Geneviève Bergeron Partner, Lawyer and Trademark Agent

Geneviève Bergeron Partner, Lawyer and Trademark Agent

Bureau

  • Montréal

Phone number

514 397-2059

Bar Admission

  • Québec, 1998

Languages

  • English
  • French

Profile

Partner - Lawyer - Trademark Agent

Geneviève Bergeron is a partner, lawyer and trademark agent in Lavery’s Intellectual Property group. Her practice focuses on all aspects of trademarks, intellectual property transactions, copyright and domain names.

She has extensive experience in trademark matters, from availability searches to filing strategies to registration, in a wide variety of industries. She provides strategic advice and helps numerous companies protect their trademarks abroad.

Her trademark expertise 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.

Geneviève also advises clients on the application of the Charter of the French Language.

Publications 

  • Talk entitled “Élaborer une Stratégie de PU intégrée et à toute épreuve - pour protéger au maximum les actifs des PME avant de pénétrer le marché américain”, Industry Canada workshop, Montréal, March 27, 2014.
  • “Révision de la jurisprudence marquantes relative aux noms de domaine .ca à la suite des modifications apportées à la Politique de règlement des différends” (2013), Développements récents en droit de la propriété intellectuelle, Les Éditions Yvon Blais Inc., Vol. 375.
  • Talk entitled “La protection de la propriété intellectuelle développée en entreprise par les employés et les travailleurs autonomes”, October 2011.
  • “Quelques décisions-clés rendues en 2009 en matière de règlement des différends de noms de domaine .ca” (2009), Intellectual Property Journal, Vol. 21, No. 2.
  • “Dot-ca Domain Name Dispute Resolution: Where Do We Stand Five Years After the Implementation of the CIRA Policy?” (2008), Intellectual Property Journal, Vol. 21, No. 2.
  • “Language Requirements in Québec Under the Charter of the French Language: What do you need to know” (2008), INTA Bulletin, Vol. 63, No. 10.
  • “Règlement des différends .ca : Où en sommes-nous cinq ans après la mise en œuvre de la Politique de l’ACEI” (2007), Développements récents en droit de la propriété intellectuelle, Les Éditions Yvon Blais Inc., Vol. 281
  • “Protection des marques notoires et théorie de la dilution : une analyse comparative du droit américain et canadien à la lumière de décisions récentes de la Cour suprême du Canada” (2007), Les Cahiers de propriété intellectuelle, Vol. 19, No. 1.

Distinctions

  • Best Lawyersin Canada in intellectual property law, since 2021
  • World Trademark Review (WTR) 1000 - the World’s Leading Trademark Professionalsfor Canada (prosecution and strategy), since 2012
  • Managing Intellectual Property IP STARS  (Trademarks), 2022
  • Who’s Who Legal:IP (Trademarks), since 2019

Education

  • Graduate Diploma, Health Law and Policy, Université de Sherbrooke, 1998
  • LL.B., Université de Montréal, 1994

Boards and Professional Affiliations

  • Canadian Bar Association
  • International Trademark Association (INTA)
    • Member of the Famous and Well-Known Marks Committee, 2023
    • Member of the Commercialization of Brands Committee, 2020–2023
    • Member of the Right of Publicity Committee, 2018–2019
  • Intellectual Property Institute of Canada (IPIC)
    • Member of the Trademark Practice Committee, 2007–2015
  • College of Patent Agents and Trademark Agents (CPATA)
  1. Publication of the Regulation clarifying the obligations of Bill 96: Impacts on trademarks for products, advertising, and public signs and posters

    The Regulation1 specifying the new obligations of Bill 962 was published in the Gazette officielle du Québec on June 26, 2024. It modifies the current Regulation respecting the language of commerce and business.3 These changes were expected considering the questions raised by the passage of Bill 96 in June 2022, which required clarification. In this bulletin, we will discuss issues related to the use of trademarks in connection with products, commercial publications, public signs and posters, and commercial advertising. Exception for recognized trademarks Good news! The Regulation reintroduces the exception for “recognized” trademarks,4 within the meaning of the Trademarks Act. Common law trademarks and trademarks registered with the Canadian Intellectual Property Office (“CIPO”) may be used without a French version, provided that no French version of the trademark appears in the Register. By regulation, the government has extended the scope of the exception to trademarks. Under Bill 96 it was to apply only to CIPO-registered trademarks. It has been extended to also cover common law trademarks. With this amendment, the government has made the rules around trademarks more consistent, whether they are used in connection with products, commercial publications or public signs and posters. It is still recommended to register your trademarks to protect your rights, but registration is no longer a condition for compliance with applicable regulations. Obligation to translate generic and descriptive terms included in trademarks The Charter of the French language5 (the “Charter”) stipulates that any inscription on a product, its container or its wrapping must be in French, and that no inscription in another language may be given greater prominence than that in French or be available on more favourable terms. The Regulation confirms that the term “product” includes its container, packaging and any accompanying documents or objects.6 The Regulation also clarifies the scope of the obligation to translate descriptions and generic terms included in trademarks: “Description” and “generic term”: A description refers to one or more words describing the characteristics of a product, while a generic term describes the nature of a product, excluding the name of the enterprise and the name of the product as sold.7 Designations of origin and distinctive names of a cultural nature are not considered a description or a generic term. In all likelihood, the reference to the “name of the product as sold” refers to the product’s main trademark. The obligation to translate generic terms or descriptions contained in the trademark would not apply to the main trademarks under which the product is sold. Thus, according to the example provided by the Quebec government, there would be no need to translate into French the descriptions or generic terms included in the main trademark BestSoap, as illustrated below. The question also arises regarding secondary trademarks, which are often used to designate a specific product within a range of products. Can we say that such a secondary trademark qualifies as a "name of the product as sold," in addition to the main trademark? Unfortunately, the guide published by the Office québécois de la langue française ("OQLF") does not provide any clarity on this matter, while the text of the Regulation appears broad enough to allow for such an argument depending on the circumstances. In our opinion, such an argument could be made in some cases, but we will need to await the position of the OQLF (or a court decision) for more certainty on this issue. The Regulation specifies that the French translation of the generic terms or descriptions included in trademarks must appear in French on the product or on a medium permanently attached to the product.8 However, it does not provide a definition of “a medium permanently attached to the product.” It will be interesting to see how practice develops in this area, and how the OQLF interprets this notion. Keep in mind the Charter’s principle that no inscription in another language should be available on more favourable terms. Companies opting for the medium option will need to ensure not only the permanence of the medium, but also its availability, under conditions that are at least as favourable. It should also be noted that the size of the French translation of generic terms and descriptions included in a trademark is not specifically addressed in the Regulation. However, the OQLF website specifies that no generic term or description in another language should take precedence over that appearing in French; the OQLF thus seems to apply the general rule contained in the Charter.9 This means that the French text must be at least equivalent in size and appearance to that in another language, so that the latter is not predominant. Transitional period: The Regulation allows a two-year grace period to give businesses time to comply with the above requirements. Until June 1, 2027, any product that does not comply with these new requirements may continue to be distributed, retailed, leased, offered for sale or lease, or otherwise offered on the market, whether in return for payment or free of charge, provided (i) it was manufactured before June 1, 2025, and (ii) no corresponding French version of the recognized trademark has been registered in the Canadian trademark register by June 26, 2024.10 Although it will still be necessary to make every effort to comply with obligations, this measure ensures that existing non-compliant products can be liquidated. Commercial publications The Regulation makes no changes to the rules governing commercial publications, such as catalogues, brochures, folders, commercial directories and other similar publications. The exception applicable to “recognized” trademarks, which had not been amended in Bill 96 or in the draft regulations, remains unchanged. Common law trademarks and trademarks registered with CIPO may be used without a French version, provided that no French version has been registered. Contrary to what had been envisaged in the draft regulations, websites and social media are not expressly named as commercial publications whose French version must be available on terms that are at least as favourable as any version in another language. To date, the interpretation adopted and applied by the OQLF and the courts is that websites and social media are considered commercial publications and must therefore follow the same rules. Nevertheless, we will remain watchful to see if the lack of explicit reference in the Regulation to websites and social media is of any significance, and if the OQLF will consider changes to its approach to these two types of communication. Advertising and public signs and posters It is well known that the Charter requires public signs and posters and commercial advertising in Quebec to be in French. They may be both in French and in another language provided that French is markedly predominant.11 The “recognized” trademark exception also applies to public signs and posters and commercial advertising. Thus, common law trademarks and CIPO-registered trademarks may be used without a French version, if there is no corresponding French version in the Canadian trademark register.12 For public signs and posters visible from outside premises, the rule of “sufficient presence” of French gives way to that of the “clear predominance” of French, when the trademark or business name is in a language other than French, in whole or in part.13 Public signage visible from outside premises includes not only the exterior of a building, but also premises inside a shopping centre.14 In such cases, a trademark or company name in a language other than French must be accompanied by a generic term, a description of the goods or services concerned, or a slogan, in French.15 This trademark or company name visible on a storefront or inside a shopping centre will be considered in the overall visual impact of the premises. For the same visual field, text written in French has much greater impact when (i) the French text occupies a space at least twice as large as that devoted to text in another language, and (ii) its legibility and permanent visibility are at least equivalent to that of text in another language.16 Finally, as concerns digital signage with alternating French and non-French text, the French text is considered to have a much greater visual impact when it is visible for at least twice as long as the non-French text.17 Note that there is no grace period for public signs and posters. Companies therefore have until June 1, 2025, to comply with the new rules. The examples below, from the Quebec government, illustrate the application of these rules: Here is a summary of the main changes to the Charter and the Regulation that will come into effect on June 1, 2025: Products (labels, containers, packaging, or any accompanying document or object) A “recognized” trademark (registered or used) may be used in a language other than French, unless a corresponding French version is on the Canadian trademark register. Any description or generic term included in a trademark must appear in French, excluding the name of the company or the name of the product as sold (and other specific exceptions); on the OQLF website, it is stated that no generic term or description in another language may take precedence over that appearing in French. The French translation of these generic terms or descriptions must appear in French on the product or on a medium permanently attached to the product. A grace period until June 1, 2027, is granted for any product that does not comply with these new requirements; such a product may continue to be distributed, retailed, leased, offered for sale or lease, or otherwise offered on the market, whether in return for payment or free of charge, provided (i) it was manufactured before June 1, 2025, and (ii) no corresponding French version of the recognized trademark has been registered in the Canadian trademark register by June 26, 2024. Commercial publications (catalogues, brochures, folders, commercial directories) No change: A “recognized” trademark within the meaning of the Trademarks Act (registered or used) may be used in a language other than French, unless a French version has been registered. It is expected that the rules governing commercial publications will apply to websites and social media, in line with the current interpretation of the OQLF and the courts. Public signs and posters A “recognized” trademark within the meaning of the Trademarks Act(registered or used) may be used in a language other than French, unless a corresponding French version is on the Canadian trademark register. In public signs and posters visible from outside premises, including inside shopping malls, when a trademark or commercial name is in a language other than French, even in part:  French must be clearly predominant, taking into account the space allotted to the trademark or company name; and the trademark or company name must be accompanied by French terms, in particular a generic term, a description of the products or services, or a slogan. For the same visual space, the space allotted to French text must be at least twice as large as that devoted to text in another language, and its legibility and permanent visibility must be at least equivalent to that of text in another language. To learn more about this topic or for any questions concerning the Charter of the French language and its regulations, please contact our professionals or consult our previous publications! Regulation to amend mainly the Regulation respecting the language of commerce and business, Gazette officielle du Québec, (the "Regulation"). An Act respecting French, the official and common language of Québec, SQ, 2022, c. 14 (“Bill 96”). Regulation respecting the language of commerce and business, CQLR, c. C-11, r. 9. Regulation, supra, note 1, s. 2 (7.1) and s. 4 (25.1). Charter of the French language, CQLR, c. C-11, s. 51 Regulation, supra, note 1, s. 6 (27.1). Regulation, supra, note 1, s. 6 (27.2). Regulation, supra, note 1, s. 2 (7.1). Charter, supra, note 5, s. 51. Regulation, supra, note 1, s. 7. However, the grace period has been extended to December 31, 2025, for products covered by the new labelling standards set out in the Regulations Amending the Food and Drug Regulations (Nutrition Symbols, Other Labelling Provisions, Vitamin D and Hydrogenated Fats or Oils) (SOR/2022-168) or the Regulations Amending the Food and Drug Regulations and the Cannabis Regulations (Supplemented Foods) (SOR/2022-169). Charter, supra, note 5, s. 58. Regulation, supra, note 1, s. 4 (25.1). Charter, supra, note 5, s. 58.1 and Regulation, supra, note 1, s. 4 (s. 25.1). Regulation, supra, note 1, s. 6 (27.5). Regulation, supra, note 1, s. 6 (27.7). Regulation, supra, note 1, s. 6 (27.6). Components written in French will be presumed to meet these legibility and visibility requirements if they are permanent and are designed, lighted and situated so as to make them easy to read, both at the same time, at all times. Regulation, supra, note 1, s. 6 (27.6).

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  1. The Best Lawyers in Canada 2025 recognize 88 lawyers of Lavery

    Lavery is pleased to announce that 88 of its lawyers have been recognized as leaders in their respective fields of expertise by The Best Lawyers in Canada 2025. The ranking is based entirely on peer recognition and rewards the professional performance of the country's top lawyers. The following lawyers also received the Lawyer of the Year award in the 2025 edition of The Best Lawyers in Canada: Isabelle Jomphe: Intellectual Property Law Myriam Lavallée : Labour and Employment Law Consult the complete list of Lavery's lawyers and their fields of expertise: Geneviève Beaudin : Employee Benefits Law Josianne Beaudry : Mergers and Acquisitions Law / Mining Law / Securities Law Geneviève Bergeron : Intellectual Property 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 René Branchaud : Mining Law / Natural Resources Law / Securities Law Étienne Brassard : Equipment Finance Law / Mergers and Acquisitions Law / Project Finance Law / Real Estate Law Jules Brière : Aboriginal Law / Indigenous Practice / Administrative and Public Law / Health Care Law Myriam Brixi : Class Action Litigation / Product Liability Law Benoit Brouillette : Labour and Employment Law Marie-Claude Cantin : Construction Law / Insurance Law Brittany Carson : Labour and Employment Law André Champagne : Corporate Law / Mergers and Acquisitions Law Chantal Desjardins : Intellectual Property Law Jean-Sébastien Desroches : Corporate Law / Mergers and Acquisitions Law Raymond Doray : Administrative and Public Law / Defamation and Media Law / Privacy and Data Security Law Christian Dumoulin : Mergers and Acquisitions Law Alain Y. Dussault : Intellectual Property Law Isabelle Duval : Family Law Ali El Haskouri : Banking and Finance 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 : Biotechnology and Life Sciences Practice / Intellectual Property Law Marc-André Godin : Commercial Leasing Law / Real Estate Law Caroline Harnois : Family Law / Family Law Mediation / Trusts and Estates Marie-Josée Hétu : Labour and Employment Law Édith Jacques : Corporate Law / Energy Law / Natural Resources Law Marie-Hélène Jolicoeur : Labour and Employment Law Isabelle Jomphe : Advertising and Marketing Law / Intellectual Property Law Nicolas Joubert : Labour and Employment Law Guillaume Laberge : Administrative and Public Law Jonathan Lacoste-Jobin : Insurance Law Awatif Lakhdar : Family Law Marc-André Landry : Alternative Dispute Resolution / Class Action Litigation / Construction Law / Corporate and Commercial Litigation / Product Liability 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 : Labour and Employment Law / Workers' Compensation Law Josiane L'Heureux : Labour and Employment Law Hugh Mansfield : Intellectual Property Law Zeïneb Mellouli : Labour and Employment Law / Workers' Compensation Law Isabelle P. Mercure : Trusts and Estates / Tax Law Patrick A. Molinari : Health Care Law Luc Pariseau : Tax Law / Trusts and Estates Ariane Pasquier : Labour and Employment Law Hubert Pepin : Labour and Employment Law Martin Pichette : Insurance Law / Professional Malpractice Law / Corporate and Commercial Litigation Élisabeth Pinard : Family Law / Family Law Mediation François Renaud : Banking and Finance Law / Structured Finance Law Marc Rochefort : Securities Law Yves Rocheleau : Corporate Law Judith Rochette : Alternative Dispute Resolution / Insurance Law / Professional Malpractice Law Ian Rose FCIArb : Class Action Litigation / Director and Officer Liability Practice / Insurance Law Ouassim Tadlaoui : Construction Law / Insolvency and Financial Restructuring Law David Tournier : Banking and Finance Law Vincent Towner : Commercial Leasing Law André Vautour : Corporate Governance Practice / Corporate Law / Energy Law / Information Technology Law / Intellectual Property Law / Private Funds Law / Technology Law / Venture Capital Law Bruno Verdon : Corporate and Commercial Litigation Sébastien Vézina : Mergers and Acquisitions Law / Mining Law / Sports Law Yanick Vlasak :  Banking and Finance Law / Corporate and Commercial Litigation / Insolvency and Financial Restructuring Law Jonathan Warin : Insolvency and Financial Restructuring Law   We are pleased to highlight our rising stars, who also distinguished themselves in this directory in the Ones To Watch category: Romeo Aguilar Perez : Labour and Employment Law (Ones To Watch) Anne-Marie Asselin : Labour and Employment Law (Ones To Watch) Rosemarie Bhérer Bouffard : Labour and Employment Law (Ones To Watch) Marc-André Bouchard : Construction Law (Ones To Watch) Céleste Brouillard-Ross : Construction Law / Corporate and Commercial Litigation (Ones To Watch) Karl Chabot : Construction Law / Corporate and Commercial Litigation (Ones To Watch) Justine Chaput : Labour and Employment Law (Ones To Watch) Julien Ducharme : Corporate Law / Mergers and Acquisitions Law (Ones To Watch) James Duffy : Intellectual Property Law (Ones To Watch) Joseph Gualdieri : Mergers and Acquisitions Law (Ones To Watch) Katerina Kostopoulos : Corporate Law (Ones To Watch) Joël Larouche : Corporate and Commercial Litigation (Ones To Watch) Despina Mandilaras : Construction Law / Corporate and Commercial Litigation (Ones To Watch) Jean-François Maurice : Corporate Law (Ones To Watch) Jessica Parent : Labour and Employment Law (Ones To Watch) Audrey Pelletier : Tax Law (Ones To Watch) Alexandre Pinard : Labour and Employment Law (Ones To Watch) Camille Rioux : Labour and Employment Law (Ones To Watch) Sophie Roy : Insurance Law (Ones To Watch) Chantal Saint-Onge : Corporate and Commercial Litigation (Ones To Watch) Bernard Trang : Banking and Finance Law / Project Finance Law (Ones To Watch) Mylène Vallières : Mergers and Acquisitions Law / Securities Law (Ones To Watch) These recognitions are further demonstration of the expertise and quality of legal services that characterize Lavery’s professionals.  

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  2. 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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  3. Lavery welcomes Geneviève Bergeron to its Intellectual Property Group

    Lavery is delighted to welcome Geneviève Bergeron as a Partner and Trademark Agent in our Intellectual Property Group. She has extensive experience in trademarks, intellectual property transactions, copyright and domain names. She also advises on the application of the Charter of the French Language to labelling, advertising and commercial signage. She has been recognized for her expertise in intellectual property and trademark law by numerous rankings, including The Best Lawyers in Canada, World Trademark Review (WTR) 1000, Managing Intellectual Property and Who’s Who Legal: IP. Geneviève provides strategic advice and helps many companies protect their trademarks, both in Canada and abroad. Her trademark expertise covers a wide range of industries and includes litigation, such as opposition and cancellation proceedings, the negotiation of coexistence and settlement agreements, and commercial contracts involving intellectual property. Geneviève is also very involved in professional associations related to her practice, including the Intellectual Property Institute of Canada and the International Trademark Association. “I am very pleased to be joining Lavery’s intellectual property team. It’s a high-powered team with a solid reputation both in Canada and abroad, offering high-level expertise on the protection, management, enhancement and defence of intellectual property rights. I’m delighted to become a member of such a talented and passionate team, and look forward to actively contributing to the firm’s success,” says Geneviève.

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