Smart & BiggarPartner, Ottawa; Barrister and Solicitor; Patent and Trademark Agent

Philip Lapin

About Philip Lapin

Philip Lapin is a lawyer practicing trademarks, patents, industrial designs and 6 other areas of law. Philip received a degree from Queen's University in 1988, and has been licensed for 31 years. Philip practices at Smart & Biggar in Ottawa, ON.

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Services

Areas of Law

  • Intellectual Property 2
    • Trademarks
    • Patents
  • Other 7
    • Industrial Designs
    • Industrial/Mechanical
    • Software/Information Technologies
    • Copyright & Media
    • IP Management & Strategic Counselling
    • Licensing & IP Transactions
    • Domain Names & Internet Law

Practice Details

  • Firm Information
    Position
    Partner, Ottawa; Barrister and Solicitor; Patent and Trademark Agent
    Firm Name
    Smart & Biggar
  • Representative Cases & Transactions
    Cases
    Representative Cases: Special Fruit NV v Berry Fresh, LLC, 2016 TMOB 52 - Successfully represented the applicant in this opposition to the marks BERRY FRESH
    BERRY FRESH PRODUCE.
    Benisti Import-Export Inc v Pirelli & C. S.p.A, 2016 TMOB 13 - Successfully represented the applicant in this opposition to the mark P ZEROTEMPO.
    Adhoc Ventures Canada Inc v Nissan Jidosha Kabushiki Kaisha, 2015 TMOB 135 - Represented the applicant in this opposition to INFINITI. The decision was a partial victory, with virtually all the goods remaining in the application.
    Sim & McBurney v Anipet Animal Supplies Inc, 2015 TMOB 130 - Represented the requesting party in this cancellation proceeding for the mark UNLEASHED. The decision was a partial victory, with most of the goods being struck from the registration.
    Constellation Br
    s Quebec, Inc v Casa Vinicola Botter Carlo & C. (C.V.B.C.) S.P.A, 2015 TMOB 160 - Successfully represented the applicant in this opposition to the mark DIVICI.
    Smart & Biggar v Constellation Br
    s Quebec, Inc, 2015 TMOB 82 - Successfully represented the requesting party in this cancellation proceeding of the mark DA VINCI.
    American Express Marketing & Development Corp v Black Card, LLC - Represented the applicant in these multiple oppositions. Successfully resolved with all oppositions rejected.
    [Opposition to BLACKCARD] 2016 TMOB 125
    [Opposition to MY BLACKCARD] 2016 TMOB 124
    [Opposition to BLACK CARD BENEFITS] 2016 TMOB 123
    [Opposition to MY BLACKCARD REWARDS] 2016 TMOB 122
    [Opposition to BLACK CARD BUSINESS] 2016 TMOB 121
    [Opposition to BLACK CARD EXCLUSIVE REWARDS] 2016 TMOB 120
    [Opposition to BLACK CARD Design] 2016 TMOB 119
    [Opposition to BLACK & Design] 2016 TMOB 118
    [Opposition to BLACK CARD CONCIERGE] 2016 TMOB 117
    [Opposition to BLACK CARD TELLAPAL] 2016 TMOB 116

Experience

  • Bar Admission & Memberships
    Admissions
    1995, Ontario
    1995, Registered Trade-mark Agent
    1998, Registered Patent Agent
    Registered to practise before the United States Patent and Trademark Office
    Memberships

    Professional Involvement

    Memberships

    •Fellow, Intellectual Property Institute of Canada
    past chair of the Trademarks Practices Committee
    past member of the International Trademark Issues Committee
    past member of the Forums and Seminars Committee
    past Co-chair and Co-editor of the IPIC Bulletin
    •Member, International Trademark Association
    member of the Non-traditional Marks Committee
    past member of the Canada Amicus Subcommittee of the International Amicus Committee
    past member of the Whois Subcommittee of the Internet Committee
    past member of the Dilution and Well-Known Marks Committee
    past member of the Parallel Imports Committee
    •Member
    Canadian Trademark Agent Examination Board, 2010 - 2013 term
    •Member, Canadian Bar Association
    past member of the Trademarks Committee

    Bar Fellowship
    Intellectual Property Institute of Canada; member of the Joint Liaison Committee - Trademarks; past member of the International Trademark Issues Committee; past member of the Forums and Seminars Committee; past Co-chair and Co-editor of theIPIC Bulletin
    •Member, International Trademark Association; member of the Canada Amicus Subcommittee of the International Amicus Committee; past member of the Whois Subcommittee of the Internet Committee; past member of the Dilution and Well-Known Marks Committee; past member of the Parallel Imports Committee
    •Member; Canadian Trademark Agent Examination Board, 2010 - 2013 term
    •Member, Canadian Bar Association; past member of the Trademarks Committee

    Speaking engagements

    •The New Trademarks Act under Bill C-31: Overview, Intellectual Property Institute of Canada Webinar, July 2014
    •Trademark Agent Examination Prep Course - Exam Writing Tips, Intellectual Property Institute of Canada Webinar, May 2014
    •Canadian IP Law Update: High Impact Trademark Law Decisions, Intellectual Property Institute of Canada Annual Meeting, Ottawa-Gatineau, September 2013
    •The Protection of Geographical Indications in Canada, presented to the economic and commercial representatives of the European Union, Ottawa, March 2010
    •Brand Equity: Maintaining the Value of Trademarks in Today's Marketplace, presented to the Ottawa chapter of the Canadian Corporate Counsel Association, Ottawa, September 2009
    •Taking a Strategic Approach: International and Regional Resources, International Trademark Association Trademark Administrators Conference, Long Beach, CA, October 2007
    •Section 45 (Expungement) Proceedings Under the CanadianTrademarks Act, Intellectual Property Institute of Canada Spring Meeting, Gatineau, QC, March 2007
    •IP Transactions - The Basic and Beyond, presented to members of the Ottawa chapter of the Canadian Corporate Counsel Association, Ottawa, November 2006
    •Should There be Trademark Rights in Public Icons? (panellist), Intellectual Property of Canada Spring Meeting, April 2004
    •Presentations to new Examiners at the Canadian Trademarks Office on trademark confusion under section 12(1)(d) of the CanadianTrademarks Act, 2000, 2001 and 2002

    Teaching activities

    •Opposition Proceedings: Overview, Context and Strategy, IPIC-McGill course Understanding Trademarks, Montreal, 2002-2012
    •Tips and Strategies in Opposition Proceedings (workshop), IPIC-McGill course Understanding Trademarks, Montreal, 2002-2012
    •IPIC-McGill course Understanding Trademarks, Montreal, August 2003 - Program Director
    •Intellectual Property Law for Engineers (adjunct professor) University of Ottawa, 2002-2009

  • Education & Certifications
    Other Education
    Queen's University
    Class of 1988
    B.Sc.

    Queen's University
    Class of 1988
    Hons.

    Queen's University
    Class of 1988
    Computer Science

    McGill University
    Class of 1992
    B.C.L./LL.B.

Philip Lapin

Partner, Ottawa; Barrister and Solicitor; Patent and Trademark Agent at Smart & Biggar
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55 Metcalfe Street Suite 900P.O. Box 2999 Station DOttawa, ON K1P 5Y6Canada

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