Sharon E. Groom*

en_CA

Sharon Groom is an accomplished intellectual property lawyer with extensive experience in Canadian and US trademarks and copyright, and a secondary focus on privacy and data protection. Sharon assists clients in the banking, media, communications, entertainment, and technology sectors.

Over her distinguished legal career, Sharon gained a wealth of international corporate commercial and business expertise as in-house counsel for companies in the financial services, technology and publishing industries. As director of legal and administrative affairs and assistant general counsel for Harlequin Enterprises, she managed a global portfolio of over 2,500 trademarks.

Sharon also held the position of senior vice president, risk management and general counsel, Americas, for Thomas Cook, and served as corporate legal counsel for Newbridge Networks Corporation (now Alcatel Lucent).

Formerly a hearing officer for the Trademarks Opposition Board, Sharon currently acts as an adjudicator for Resolution Canada Inc. in disputes over .ca domain names. She is a leader of the firm’s national Intellectual Property Group.

Expertise

Practices

Industries

Media, Communications & Entertainment

Speaking Engagements

Key Points to Consider in Drafting Sponsorship Agreements – Moderated Table Topic Discussion International Trademark Association Annual Meeting, San Diego, California

May 2015

Private practice versus in-house Co-chair and speaker, CWI Leadership for Women Lawyers Conference

May 2012

Patent and Trade-mark Licensing 101 Moderator, IPIC

April 2012

Sponsorship Agreements Presenter, Strategic Sponsorship Marketing: The Canadian Summit

October 2011

News

Rankings & Recognition

World Trademark Review 1000: The World’s Leading Trademark Professionals 2021

Community Involvement

Member of the Board of Directors of the Toronto Symphony Orchestra
Past Vice Chair of the Board of Directors of The Hummingbird (Sony) Centre for the Performing Arts

Directorships & Affiliations

Fellow of the Intellectual Property Institute of Canada
International Trademark Association
Non-traditional Trademarks committee of the International Trademark Association
Adjudicator, Resolution Canada Inc.

Education & Admissions

1988

Called to the Ontario bar

2000

INSEAD (Senior Executive Business Management Program), France

1986

LLB Queen's University

1983

B.Mus. (Piano Performance)Queen's University

Publications

“Cross-Border Copyright Guide 2019“, TerraLex, page 20 (January 2019)
“IP and Advertising: Protecting your Organization from Litigation“, The Canadian Institute’s 14th Annual Advertising & Marketing Law Conference (February 2008)
“Hemp or Hype – The Rules on Textile Labelling in Canada“, Advertising and Marketing Bulletin (November 2007
“Ambush Marketing and The Olympic and Paralympic Marks Act: What this means for businesses and Olympic marketing“, Advertising and Marketing Bulletin (August 2007)
“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 (November 2006)
“Cheetah and Hare: Compare With Care“, Advertising and Marketing Bulletin (June 2006)
“Wyrder and Weirder – Choosing and Protecting a Name“, Intellectual Property Bulletin (November 2005)
“Top Ten Myths About Trade-Marks“, Intellectual Property Bulletin (September 2005)
“Domain Name Disputes – Key Differences Between .CA and .COM Policies in Determining Bad Faith“, Intellectual Property Bulletin (August 2005)
“Trade-Mark Owners Beware“, Intellectual Property Bulletin (May 2005)
“Comparative Advertising: The Basics“, Advertising & Marketing Bulletin (May 2005)
“Recent Developments of Importance in Advertising & Marketing Law“, The Canadian Legal LEXPERT Directory 2005 (February 2005)
“Is Your Distribution or Licensing Relationship a ‘Franchise’ Business? The Answer Might Surprise You“, Litigation and Distribution and Franchise Law Bulletin (January 2005)
“Labelling For Life“, Advertising & Marketing Bulletin (February 2004)
“Trade-Marks Issues in Advertising“, Canadian Institute Conference on Advertising and Marketing 2004 (January 2004)
“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)
“The Perils of Parodies“, Binchmarks (October 2003)
“Cashing-In with Money Ads“, Advertising & Marketing Bulletin (August 2003)
“Contests: Child’s Play and When Equal is Fair“, Advertising & Marketing Bulletin (July 2003)
“Making Your Contest a Winner!“, Advertising & Marketing Bulletin (June 2003)
“Contests Made Easy“, Binchmarks column in Playback Magazine (May 12, 2003)
“Trading Stamps: The Crime in Coupons“, Advertising & Marketing Bulletin (May 2003)
“Dare to Compare- Trade Mark Use in Comparative Advertising: A Canadian Perspective“, American Corporate Counsel Magazine (May 2003)
“Top Ten Tips for Structuring a Trade-Mark License“, Advertising and Marketing Bulletin (April 2003)
“Toeing the Line When Marketing On-line“, Advertising & Marketing Bulletin (March 2003)

Insights by Sharon E. Groom (19 Posts)

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.

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.

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.

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)

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.

Trademarks: Material Misstatements in Declarations of Use Revisited

Jan 18, 2019

The impact of misstatements in a declaration of use was recently revisited in the decision of Roots Corporation v. YM Inc. (Sales), 2019 FC 16

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

Canadian Anti-Spam Law: What you still need to know about CASL

Nov 30, 2017

Join the discussion where legal and industry leaders will provide the latest updates on CASL and how organizations are rising to the compliance challenge.

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

Nov 13, 2017

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

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CASL Private Right of Action Delayed; Enforcement by CRTC Continues

Jun 7, 2017

CASL Private Right of Action Delayed; Enforcement by CRTC Continues

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Avoiding Liability when using Keyword Advertising

Feb 6, 2017

Avoiding Liability when using Keyword Advertising

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Are You Ready for CASL’s Private Right of Action?

Jan 30, 2017

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

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Privacy, Data Protection and Cybersecurity Seminar

Nov 3, 2016

As organizations are increasing their investment in data safeguards, McMillan’s Privacy Group would like to help our clients understand their core privacy, data protection and cybersecurity obligations and related legal issues.

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