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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

Practices

Industries

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

News

Rankings & Recognition

  • 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
  • Listed in Who’s Who Legal Canada: 2018 as a leader in Trademarks
  • Recognized by Best Lawyers in Canada (2019) as a leading lawyer in the area of Intellectual Property Law
  • 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)
  • 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 by Peter Giddens (10 Posts)

post

COVID-19: Expedited Examination of Canadian Trademark Applications

 Dec 16, 2020

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

Read More
post

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

Aug 4, 2020

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

Read More
post

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

May 13, 2020

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

Read More
post

Implied Trademark Licenses: A Case Study

Apr 12, 2020

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.

Read More
post

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

Mar 26, 2020

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

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post

Bill C-4 Receives Royal Assent: Incoming Changes to the Intellectual Property Landscape

Mar 24, 2020

New intellectual property provisions passed into law following Canada's ratification of the "new NAFTA", the
Canada-United States-Mexico Agreement (CUSMA)

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post

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

Jun 4, 2019

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

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post

Canada Announces a National Intellectual Property Strategy

Apr 30, 2018

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.

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post

The Top 10 Trademark Cases of 2017

Jan 15, 2018

McMillan LLP's Intellectual Property group welcomes readers into 2018. Our gift is a top 10 list of trademark cases from Canadian case law from 2017

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post

Social Media and Websites as National Communication Platforms in Canada in Light of French Language Requirements

Apr 24, 2015

Social Media and Websites as National Communication Platforms in Canada in Light of French Language Requirements

Read More