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Peter Giddens*

He | Him

Toronto

416.307.4042

peter.giddens@mcmillan.ca

Expertise Franchising & Distribution Intellectual Property Marketing & Advertising Media, Communications & Entertainment Technology

*Peter Giddens Professional Corporation

Peter Giddens is a highly regarded intellectual property (IP) lawyer and registered trademark agent who assists clients on the acquisition, disposition, clearance, use, protection, enforcement and licensing of intellectual property. He has particular expertise in trademark, copyright and domain name issues, and extensive experience advising clients in the technology, franchising, marketing and advertising and media and communications sectors. Peter frequently advises on IP issues in complex acquisitions and divestitures and negotiated commercial transactions.

Active in all aspects of trademark law, Peter prepares and prosecutes applications to register trademarks before the Canadian Intellectual Property Office, co-ordinates international filings, and manages domestic and foreign trademark portfolios. He also negotiates trademark licence agreements and other agreements affecting IP rights, and manages and protects trademark portfolios for international franchise systems.

A significant portion of Peter’s practice is dedicated to representing clients in contentious matters such as trademark opposition and expungement proceedings before the Trademarks Opposition Board, and domain name dispute proceedings under the Uniform Domain-Name Dispute-Resolution Policy (UDRP) and the CIRA Domain Name Dispute Resolution Policy (CDRP). He also represents and advises clients in matters of trademark infringement, passing off and copyright infringement.

Peter was recently recognized by Chambers Canada and Best Lawyers in Canada as a leading lawyer in the area of Intellectual Property. He is also a past chair of the Trademark Office Practices Committee of the International Trademark Association and a leader of the firm’s Intellectual Property Group.

Expertise

Industries

Practices

Intellectual Property

Representative Matters

Acted as counsel in more than 200 trademark opposition and summary expungement proceedings
Acted as counsel in more than two dozen domain name dispute resolution arbitration cases
Advised a professional sports league concerning IP issues in various legal proceedings arising from human rights complaints regarding a team’s use of its registered trademark
Acted as intellectual property counsel to Rogers Media in its acquisition of CityTV from CTVglobemedia
Acted as intellectual property counsel to AXA Canada in its acquisition of The Citadel General Assurance Company
Acted as intellectual property counsel to Trader Media Corp. in its acquisition by Yellow Pages Media Group
Advised Rogers Stadium Limited Partnership, part of Rogers Communications, on intellectual property issues during its purchase of the Toronto SkyDome (now Rogers Centre)
Acted as intellectual property counsel to Rogers Communications in its acquisition of The Toronto Blue Jays Baseball Club and continues to provide intellectual property advice to the team’s ownership, including sponsorship, licensing and marketing activities
Provides ongoing counsel to world-famous brands in industries including: beverage alcohol, insurance, financial services, furniture retail, professional sports; entertainment; film production; telecommunications; education; cosmaceuticals; food; security; professional services; software; kitchen appliances
Meets with government officials regarding proposed changes to Canada’s trademark legislation and regulations
Acted as the principal drafter of the submissions by the International Trademark Association (INTA) to the Government of Canada’s various consultations concerning Canada’s accession to the Madrid Protocol, the Nice Agreement and the Singapore Treaty and the related amendments to the Trademarks Act and the Trademarks Regulations
Called by the House of Commons Standing Committee on Industry, Science and Technology to testify as an expert witness concerning Bill C-8 (An Act to amend the Copyright Act and the Trade-marks Act and to make consequential amendments to other Acts)

Speaking Engagements

Protecting the Business’s Brand (Life Cycle of a Business Series), Toronto

September 17, 2020

Portfolio Management Under Canada’s New Trademarks Act, Toronto

February 21, 2019

Protecting the Business’s Brand (Life Cycle of a Business Series), Toronto

August 8, 2018

IP Fundamentals for Business Lawyers, Toronto

April 4, 2016

Disruptive Technologies: Mitigating Legal Risks (Enabling Ideas: Conquering Disruption), Toronto

May 22, 2015

Navigating Copyright Law: a Risk Management Roadmap, Toronto

February 3, 2015

IP Issues for Financing Lawyers: IP as Collateral, Toronto

June 21, 2012

Imminent Domain: Domain Name Issues for Brand Owners (5 O’Clock Lecture Series), Toronto

November 2007

Trademark Issues on the Internet (Intellectual Property Institute of Canada 2007 Spring Meeting, Gatineau, Quebec)

2007

Current Issues in Intellectual Property (5 O’Clock Lecture Series), Toronto

September 2006

IP Rights in Bluenose II, Dalhousie Law School Law Hour, Dalhousie University, Halifax

September 18, 2003

Official Marks (5 O’Clock Lecture Series), Toronto

March 2003

Domain Names in Corporate Transactions (5 O’Clock Lecture Series), Toronto

2001

Trademark Registration Process in Canada, Toronto

February 28, 2001

Rankings & Recognition

Listed in Who’s Who Legal: Global 2022 as a leader in Intellectual Property: Trademarks
Listed in Who’s Who Legal: Canada 2022 as a leader in Trademarks
Recognized by Chambers Canada (2023) as a leading lawyer in the area of Intellectual Property
Recognized by Best Lawyers in Canada (2023) as a leading lawyer in the area of Intellectual Property Law
Listed in Managing Intellectual Property’s 2022 IP STARS Guide as a Trademark Star
Recognized by Chambers Global (2022) as a Recognized Practitioner in the area of Intellectual Property
Recognized in the 2022 Canadian Legal Lexpert Directory as a Repeatedly Recommended Lawyer in the area of Intellectual Property
Recognized by Chambers Canada (2022) as a leading lawyer in the area of Intellectual Property
Recognized by Best Lawyers in Canada (2022) as a leading lawyer in the area of Intellectual Property Law
Listed in Who’s Who Legal: Global 2021 as a leader in Intellectual Property: Trademarks
Listed in Who’s Who Legal: Canada 2021 as a leader in Trademarks
Recognized in the 2021 Canadian Legal Lexpert Directory as a Repeatedly Recommended Lawyer in the area of Intellectual Property
Recognized in the 2021 Lexpert Special Edition on Canada’s Leading Technology Lawyers as a Leading Technology Lawyer
Recognized by Chambers Global (2021) as a Recognized Practitioner in the area of Intellectual Property
Recognized by the Best Lawyers in Canada (2021) as a leading lawyer in the area of Intellectual Property Law
Recognized by Chambers Canada (2021) as a leading lawyer in the area of Intellectual Property
Listed in Who’s Who Legal: Canada 2020 as a leader in Trademarks
Recognized in the 2020 Canadian Legal Lexpert Directory as a Repeatedly Recommended lawyer in the area of Intellectual Property
Recognized by Chambers Global (2020) as a Recognized Practitioner in the area of Intellectual Property
Recognized by Chambers Canada (2020) as a leading lawyer in the area of Intellectual Property
Recognized by Best Lawyers in Canada (2020) as a leading lawyer in the area of Intellectual Property Law
Listed in Who’s Who Legal: Canada 2019 as a leader in Trademarks
Listed in 2019 Managing Intellectual Property’s IP Stars – The Guide to the World’s Leading IP Firms and Practitioners
Recognized by Best Lawyers in Canada (2019) as a leading lawyer in the area of Intellectual Property Law
Listed in Who’s Who Legal Canada: 2018 as a leader in Trademarks
Listed in Best Lawyers in Canada (2018) as a leading lawyer in the area of Intellectual Property Law
Repeatedly recommended, Intellectual Property, in the 2017 Canadian Legal Lexpert Directory
Listed in the Canadian Legal Lexpert Directory 2016 as leading lawyer in the area of Intellectual Property
Leadership in Mentoring Award (2016)
Listed in World Trademark Review’s WTR 1000 – The World’s Leading Trademark Professionals
Listed in Managing Intellectual Property’s IP Stars – The Guide to the World’s Leading IP Firms and Practitioners
Recipient of the International Trademark Association Service Award for the Advancement of Trade Mark Law, 2005

Community Involvement

Coaches minor league hockey; fundraises for United Way

Directorships & Affiliations

Director General’s Advisory Committee (CIPO-TIDB)
International Trademark Association (INTA), Legislation & Regulation – Canada Subcommittee (2020-2021 and 2022-2023)
International Trademark Association (INTA), Chair of the Trademark Office Practices Committee & Co-Chair of the North American Advisory Council (2018-2019)
International Trademark Association (INTA), Vice-Chair of the Trademark Office Practices Committee (2016-2017)
International Trademark Association (INTA), TOPC-Canada Subcommittee Chair (2012-2015)
Intellectual Property Institute of Canada (IPIC), Trademark Practices Committee

Education & Admissions

1999

Called to the Ontario bar

1997

LLB Dalhousie University

1994

B.Sc. (Hons. Biology)University of King’s College/Dalhousie University

Publications

“A Trademark Primer for Franchising in Canada,” Franchising World (May 2019)
“Milano Pizzeria Case Study: Hard Lessons Learned by Canadian Licensor” The Licensing Journal (April 2019)
“Internet and E-Commerce Law In Canada,” Social Media and Website as National Communication Platforms in Canada in Light of French Language Requirements (July 2015)
“Brand Promotion and Unauthorized Trademark Use in Virtual Worlds,” INTA Bulletin, Vol. 62, No. 17 (September 2007)
“Can Copyright Curb Grey Marketing? – The Supreme Court Speaks,” Toronto Law Journal Vol. 2, No. 8 (September 2007)
“Don’t Get Burned in Effigi: A Warning to Unregistered Trade Mark Users,” Lang Michener Intellectual Property Brief (Fall 2004)
“Selection of Registrar: Important Considerations for Domain Name Registrants,” Lang Michener Intellectual Property Brief (Spring 2004)
“Trade Dress Protection In Canada,” INTA (November 2003)
“Canada Mulls Joining Madrid,” INTA Bulletin Vol. 58, Issue 14 (August 2003)
“Domain Name Issues in Commercial Transactions,” Lang Michener Intellectual Property Brief (July 2001)
(July 2001) “.biz and .info Implementation Schedule Update,” Lang Michener Intellectual Property Brief
“Protecting Trade Mark Owners’ Rights Under the New .biz and .info Domain Name Registration Procedures,” Lang Michener Intellectual Property Brief (June 2001)
“Changes to .ca Domain Name System,” Lang Michener Intellectual Property Brief (Summer 2000)
“Do Your Own Patent Search,” Biotech (June 1999)

Insights (13 Posts)

Public Consultation Related to Proposed Amendments to the Trademarks Regulations in Canada

Public consultations on proposed amendments to the Canadian Trademark Regulations are underway. Please see this bulletin for more information.

Dec 7, 2022

20 More Years of Copyright Protection Starting December 30, 2022

The extension of general copyright protections from 50 years to 70 years after the life of the author shall come into force on December 30, 2022.

Nov 30, 2022

Use of Laudatory Terms in Trademarks: An Overview for the Beverages Sector

A business may be tempted to choose a trademark that at least in part simply lauds the quality of its goods and services. Think twice before proceeding.

Jan 5, 2022

NFTs and Canadian Copyright Law

This bulletin discusses the copyright considerations regarding non-fungible tokens (NFTs) under Canadian copyright law.

Aug 31, 2021

COVID-19: Expedited Examination of Canadian Trademark Applications

CIPO is now taking requests to expedite the examination of Canadian trademark applications related to COVID-19 goods and services.

Dec 16, 2020

Trademark Law: Change in Practice Regarding Extensions of Time in Examination

CIPO has changed its practice regarding time extensions to file responses to examiner's reports. Such guidance will affect Canadian prosecution strategies.

Aug 4, 2020

9 Things You Should Do Right Now to Protect Your Franchise System During the COVID-19 Pandemic

Tips to help franchisors mitigate risks that may result from the COVID-19 pandemic and how to prepare for future emergency business interruptions

May 13, 2020

Implied Trademark Licenses: A Case Study

When will a trademark license granted from one party to another be implied? The Federal Court in the Core Consultants Realty[1] decision (“Core Consultants”) recently had an opportunity to revisit this question.

Apr 12, 2020

COVID-19: Seeking Court Relief Regarding the Disease of Trademark Infringement

This article addresses challenges in using Canada's courts to deal with trademark infringement matters during the COVID-19 pandemic

Mar 26, 2020

TOP TWELVE THINGS TO KNOW – New Canadian Trademarks Act June 17, 2019

On June 17, 2019 major changes to Canada’s Trademarks Act will come into force.

Jun 4, 2019

Canada Announces a National Intellectual Property Strategy

The Strategy's three prongs consist of IP legislative reforms, a reduction in the complexity and cost of IP protection and initiatives to improve IP awareness and education.

Apr 30, 2018