M5J 2T3

t: 416.865.7152
e: sharon.groom@mcmillan.ca

overview

Sharon is a member of McMillan's Intellectual Property and Technology Law Group as well as its Competition Law Group. Her practice focuses on these areas.

Sharon has an extensive background in intellectual property having worked in private practice specializing in Canadian and US trademarks and copyright, as well as having been a Hearing Officer for the Trademarks Opposition Board.

She also brings a wealth of international corporate commercial and business expertise gained as in-house counsel for companies in the financial services, publishing and technology industries. Her positions have included Senior Vice President, Risk Management and General Counsel, Americas, for Thomas Cook; Director of Legal and Administrative Affairs and Assistant General Counsel for Harlequin Enterprises Limited where she managed a global portfolio of over 2,500 trademarks. She has also held a position as Corporate Legal Counsel for Newbridge Networks Corporation (now Alcatel Lucent).

Sharon is also an adjudicator for Resolution Canada Inc. to hear disputes over .ca domain names.

Sharon is on the Board of the Toronto Symphony Orchestra and Chair of its Nominations and Governance committee.

Presentations

Key Points to Consider in Drafting Sponsorship Agreements – Moderated Table Topic Discussion
Private practice versus in-house
Patent and Trade-mark Licensing 101
Sponsorship Agreements

Publications

TOP TWELVE THINGS TO KNOW - New Canadian Trademarks Act June 17, 2019
Trademarks: Material Misstatements in Declarations of Use Revisited
The Top 10 Trademark Cases of 2017
Cannabis-related Trade-marks: Take Care in Choosing Correctly
CASL Private Right of Action Delayed; Enforcement by CRTC Continues
Avoiding Liability when using Keyword Advertising
Are You Ready for CASL's Private Right of Action?
It's Time for Your Company's Cyber-health Check-up
CRTC Imposes $1.1 Million Penalty for Alleged CASL Violation
Top Things You Can Do To Annoy Your Trade-marks Lawyer
Green Eggs And Spam: The Surprising Side Dish to Canada's Anti-Spam Law that May Catch Software Businesses Off Guard
The Internet Never Forgets: Google Inc.'s "right to be forgotten" EU ruling and its implications in Canada
Key Differences between US and Canadian Anti-Spam Laws
Top Ten Things You Need to Know About Canada's Anti-spam Law
ring the bells
Are You Ready For Your Close-up? Ten Things To Think About When Negotiating Sponsorship Agreements
New Domain Names Announced – Trade-mark Owners Take Note
International Contract Manual - Chapter 49 Canada
IP and Advertising:
Protecting your Organization from Litigation
Hemp or Hype – The Rules on Textile Labelling in Canada
Ambush Marketing and The Olympic and Paralympic Marks Act:
What this means for businesses and Olympic marketing
Use it or Lose it: A Guide To The Proper Use And Protection Of Your Newly Registered Trade-mark
Cheetah and Hare: Compare With Care
Wyrder and Weirder - Choosing and Protecting a Name
Top Ten Myths About Trade-Marks
Domain Name Disputes - Key Differences Between .CA and .COM Policies in Determining Bad Faith
Trade-Mark Owners Beware
Comparative Advertising: The Basics
Recent Developments of Importance in Advertising & Marketing Law
Is Your Distribution or Licensing Relationship a 'Franchise' Business?
The Answer Might Surprise You
Labelling For Life
Trade-Marks Issues in Advertising
Misleading Discounts Can Cost You
The Perils of Parodies: No Laughing Matter
The Perils of Parodies
Cashing-In with Money Ads
Contests: Child's Play and When Equal is Fair
Making Your Contest a Winner!
Contests Made Easy
Trading Stamps: The Crime in Coupons
Dare to Compare- Trade Mark Use in Comparative Advertising: A Canadian Perspective
Top Ten Tips for Structuring a Trade-Mark License
Toeing the Line When Marketing On-line

News

Managing Intellectual Property has once again recognized McMillan LLP among the leading Canadian firms in the 2018 edition of IP Stars
McMillan LLP ranks among top Canadian patent and trademark firms in Managing Intellectual Property's IP Stars Handbook
Dale Schlosser, Sharon Groom and Peter Giddens listed in the World Trademark Review (WTR) 1000 (2013)
Sharon Groom, co-chairing Leadership for Women Lawyers Conference

Education

  • INSEAD (Senior Executive Business Management Program), France - 2000
  • Queen's University, LLB - 1986
  • Queen's University, B.Mus. (Piano Performance) - 1983

Year Of Call

  • Called to the Ontario bar - 1988

Practices

intellectual property
CASL - spam and other electronic threats
fintech
trademarks
marketing and advertising
licensing
technology
copyright
confidential information
privacy and data protection
cybersecurity
franchise and distribution
franchising and distribution disputes

Industries

food, beverage and agribusiness
media, communications and entertainment
automotive
private equity - buyouts & venture capital investment
information technology
franchising and distribution
manufacturing, distribution and retail

Directorships and Professional Associations

  • Associate member of the Pharmaceutical Trademarks Group
  • Fellow of the Intellectual Property Institute of Canada
  • International Trademark Association
  • Internet Policy Advocacy Subcommittee of the Internet Committee of the International Trademark Association
  • Adjudicator, Resolution Canada Inc.
  • Intellectual Property Committee of Canadian Chamber of Commerce

Community Involvement

  • Member of the Board of Directors of the Toronto Symphony Orchestra and Chair of the Nominations and Governance Committee
  • Past Vice Chair of the Board of Directors of The Hummingbird (Sony) Centre for the Performing Arts
vcard

Sharon is a member of McMillan's Intellectual Property and Technology Law Group as well as its Competition Law Group. Her practice focuses on these areas.

Sharon has an extensive background in intellectual property having worked in private practice specializing in Canadian and US trademarks and copyright, as well as having been a Hearing Officer for the Trademarks Opposition Board.

She also brings a wealth of international corporate commercial and business expertise gained as in-house counsel for companies in the financial services, publishing and technology industries. Her positions have included Senior Vice President, Risk Management and General Counsel, Americas, for Thomas Cook; Director of Legal and Administrative Affairs and Assistant General Counsel for Harlequin Enterprises Limited where she managed a global portfolio of over 2,500 trademarks. She has also held a position as Corporate Legal Counsel for Newbridge Networks Corporation (now Alcatel Lucent).

Sharon is also an adjudicator for Resolution Canada Inc. to hear disputes over .ca domain names.

Sharon is on the Board of the Toronto Symphony Orchestra and Chair of its Nominations and Governance committee.

January 2019
Trademarks: Material Misstatements in Declarations of Use Revisited

Intellectual Property Bulletin

January 2018
The Top 10 Trademark Cases of 2017

Intellectual Property Bulletin

November 2017
Cannabis-related Trade-marks: Take Care in Choosing Correctly

Intellectual Property Bulletin

June 2017
CASL Private Right of Action Delayed; Enforcement by CRTC Continues

Litigation, Business Law and Technology Bulletin

February 2017
Avoiding Liability when using Keyword Advertising

Intellectual Property Bulletin

January 2017
Are You Ready for CASL's Private Right of Action?

Privacy and Class Action Bulletin

July 2016
It's Time for Your Company's Cyber-health Check-up

Cybersecurity Bulletin

February 2015
Top Things You Can Do To Annoy Your Trade-marks Lawyer
Intellectual Property Bulletin
March 2012
ring the bells
client alert
June 2011
New Domain Names Announced – Trade-mark Owners Take Note
Intellectual Property Bulletin
March 2010
International Contract Manual - Chapter 49 Canada
West, a Thomson Reuters Business
February 2008
IP and Advertising:
Protecting your Organization from Litigation
The Canadian Institute's 14th Annual Advertising & Marketing Law Conference
November 2007
Hemp or Hype – The Rules on Textile Labelling in Canada
Advertising and Marketing Bulletin
November 2006
Use it or Lose it: A Guide To The Proper Use And Protection Of Your Newly Registered Trade-mark
Intellectual Property and Technology Law Bulletin
June 2006
Cheetah and Hare: Compare With Care
Advertising and Marketing Bulletin
November 2005
Wyrder and Weirder - Choosing and Protecting a Name
Intellectual Property Bulletin
September 2005
Top Ten Myths About Trade-Marks
Intellectual Property Bulletin
Co-authored by Sharon Groom and Terry Chan, Student-at-Law
May 2005
Trade-Mark Owners Beware
Intellectual Property Bulletin
May 2005
Comparative Advertising: The Basics
Advertising & Marketing Bulletin
February 2005
Recent Developments of Importance in Advertising & Marketing Law
Published in The Canadian Legal LEXPERT Directory 2005
January 2005
Is Your Distribution or Licensing Relationship a 'Franchise' Business?
The Answer Might Surprise You
Litigation and Distribution and Franchise Law Bulletin
February 2004
Labelling For Life
Advertising & Marketing Bulletin
January 2004
Trade-Marks Issues in Advertising
Canadian Institute Conference on Advertising and Marketing 2004
October 2003
Misleading Discounts Can Cost You
Advertising & Marketing Bulletin
October 2003
The Perils of Parodies: No Laughing Matter
This article originally appeared as a Binchmarks column in Playback, October 2003
October 2003
The Perils of Parodies
Binchmarks
August 2003
Cashing-In with Money Ads
Advertising & Marketing Bulletin
July 2003
Contests: Child's Play and When Equal is Fair
Advertising & Marketing Bulletin
June 2003
Making Your Contest a Winner!
Advertising & Marketing Bulletin
May 12, 2003
Contests Made Easy
Binchmarks column in Playback Magazine
May 2003
Trading Stamps: The Crime in Coupons
Advertising & Marketing Bulletin
April 2003
Top Ten Tips for Structuring a Trade-Mark License
Advertising and Marketing Bulletin
March 2003
Toeing the Line When Marketing On-line
Advertising & Marketing Bulletin
May 2015
Key Points to Consider in Drafting Sponsorship Agreements – Moderated Table Topic Discussion
International Trademark Association Annual Meeting, San Diego, California
May 2012
Private practice versus in-house
Co-chair and speaker, CWI Leadership for Women Lawyers Conference
April 2012
Patent and Trade-mark Licensing 101
Moderator, IPIC
October 2011
Sponsorship Agreements
Presenter, Strategic Sponsorship Marketing: The Canadian Summit