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Lawyer and Trademark Agent, Partner
Montreal
Let us strive for the impossible. The great achievements throughout history have been the conquest of what seemed the impossibleCharlie Chaplin
Catherine Bergeron specializes in trademarks, more particularly trademark prosecution, trade-mark litigation and the strategic management of trademarks portfolios. She is involved in all stages of the process of registering trademarks, from the development of an optimal filing strategy to the adoption of a policy regarding the use of trademarks for a better protection of the clients’ rights.
As part of her core practice areas, Catherine Bergeron has developed an expertise in administrative proceedings before the Registrar of Trademarks, including Opposition proceedings to the registration of trademarks and administrative cancellation proceedings. Catherine Bergeron is frequently called upon to negotiate and draft settlement agreements for the benefit of local and international clients.
Catherine Bergeron also specializes in copyright law and advises clients on enforcing and protecting their rights and interests in copyright matters. She also has an expertise in regulatory advertising matters as well as product packaging and labelling, particularly in the food and cosmetic industries. She is frequently consulted for opinions pertaining to the linguistic requirements of the Charter of the French language regarding packaging, public signs and advertising.
- Trademark Agent, Canadian Intellectual Property Office (2007)
- Trademark Agent authorized to practice before the United States Patent and Trademark Office (USPTO)
- Member of the Québec Bar (2001)
- Bachelor of Civil Law (B.C.L.) and Common Law (LL.B.), Université McGill (2000)
- International Trademark Association (INTA) - member of the Canada Subcommittee of the Non-Traditional Marks Committee
- Association Littéraire et Artistique Internationale (ALAI Canada)
- Association des juristes pour l'avancement de la vie artistique (AJAVA)
- Institut de la propriété intellectuelle du Canada (IPIC) - Director of the course Understanding Trade-marks in 2009
- Regroupement des praticiens du droit des marques de commerce (RPM)
- Member of the Trademark Agent Examining Board between 2013 and 2016
- Best Lawyers in Canada 2020-2023 : Intellectual Property Law
- The Canadian Legal Lexpert Directory 2018-2023 : Consistently Recommended Intellectual Property
- WTR 1000 (World Trademark Review) 2021-2023 : Prosecution & Strategy
- World Intellectual Property Review 2023: Included in the WIPR Leader guide
- Who's Who Legal: Canada 2022 (trademarks, transport shipping)
- Who's Who Legal 2020 : recognized as Global Leader in Trademarks
- World Trademark Review WTR 1000
- Insurance
- Food industry
- Retail
- Pharmaceutical
- Cosmetics
- Fashion and clothing
- Entertainment
- Business Law
- Confidentiality and Trade Secrets
- Franchising
- Strategic counselling, negotiating and drafting of contracts in relation to music, multimedia, entertainment, film and television
- Competition and Unfair Competition
- Contracts and Negotiations
- Copyright - Counsel
- Copyright Contracts and Negotiations
- Piracy and Counterfeiting
- Protection Strategies for Copyright
- Copyright Registrations
- Litigation
- Trademarks Litigation
- Unfair Competition Litigation
- Copyright Litigation
- Trademarks
- Charter of the French Language
- Marking
- Labelling
- Comparative Advertising
- Filing and Prosecuting Trademark Applications
- Trademark Availability (Searches and Opinions)
- Trademark Portfolio Management
- Trademark Contracts and Negotiations
- Protection Strategies for Trademarks and Trade names
- Opposition and Cancellation Proceedings
- Diversifying your product offering to combat COVID-19: what are the implications for trademarks?
- Protect your company’s reputation in times of crisis
- New regulations coming into force regarding the presence of French on outdoor signage in Québec. Are you ready for November 24th?
- Significant changes in the Canadian Trademark System
- The Presence of French on Public Signage in Quebec
- Survol de cinq décisions d’intérêt en matière de marques pharmaceutiques en 2015, 2017
- Playing with Brands: A dangerous Game of Permissible Ironic Statements?
- Registering your Trade-mark… Something to Think About
- More to Food Labelling than Meets the Eye
- When the trade-marks opposition board exceeds its jurisdiction
- View more publications
