Chantal Desjardins Partner, Lawyer and Trademark Agent

Chantal Desjardins Partner, Lawyer and Trademark Agent

Bureau

  • Montréal

Phone number

514 397-7605

Fax

514 871-8977

Bar Admission

  • Québec, 1985

Languages

  • English
  • French

Profile

Partner | Lawyer - Trade-mark Agent

Chantal Desjardins is a partner, lawyer and trade-mark agent in Lavery’s intellectual property group. She contributes actively to the development of her clients’ rights in this field, which includes the protection of trade-marks, industrial designs, copyright, trade secrets, domain names and other related forms of intellectual property, in order to promote her clients’ business goals.

Me Desjardins provides legal advice and expertise with respect to protecting and managing IP assets, represents her clients in the examination of applications, opposition proceedings, and litigation in Canada and in other countries. She negotiates IP licences, various contracts in the field, and technology transfers, advises and defends clients’ rights in the field of advertising and labelling and other topics such as the Charter of the French language. She regularly provides guidance to clients on IP issues implicated in new and existing products and services. She is involved in the IP due diligence review of transactions. She regularly gives conferences, seminars and courses and publishes articles on intellectual property matters and participated on the advisory board of the Trademarks Office regarding the reform in trademark law and its implementation.

Publications

  • Text Reviser of two articles published in the “Revue francophone de la propriété intellectuelle” by l’Association francophone de la propriété intellectuelle, ECTA special number, December 2017
  • “La notion d’emploi en marques de commerce“, Québec Bar, November 2016
  • “Procédure de radiation des enregistrements de marques”, Barreau du Québec, Montreal, November 2011
  • “Marques sous haute surveillance”, Barreau du Québec, Montreal, November 2008
  •  “Are we speaking the same language”, INTA Annual Meeting, Toronto, May 2006
  • “Licence de marques de commerce, Survol des décisions administratives et judiciaires récentes”, Développements récents en droit de la propriété intellectuelle, Vol. 215, 2004
  • Keep an eye on how others use your trade-mark: a simple authorization is generally not enough!”, Newsletter GGData, Vol. 4, No. 4, December 2004
  • "Le contrôle en droit canadien des marques de commerce et un second regard sur l’article 50”, Les Cahiers de Propriété Intellectuelle, Vol. 14, No. 1, 2001
  • Infringement of Trade-marks Relating to Products on a Website”, Newsletter GGData, Vol. 1, No. 5, December 2001
  • Drawing the Line Between Comparative Advertising and Third Party Use: Canada”, International Trademark Association, San Antonio, Texas, United States, 1997
  • Coates, M. A., Desjardins, C., McGurhill, G.,”Canadian Trademark Practice and Procedure”, International Trademark Association, Practice Paper No. 3, 1993.
  • "Les derniers développements jurisprudentiels dans le droit des marques”, Continuing Education Department, Québec Bar, 1991
  • Desjardins, C., Tremblay, C., “Aide-Mémoire. Marques de commerce”, Wilson & Lafleur, 1990
  • “Pourquoi conserver l’article 49 dans la Loi sur les marques de commerce?” 2 C.I.P.R. 295, 1986

Conferences

  • The year in review- trade-marks, Webinar, Intellectual Property Institute of Canada, February 2018
  • “Top IP Cases of the year (trademarks)”, Intellectual Property Institute of Canada, Annual meeting, Niagara Falls, October 2017
  • President and Moderator of the Trade-mark Practitioners Group (RPM) , Canadian Chapter of the APRAM Association, conferences since January 2013, including the following subjects: “Classification de Nice”, “Utilisation permise de marques de tiers”, “Problèmes de contrefaçon sur internet: les recours au Canada et en France à l’égard des intermédiaires et des contrefacteurs”, “Quelle est la valeur d’un enregistrement de marque de commerce dans le cadre d’un litige?”, “Contrefaçon de marques de commerce et recouvrement de dommages-intérêts ou de profits : à qui le choix?”“Système de  Madrid: système d’enregistrement international de marques et la classification internationale”, “Marque ‘ordinaire’ à trois dimensions et signe distinctif”, “Charte de la langue française: Dispositions relatives aux marques de commerce”, etc.
  • “Les considérations linguistiques en rapport avec le droit des marques”. Faculty of Law, University of Montreal, December 2016
  • “La propriété intellectuelle : quels avantages peut-elle vous offrir?”, conference to students in fashion design, Marie-Victorin College, Montreal, 2014, 2015 and 2016
  • “Les Rudiments de la Propriété Intellectuelle”, Association des juristes italo-canadiens, Montreal, Novembre 2015
  • “La propriété intellectuelle comme actif d’entreprise”, Hautes Études Commerciales (HEC), Montreal, April 2012
  • “La propriété intellectuelle comme actif d’entreprise”, presented to a group of Legal Professionals, Montreal, February 2012
  • “Procédure de radiation des enregistrements de marques”,  Québec Bar : “Les développements récents en droit de la propriété intellectuelle”, Montreal, November 2011
  • How to win the speed-dating by protecting packaging or Protecting packaging in Canada”, 2010 FICPI ABC Meeting, Ottawa, June 2010
  • “Panel sur la pratique en droit des marques Canada-U.S.”, Association des Praticiens du Droit des Marques et des Modèles (APRAM), Paris, France, September 2009
  • «L’Ère post jeux et fête», The Canadian Institute, Montreal, November 2008
  • “Noms de produits de santé à présentation et à consonance semblables”, Regroupement des praticiens du droit des marques de commerce (RPM), Montreal, June 2008
  • Les chemins de la réussite d’une carrière/trouver sa passion : Prendre des risques”, Career Women Interaction, Montreal, September 2007
  • “Droits des marques et modèles au Canada et aux États-Unis”, Association des Praticiens du Droit des Marques et des Modèles (APRAM), Paris, France, June 2007
  • Le point sur les exigences en matière de licences de marques de commerce au Canada : comment faut-il gérer l’utilisation de la marque par d’autres entreprises (y compris à l’intérieur du même regroupement) pour éviter de compromettre leur validité”, Regroupement des praticiens du droit des marques de commerce (RPM), Montreal, April 2007
  • Conflicts : Where and how to draw the line”, Intellectual Property Institute of Canada 80th Annual Meeting, St. Andrews-by-the-Sea, New Brunswick, September 2006
  • Are we speaking the same language”, International Trademark Association Annual Meeting Toronto, May 2006
  • President of the second day at the forum on the “Women Leadership”, Canadian Institute, April 2006
  • “Women and Technology”, “Understanding the current issues”, Career Women Interaction, Montreal, Quebec, February 2006
  • Moderator at the “INTA Emerging Issues Forum”, Savannah, Georgia, February 2006
  • “Pourquoi s’attarder au territoire alors que nous sommes tous citoyens du village global?”, The Canadian Institute, Montreal, June 2005
  • “Les licences en marques : une interprétation sclérosée ?” Canadian Bar Association, October 2002
  • “Mock cross-examination”, Bi-annual meeting of the Canadian Institute of Intellectual Property, Ottawa, March 2002
  •  Honorary President of the VIth “Forum québécois pour les femmes-cadres” organized by the “Institut International de Recherche”, January 2001
  • “Les aspects légaux de la propriété intellectuelle”, presented at the Centre de recherche informatique de Montréal (CRIM), November 2000
  • Intellectual Property in the New Millenium. Non-Traditional Trade-marks. Animated Trade-marks and Two-Dimensional Get-Up”, Annual Meeting , Intellectual Property Institute of Canada, Quebec City, September 1999
  • Deontology in intellectual property practise”, Intellectual Property Institute of Canada, Montreal, November 1997
  • Drawing the Line Between Comparative Advertising and Third Party Use: Canada”, International Trade-Mark Association, Annual Meeting, San Antonio, Texas, United States, May 1997
  • “L’avenir de l’adhésion du Canada aux conventions internationales”, Quebec City, 1996
  • “The knock-off”, conference organized in conjunction with Goudreau Gage Dubuc and Martineau Walker, Montreal, 1995
  • “Le licensing au Canada”, IRPI Henri-Desbois Intellectual Property Research Institute and Paris Chamber of Commerce, Paris, France, 1994
  • “Les derniers développements jurisprudentiels dans le droit des marques”, Service de la formation permanente, Quebec Bar Association, Montreal, 1991
  • “Pourquoi conserver l’article 49 dans la Loi sur les marques de commerce?”, London, Ontario, 1986
  • Workshops on the basic and advanced courses relating to trade-marks. Courses organized by McGill University and the Intellectual Property Institute of Canada
  • Roundtable guest speaker on various intellectual property subjects for the International Trademark Association
  • Training sessions on trade-marks, copyrights, trade secrets and related topics for various clients and audience

Professional and community activities

  • Fondation du Conservatoire de musique et d’art dramatique du Québec
    • Board member, since 2017
  • Trois Tristes Tigres (theater company)
    • Board member, since 2016 and vice-president of the Board since 2017
  • Fondation du Centre des auteurs dramatiques (CEAD)
    • Board Member, 2009-2014
  • Fund raising Ambassador for the Fondation du Conservatoire de musique et d’art dramatique, 2016
  • Member of the Board, Chœur de chambre du Québec, 2013-2015

Distinctions

  • The Best Lawyers in Canada in the field of Intellectual Property Law, since 2018
  • The Best Lawyers in Canada, 13th Edition
  • The Canadian Legal LEXPERT® Directory in the field of Intellectual Property, depuis 2016
  • World Trademark Review 1000
    • Leading Trademark Professionals (since 2011)
  • Who’s Who Legal: Canada
    • Leading Trademark Practitioner (since 2010)
  • The International Who’s Who of Trademarks Lawyers
    • Leading Practitioner (since 2011)
  • The Best Lawyers in Canada, Lawyer of the Year, Intellectual Property, 2020
Best Lawyers 2024

Education

  • Diploma in Notarial law, Université de Montréal, 1980
  • L.L.L., Université de Montréal, 1979

Boards and Professional Affiliations

  • Member of Lavery’s Board of Directors (2018-2024)
  • Canadian Bar Association
    • Member of Council of CBA-Québec, 2008
    • Member of the Organizing Committee of 2003 Annual Meeting
  • Co-managing Director of the intellectual property firm Goudreau Gage Dubuc 2006-2018
  • Québec Bar
    • Member of the managing partners task force on Panorama project (ethnocultural equality in the profession), 2016
    • Member of the managing partners task force on Justicia project (equality for the advancement of women in the profession), 2013-2016
  • Intellectual Property Institute of Canada (IPIC)-Fellow member-
    • Member of the Industrial Design Committee, 2008
    • Member of the Madrid Protocol Liaison Committee, 2004-2006
    • Member of the Education Committee, 1998-1999
    • Director of the Advanced Course on Trade-marks offered by the Intellectual Property Institute of Canada and McGill University, 1998
    • Assistant-Director of the Advanced Course on Trade-marks offered by the Intellectual Property Institute of Canada and McGill University, 1997
    • Member of the Trade-mark Practices Committee, 1996-1997
  • Association des Praticiens du droit des Marques et des Modèles (APRAM)
    • President of APRAM Canada Commission, since January 2013
  • Regroupement des praticiens en marques de commerce (RPM)
    • President, since January 2013
  • International Trademark Association (INTA)
    • Member of the Forum Committee, 2005
    • Member of the Roundtable Committee, 1998-2000
    • Member of the Planning Committee, 1996-1997
    • Member of the Legislative Analysis Committee, 1996
    • Member of the Publication Committee, 1990-1993
  • Fédération des chambres de commerce du Québec
    • Member of the manufacturer, innovation and exportationcommittee, 2016-
  • Member of International Strategist, a multidisciplinary task force supporting exporting companies
  • Board of Trade Metropolitan Montreal
    • 2002 – President ex-officio of the Business Women in Action committee
    • 2000 – 2002 – President of Business Women in Action
    • 1998 – Vice-President of the reading committee and Member of the Executive Committee of Business Women in Action
    • 1997 – 1999 – Member of the Organizing Committee of the Networking Dinner of Business Women in Action
  • European Communities Trade Mark Association (ECTA)
  • Former Assistant Editor for the “Canadian Legislative Report” and responsible for the synopsis for the Quebec legislations
  • College of Patent Agents and Trademark Agents (CPATA)
  1. Official marks in Canada: The prospect of upcoming changes

    Before delving into the topic, let’s begin with a definition. Official marks are statutory instruments specific to Canadian practice. They are not trademarks per se, but are treated similarly, because they are adopted and used by a limited group of organizations including universities, Canadian public authorities and Her Majesty’s Forces.1 In this article, we will be focusing on Canadian public authorities. There are several hundred marks in the Register belonging to public authorities, including the federal and provincial governments, government agencies and municipalities. Unlike traditional trademarks, official marks do not protect specific goods or services, but instead cover all classes of goods and services. They may even be descriptive, as they are not required to be distinctive. Moreover, they are not registered in the usual sense of the word. Instead, a notice of adoption is simply published in the Trademarks Journal. One unique feature of official marks is that they are not subject to a renewal process. They can therefore remain in the Register indefinitely. That being so, official marks may hinder the registration of a trademark filed subsequently, unless the public authority concerned voluntarily withdraws the notice of adoption of its official mark. Lastly, it is important to note that official marks are not subject to examination or opposition proceedings. In other words, the Registrar of Trademarks (the “Registrar”) makes no official verification as to their validity or compliance with the standard registration criteria. Thus, because of the extensive protection afforded to official marks, they appear to be virtually unassailable. But is that really the case? The Registrar considers that they have no discretion to refuse to give public notice of an official mark, unless it has not been registered by a Canadian public authority or such authority has not adopted or used its official mark at the time of filing its application. When the Trademarks Act (the “Act”) was amended in June 2019, trademark professionals were hoping that the criteria providing these marks with extensive protection would be revised. However, Parliament chose not to undertake an in-depth review of the laws governing official marks. That being said, the Office of the Registrar did provide some clarification in October 2020 as to its practice regarding official marks. First, since 2020, the Registrar requires evidence of public authority status. This change was made further to several comments on the questionable status of certain so-called “public authorities.” The decision in Ontario Association of Architects v. Association of Architectural Technologists of Ontario (C.A.), 2002 FCA 218, clearly states that for a body to qualify as a public authority, the government must exercise a significant degree of control over its activities, particularly as relates to its governance and decision-making, and such activities must benefit the public.  Given that the laws governing public authorities have been in force for several decades, it is reasonable to assume that many published official marks are no longer held by public authorities or no longer meet the criteria defining a public authority. What is the proper way to respond to an opposition based on the resemblance between an official mark and a trademark? The options are limited. It is important to remember that subsection 9(1) of the Act states that no person shall adopt in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for, an official mark. The test is not based on a likelihood of confusion, as is the case when examining the likelihood of confusion between two trademarks. Instead, it is based on resemblance. Trademark professionals may argue that the applied-for mark is not identical or so similar to the official mark as to be confused with it. Another option—mainly in cases where the applied-for trademark is identical or very similar to an official mark—is to seek the consent of the official mark’s owner to use and register the trademark. In some cases, however, contacting a public authority may prove difficult, either because it no longer exists, or because it simply will not respond to requests for consent. Some public authorities ask for financial compensation in exchange for their consent. Can an official mark be contested? For the time being, there is no simple mechanism for contesting an official mark. The process of publishing a public notice of an official mark is not subject to opposition proceedings. Third parties have the option of contesting an official mark by means of an appeal or an application for judicial review to the Federal Court. They may do so in cases where an official mark was not adopted and used before the public notice was issued, or the body in question is not considered a public authority, or the official mark infringes on another mark. However, it should be noted that such proceedings are costly and take time. So what does the future hold? While the laws governing official marks remain essentially intact, some amendments are expected. The Canadian legislative authorities intend to add two new sections to the Act, namely sections 9(3) and 9(4). The purpose of these amendments is to clarify that even where a public notice has been issued concerning an official mark, such notice does not apply if the entity that requested it is not a public authority or no longer exists. In such circumstances, the Registrar may, on their own initiative or at a person’s request, give public notice that section 9 does not apply. Our understanding is that the Registrar will have new powers, including that of requesting—either on their own initiative or at the request of a person who pays the prescribed fee—that a so-called official mark be invalidated should its owner fail to respond to the Registrar’s notice requiring evidence of public authority status. This amendment to the Act should be introduced shortly. On another note, there were some interesting decisions handed down in 2023. KASAP TURKISH STEAKHOUSE & Design: The decision in The Board of Regents of the University of Texas System and EDAM Ltd., 2023 TMOB 161, clearly establishes the limitations of official marks when it comes to assessing the likelihood of confusion between two marks. The Board of Regents of the University of Texas opposed the application for the trademark KASAP TURKISH STEAKHOUSE & Design (hereinafter “Kasap”): in particular, on the grounds that the Kasap mark bore such a resemblance to the official mark of the University of Texas that it could be confused with its official mark as shown below: However, as previously mentioned, when assessing the resemblance between a trademark and an official mark, particular attention is paid to the similarity between the marks. The Trademarks Opposition Board concluded that the applicant’s applied-for mark did not resemble the official mark as to be likely to be mistaken for it, despite the presence of an image of a longhorn cow’s head in both marks. The distinctiveness of the word “KASAP” in the applicant’s mark was deemed sufficient to distinguish the two marks. As such, the opposition was rejected. A mark that includes an official mark along with other elements does not “consist of” that official mark. Via Rail Canada Inc. and Via Transportation, Inc., 2023 TMOB 155  This decision concerns an opposition filed by Via Rail Canada Inc. (the Opponent and owner of an official mark) against a trademark application submitted by Via Transportation, Inc. (the Applicant). The application was for the mark “VIA & Design” as shown below: for use in association with the transportation of passengers and related mobile application software and telecommunication services. The Opponent opposed the application based on an allegation that the mark caused confusion with its trademarks, official marks and trade names containing the word “VIA” and used in association with its national railway services and related goods and services. Ultimately, the Applicant’s application was rejected in part because the Applicant’s mark was not registrable under section 12(1)(e), as it was deemed too similar to the Opponent’s official “VIA” mark, which was likely to cause confusion. The hearing officer summarized the resemblance test as follows in paragraph 106: The resemblance test under section 9(1)(n)(iii) of the Act differs from a standard confusion analysis in that it requires a likelihood that consumers will be mistaken as between the marks themselves rather than a likelihood that consumers will be confused as to the source of the goods or services. In short, the general consensus is that the laws governing official marks in Canada could certainly use a thorough revision, one that would help weed out any marks cluttering up the register of official marks that no longer fit the definition. Examples of university official marks: Université de Montréal (0910712), Universität Heidelberg (0923735), Louisiana State University (0923069). It should be noted that universities are not required to be Canadian to request publication of an official mark. The Armed Forces have adopted several marks on behalf of Her Majesty, including PORTE DAUPHINE (0903172) & Design, SKY HAWKS (0903269) and CORMORANT & Design (0903170). More specifically, we refer to sections 9 and following of the Trademarks Act.

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  2. Canadian Intellectual Property Office (CIPO): Fee Increase

    CIPO has announced an increase in their fees as of January 1, 2024. Their current fees will be increased by at least 25%. This increase will apply not only to trademarks, but also to patents, industrial designs and copyrights. For example, the anticipated official fee to file an application for registration of a trademark is being increased from $347.35 to $458.00 for the first class, and from $105.26 to $139.00 for each additional class. A majority of CIPO’s other fees are subject to a similar adjustment. As such, this increase will have an impact not only upon filing an application for registration, but also during the registration process and upon renewal. We therefore recommend that you review your intellectual property portfolio to determine if new applications should be filed or renewals effected before the end of the year. CIPO indicates that the increase will contribute to supporting its strategy on intellectual property which is aimed at offering services comparable to those offered worldwide. We hope that it will also reduce turnaround times!

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  3. Ten things you should know about the amendments to Quebec’s Charter of the French language

    Quebec recently enacted Bill 96, entitled An Act respecting French, the official and common language of Québec, which aims to overhaul the Charter of the French language. Here are 10 key changes in this law that will impose significant obligations on businesses: As of June 1, 2025, businesses employing more than 25 people (currently the threshold is 50 people) for at least six months will be required to comply with various “francization”1 obligations. Businesses with between 25 and 99 employees may also be ordered by the Office québécois de la langue française (the OQLF)2 to form a francization committee. In addition, at the request of the OQLF, businesses may have to provide a francization program for review within three months. As of June 1, 2025, only trademarks registered in a language other than French (and for which no French version has been filed or registered) will be accepted as an exception to the general principle that trademarks must be translated into French. Unregistered trademarks that are not in French must be accompanied by their French equivalent. The rule is the same for products as well as their labelling and packaging; any writing must be in French. The French text may be accompanied by a translation or translations, but no text in another language may be given greater prominence than the text in French or be made available on more favourable terms. However, as of June 1, 2025, generic or descriptive terms included in a trademark registered in a language other than French (for which no French version has been registered) must be translated into French. In addition, as of June 1, 2025, on public signs and posters visible from outside the premises, (i) French must be markedly predominant (rather than being sufficiently present) and (ii) the display of trademarks that are not in French (for which no French version has been registered) will be limited to registered trademarks. As of June 1, 2022, businesses that offer goods or services to consumers must respect their right to be informed and served in French. In the event of breaches of this obligation, consumers have the right to file a complaint with the OQLF or to request an injunction unless the business has fewer than five employees. In addition, any legal person or company that provides services to the civil administration3 will be required to provide these services in French, including when the services are intended for the public. As of June 1, 2022, subject to certain criteria provided for in the bill, employers are required to draw up the following written documents in French: individual employment contracts4 and communications addressed to a worker or to an association of workers, including communications following the end of the employment relationship with an employee. In addition, other documents such as job application forms, documents relating to working conditions and training documents must be made available in French.5 As of June 1, 2022, employers who wish to require employees to have a certain level of proficiency in a language other than French in order to obtain a position must demonstrate that this requirement is necessary for the performance of the duties related to the position, that it is impossible to proceed using internal resources and that they have made efforts to limit the number of positions in their company requiring knowledge of a language other than French as much as possible. As of June 1, 2023, parties wishing to enter into a consumer contract in a language other than French, or, subject to various exceptions,6 a contract of adhesion that is not a consumer contract, must have received a French version of the contract before agreeing to it. Otherwise, a party can demand that the contract be cancelled without it being necessary to prove harm. As of June 1, 2023, the civil administration will be prohibited from entering into a contract with or granting a subsidy to a business that employs 25 or more people and that does not comply with the following obligations on the use of the French language: obtaining a certificate of registration, sending the OQLF an analysis of the language situation in the business within the time prescribed, or obtaining an attestation of implementation of a francization program or a francization certificate, depending on the case. As of June 1, 2023, all contracts and agreements entered into by the civil administration, as well as all written documents sent to an agency of the civil administration by a legal person or by a business to obtain a permit, an authorization or a subsidy or other form of financial assistance must be drawn up exclusively in French. As of September 1, 2022, a certified French translation must be attached to motions and other pleadings drawn up in English that emanate from a business or legal person that is a party to a pleading in Quebec. The legal person will bear the translation costs. The application of the provisions imposing this obligation has, however, been suspended for the time being by the Superior Court.7 As of September 1, 2022, registrations in the Register of Personal and Movable Real Rights and in the Land Registry Office, in particular registrations of securities, deeds of sale, leases and various other rights, must be made in French. Note that declarations of co-ownership must be filed at the Land Registry Office in French as of June 1, 2022. The lawyers at Lavery know Quebec’s language laws and can help you understand the impact of Bill 96 on your business, as well as inform you of the steps to take to meet these new obligations. Please do not hesitate to contact one of the Lavery team members named in this article for assistance. We invite you to consult the other articles concerning the modifications made to Quebec’s Charter of the French language: Trademarks and Charter of the French language: What can you expect from Bill 96? Amendments to the Charter of the French Language: Impacts on the Insurance Sector “Francization” refers to a process established by the Charter of the French language to ensure the generalized use of French in businesses. The OQLF is the regulatory body responsible for enforcing the Charter of the French language. The civil administration in this law includes any public body in the broad sense of the term. An employee who signed an individual employment contract before June 1, 2022, will have until June 1, 2023, to ask their employer to provide them with a French translation if the employee so wishes. If the individual employment contract is a fixed-term employment contract that ends before June 1, 2024, the employer is not obliged to have it translated into French at the request of the employee. Employers have until June 1, 2023, to have job application forms, documents related to work conditions and training documents translated into French if these are not already available to employees in French. Among these exceptions are employment contracts, loan contracts and contracts used in “relations with persons outside Quebec.” There seems to be a contradiction in the law with regard to individual employment contracts which are contracts of adhesion and for which the obligation to provide a French translation nevertheless seems to apply. Mitchell c. Procureur général du Québec, 2022 QCCS 2983.

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  4. Entrepreneurs and Intellectual Property: Avoid these 13 mistakes to protect yourself (Part 3 of 3)

    In the third and final entry of this three-part article series, we share with you the last set of intellectual property (IP)–related mistakes (mistakes #10 to #13) that we regularly see with startups. We hope you will find it useful for your business. Please be sure to read our first and second entries in this series, where we go over mistakes #1 to #5 and #6 to #9, respectively. Happy reading! Part 3 of 3 Mistake #10:       Assuming that your invention is unpatentable One common mistake we see business owners make is that they assume their technology is not patentable. This frequently applies to computer-related inventions, such as software. Even though there is no outright ban on patenting software in Canada, many inventors are under the impression that software is unpatentable. This is most likely due to the fact that many patent applications for computer-implemented inventions are initially refused because the Patent Office determines that the invention in question is merely a disembodied series of mental steps and/or a mathematical formula (both of which are not considered patentable subject matter). However, it is important to remember that, while certain types of subject matter are not patentable in Canada (e.g., disembodied mental steps and mathematical formulae, as mentioned above), that does not mean that technology involving such unpatentable subject matter (e.g., computer software) is completely void of patentability. Often, it simply means that another aspect of the technology should be the focus of the patent application. For example, with regard to computer-implemented inventions, one strategy to increase the likelihood of patentability is to draft the patent application in such a way so as to emphasize that the computer hardware is essential, or to draft the application in such a way that it is clear that the invention creates an output comprising discernible effects or changes (e.g.: this can be as simple as generating distinct groups in a classification method). It is also worth noting that many inventors are under the mistaken impression that a new piece of technology has to be all but revolutionary in order to be patentable. However, improvements over existing technology are also patentable as long as they are sufficiently new and inventive. Accordingly, it is important to speak to a patent agent to properly determine if and how your invention may be patented. Mistake #11:       Believing that your patent automatically gives you the right to use and/or commercialize your invention One common misconception regarding patents is that they give the owner thereof the right to use and/or commercialize the patented technology without fear of infringing third-party patents. However, what a patent actually does is allow its owner to exclude others from using and/or commercializing their patented technology. It is not a shield against potential infringement of third-party IP rights. For example, if you obtain a patent for a piece of technology you developed, that does not necessarily mean you have the right to use or commercialize that technology. Specifically, if your technology incorporates patented technology owned by another company, then that company can actually prevent you from using or commercializing your own invention. This is an important aspect of “patent protection” that all entrepreneurs should be aware of. Mistake #12:       Not informing yourself about the criteria for recognition as an inventor or owner of an invention, and not training your employees on these criteria Many types of intellectual property disputes can arise within a business. Most of the time, they are the result of misconceptions, such as: An employee believes they are the inventor of an invention, when they are not; An employee believes that as the inventor of an invention, they are necessarily entitled to consideration (monetary or otherwise); the invention belongs to them rather than to the company; they are free to use the invention, for example upon leaving the company to become a competitor; or An employer believes that their company can use the specific results of a researcher’s work obtained from a previous job. It’s easy to imagine how messy such issues can get! An ounce of prevention is certainly worth a pound of cure. Get informed! Also, clarify these issues with new employees as soon as you hire them, and set down in writing who will own the rights to intellectual property developed during the course of employment. A quick training session before such problems arise can set the record straight and avoid conflicts based on unrealistic expectations. Mistake #13:       Not having an intellectual property protection strategy After reading this three-part article, we hope you now have a better understanding of the importance of developing an intellectual property strategy for your company. While such strategies can be very complicated, we have provided three broad questions that you should consider at all times (not just when starting out).  What intellectual property is my company using? This first question tasks you with identifying intellectual property that your company uses. This would include any technology that you are using or selling; any brand names/logos; and any works you are currently using (e.g., logos, slogans, website layouts, website texts, pictures, brochures or computer programs). Is there a risk that I am infringing a third party’s IP? Once you have identified the above intellectual property, you should ask yourself if your activities might infringe a third party’s IP rights. Obtaining a response may involve the following: Hiring a patent agent to perform a freedom to operate search for any technology you plan on using. Hiring a lawyer specialized in IP to perform a trademark search and opinion for any brand names/logos you use, as well as to negotiate and prepare an assignment of IP rights. How can I expand my own IP portfolio? This question involves determining, for each piece of IP you have identified, if and how it can be protected. This can include asking yourself the following additional questions: Is any of the technology I use or commercialize worth protecting? If so, should I file a patent application or keep the technology a trade secret? In which countries do I want IP protection? Are any of my company’s brand names or logos worth protecting by filing a trademark application? What’s important is not necessarily that you protect each and every piece of intellectual property your company owns, but that you have properly evaluated your company’s IP and have come up with an effective strategy that suits your business. In order to properly optimize your company’s IP portfolio, we naturally recommend speaking with your IP professional, whether it be a patent agent, a trademark agent, or a lawyer. Conclusion Lavery’s intellectual property team would be happy to help you with any questions you may have regarding the above or any other IP issues. Why don’t you take a look at our Go Inc. start-up program? It aims to provide you with the legal tools you need as an entrepreneur so you can start your company on the right foot. Click on the following links to read the two previous parts. Part 1 | Part 2

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  1. Lexpert Recognizes Three Partners as Leading Technology and Health Lawyers in Canada

    On June 17, 2024, Lexpert recognized the expertise of three of our partners in its 2024 Lexpert Special Edition: Technology and Health. Chantal Desjardins, Isabelle Jomphe, Béatrice T Ngatcha, Selena Lu and André Vautour now rank among Canada’s leaders in the area of Technology and Health. Chantal Desjardins is a partner, lawyer and trade-mark agent in Lavery’s intellectual property group. She contributes actively to the development of her clients’ rights in this field, which includes the protection of trademarks, industrial designs, copyright, trade secrets, domain names and other related forms of intellectual property, in order to promote her clients’ business goals. Isabelle Jomphe is a partner, lawyer and trade-mark agent in Lavery’s intellectual property group. Ms. Jomphe’s expertise includes trademark, industrial design, copyright, domain names, trade secrets, technology transfers, as well as advertising law, labelling and Charter for the French Language regulations. She is known for providing strategic and practical advice in all aspects of IP law, with an emphasis in the field of trademarks. She advises clients in trade-mark clearance searches, filing strategies, opposition proceedings and litigation in Canada and abroad. Béatrice T Ngatcha is a lawyer and patent agent in Lavery’s intellectual property group. She is a patent agent registered to practice in Canada and the United States. She is also a lawyer called to the Ontario Bar and a member of the Quebec Bar (c.j.c). Béatrice holds a doctoral degree in chemistry from Université Laval and has been a post-doctoral fellow at the National Research Council in Ottawa. In addition to a busy patent prosecution practice serving Canadian and foreign clients, Beatrice’s expertise in sought in the areas of intellectual property litigation, trade secrets, due diligence, strategy, portfolio value building, licensing and arbitration. Selena Lu is a partner in the Business Law group and focuses her practice on mergers and acquisitions. She frequently advises clients abroad on commercial law matters relating to investment and expansion in Canada. Over the years, Selena has developed an interest and acquired significant experience in supporting customers in their technological change. On a day-to-day basis, she advises clients on the legal impacts of the introduction of new technologies. Moreover, she oversees the development of the structure and negotiation of mergers and acquisitions along with complex business relationships for developing, marketing and acquiring technologies. André Vautour practices in the fields of corporate and commercial law and is particularly interested in corporate governance, strategic alliances, joint ventures, investment funds and mergers and acquisitions of private corporations. He practises in the field of technology law (drafting technology development and transfer agreements, licensing agreements, distribution agreements, outsourcing agreements, and e-commerce agreements). About Lavery Lavery is the leading independent law firm in Quebec. Its more than 200 professionals, based in Montréal, Quebec, Sherbrooke and Trois-Rivières, work every day to offer a full range of legal services to organizations doing business in Quebec. Recognized by the most prestigious legal directories, Lavery professionals are at the heart of what is happening in the business world and are actively involved in their communities. The firm's expertise is frequently sought after by numerous national and international partners to provide support in cases under Quebec jurisdiction.

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  2. 36 partners from Lavery ranked in the 2024 edition of The Canadian Legal Lexpert Directory

    Lavery is proud to announce that 36 partners are ranked among the leading practitioners in Canada in their respective practice areas in the 2024 edition of The Canadian Legal Lexpert Directory. The following Lavery partners are listed in the 2024 edition of The Canadian Legal Lexpert Directory:   Asset Securitization Brigitte M. Gauthier Class Actions Laurence Bich-Carrière Myriam Brixi Construction Law Nicolas Gagnon Marc-André Landry Corporate Commercial Law Luc R. Borduas Étienne Brassard Jean-Sébastien Desroches Christian Dumoulin André Vautour    Corporate Finance & Securities Josianne Beaudry         Corporate Mid-Market Luc R. Borduas Étienne Brassard Jean-Sébastien Desroches Christian Dumoulin Édith Jacques    Selena Lu André Vautour Employment Law Richard Gaudreault Marie-Josée Hétu Marie-Hélène Jolicoeur Guy Lavoie Family Law Caroline Harnois Awatif Lakhdar Infrastructure Law Nicolas Gagnon Insolvency & Financial Restructuring Jean Legault      Ouassim Tadlaoui Yanick Vlasak Intellectual Property Chantal Desjardins Isabelle Jomphe Labour Relations Benoit Brouillette Brittany Carson Simon Gagné Richard Gaudreault Marie-Josée Hétu Marie-Hélène Jolicoeur Guy Lavoie Life Sciences & Health Béatrice T Ngatcha Litigation - Commercial Insurance Dominic Boisvert Marie-Claude Cantin Bernard Larocque Martin Pichette Litigation - Corporate Commercial Laurence Bich-Carrière Marc-André Landry Litigation - Product Liability Laurence Bich-Carrière Myriam Brixi Mergers & Acquisitions Edith Jacques Mining Josianne Beaudry           René Branchaud Sébastien Vézina Occupational Health & Safety Josiane L'Heureux Workers' Compensation Marie-Josée Hétu Guy Lavoie Carl Lessard The Canadian Legal Lexpert Directory, published since 1997, is based on an extensive peer survey process. It includes profiles of leading practitioners across Canada in more than 60 practice areas and leading law firms in more than 40 practice areas. It also features articles highlighting current legal issues and recent developments of importance. Congratulations to our lawyers for these appointments, which reflect the talent and expertise of our team. About Lavery Lavery is the leading independent law firm in Québec. Its more than 200 professionals, based in Montréal, Québec City, Sherbrooke and Trois-Rivières, work every day to offer a full range of legal services to organizations doing business in Québec. Recognized by the most prestigious legal directories, Lavery professionals are at the heart of what is happening in the business world and are actively involved in their communities. The firm's expertise is frequently sought after by numerous national and international partners to provide support in cases under Québec jurisdiction.

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  3. Lavery and its Intellectual Property group recognized in the 2024 edition of the WTR 1000: The World’s Leading Trademark Professionals

    We are pleased to announce that Lavery has been ranked in the 2024 edition of the WTR 1000: The World’s Leading Trademark Professionals. Four of our members have also been recognized as leaders in their respective areas of practice. Geneviève Bergeron Partner | Lawyer - Trademark Agent Geneviève’s practice focuses on all aspects of trademarks, intellectual property transactions, copyright and domain names. Her trademark expertise also includes litigation, such as opposition and cancellation proceedings, formal notices and the negotiation of coexistence and settlement agreements, as well as the drafting, negotiation and review of commercial contracts, such as licence and assignment agreements. Chantal Desjardins - Partner | Lawyer - Trademark Agent Chantal actively assists her clients in establishing their rights in the field of intellectual property, which includes the protection and defence of trademarks, industrial designs, copyright, domain names, trade secrets and other related forms of intellectual property, in order to further their business objectives. Isabelle Jomphe - Partner | Lawyer - Trademark Agent Isabelle’s expertise includes trademarks, industrial designs, copyrights, trade secrets and technology transfers, as well as advertising law and matters related to labelling and the Charter of the French Language. Suzanne Antal - Senior Trademark Agent Suzanne focuses her practice on all aspects of trademark registration, including drafting and filing trademark applications and representing clients in trademark opposition and cancellation proceedings, both nationally and internationally.  The WTR 1000 is a guide that identifies the top trademark professionals and law firms around the globe. The lawyers and law firms featured in this guide are selected further to a rigorous process involving research and interviews with practitioners, clients and in-house counsel. About Lavery Lavery is the leading independent law firm in Québec. Its more than 200 professionals, based in Montréal, Québec City, Sherbrooke and Trois-Rivières, work every day to offer a full range of legal services to organizations doing business in Québec. Recognized by the most prestigious legal directories, Lavery professionals are at the heart of what is happening in the business world and are actively involved in their communities. The firm's expertise is frequently sought after by numerous national and international partners to provide support in cases under Québec jurisdiction.

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  4. The Best Lawyers in Canada 2024 recognize 68 lawyers of Lavery

    Lavery is pleased to announce that 68 of its lawyers have been recognized as leaders in their respective fields of expertise by The Best Lawyers in Canada 2024. The following lawyers also received the Lawyer of the Year award in the 2024 edition of The Best Lawyers in Canada: Josianne Beaudry : Mining Law Jules Brière : Administrative and Public Law Bernard Larocque : Professional Malpractice Law Carl Lessard : Workers' Compensation Law Consult the complete list of Lavery's lawyers and their fields of expertise: Josianne Beaudry : Mergers and Acquisitions Law / Mining Law Laurence Bich-Carrière : Class Action Litigation / Contruction Law / Corporate and Commercial Litigation / Product Liability Law Dominic Boivert : Insurance Law Luc R. Borduas : Corporate Law / Mergers and Acquisitions Law Daniel Bouchard : Environmental Law Elizabeth Bourgeois : Labour and Employment Law (Ones To Watch) René Branchaud : Mining Law / Natural Resources Law / Securities Law Étienne Brassard : Equipment Finance Law / Mergers and Acquisitions Law / Real Estate Law Jules Brière : Aboriginal Law / Indigenous Practice / Administrative and Public Law / Health Care Law Myriam Brixi : Class Action Litigation Benoit Brouillette : Labour and Employment Law Richard Burgos : Mergers and Acquisitions Law / Corporate Law / Commercial Leasing Law / Real Estate Law Marie-Claude Cantin : Insurance Law / Construction Law Brittany Carson : Labour and Employment Law Karl Chabot : Construction Law (Ones To Watch) Chantal Desjardins : Intellectual Property Law Jean-Sébastien Desroches : Corporate Law / Mergers and Acquisitions Law Raymond Doray : Privacy and Data Security Law / Administrative and Public Law / Defamation and Media Law Christian Dumoulin : Mergers and Acquisitions Law Alain Y. Dussault : Intellectual Property Law Isabelle Duval : Family Law Philippe Frère : Administrative and Public Law Simon Gagné : Labour and Employment Law Nicolas Gagnon : Construction Law Richard Gaudreault : Labour and Employment Law Julie Gauvreau : Intellectual Property Law / Biotechnology and Life Sciences Practice Audrey Gibeault : Trusts and Estates Caroline Harnois : Family Law / Family Law Mediation / Trusts and Estates Marie-Josée Hétu : Labour and Employment Law Édith Jacques : Energy Law / Corporate Law / Natural Resources Law Marie-Hélène Jolicoeur : Labour and Employment Law Isabelle Jomphe : Advertising and Marketing Law / Intellectual Property Law Guillaume Laberge : Administrative and Public Law Jonathan Lacoste-Jobin : Insurance Law Awatif Lakhdar : Family Law Bernard Larocque : Professional Malpractice Law / Class Action Litigation / Insurance Law / Legal Malpractice Law Éric Lavallée : Technology Law Myriam Lavallée : Labour and Employment Law Guy Lavoie : Labour and Employment Law / Workers' Compensation Law Jean Legault : Banking and Finance Law / Insolvency and Financial Restructuring Law Carl Lessard : Workers' Compensation Law / Labour and Employment Law Josiane L'Heureux : Labour and Employment Law Despina Mandilaras : Construction Law / Corporate and Commercial Litigation (Ones To Watch) Hugh Mansfield : Intellectual Property Law Zeïneb Mellouli : Labour and Employment Law / Workers' Compensation Law Isabelle P. Mercure : Trusts and Estates Patrick A. Molinari : Health Care Law Jessica Parent : Labour and Employment Law (Ones To Watch) Luc Pariseau : Tax Law / Trusts and Estates Ariane Pasquier : Labour and Employment Law Jacques Paul-Hus : Mergers and Acquisitions Law Audrey Pelletier : Tax Law (Ones To Watch) Hubert Pepin : Labour and Employment Law Martin Pichette : Insurance Law / Professional Malpractice Law / Corporate and Commercial Litigation Élisabeth Pinard : Family Law François Renaud : Banking and Finance Law / Structured Finance Law Judith Rochette : Insurance Law / Professional Malpractice Law Ian Rose FCIArb : Director and Officer Liability Practice / Insurance Law / Class Action Litigation Sophie Roy : Insurance Law (Ones To Watch) Chantal Saint-Onge : Corporate and Commercial Litigation (Ones To Watch) Ouassim Tadlaoui : Construction Law / Insolvency and Financial Restructuring Law Bernard Trang : Banking and Finance Law / Project Finance Law (Ones To Watch) Mylène Vallières : Mergers and Acquisitions Law / Securities Law (Ones To Watch) André Vautour : Corporate Governance Practice / Corporate Law / Information Technology Law / Intellectual Property Law / Technology Law / Energy Law Bruno Verdon : Corporate and Commercial Litigation Sébastien Vézina : Mergers and Acquisitions Law / Mining Law Yanick Vlasak : Corporate and Commercial Litigation / Insolvency and Financial Restructuring Law Jonathan Warin : Insolvency and Financial Restructuring Law These recognitions are further demonstration of the expertise and quality of legal services that characterize Lavery’s professionals. About Lavery Lavery is the leading independent law firm in Quebec. Its more than 200 professionals, based in Montréal, Quebec, Sherbrooke and Trois-Rivières, work every day to offer a full range of legal services to organizations doing business in Quebec. Recognized by the most prestigious legal directories, Lavery professionals are at the heart of what is happening in the business world and are actively involved in their communities. The firm’s expertise is frequently sought after by numerous national and international partners to provide support in cases under Quebec jurisdiction.

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