Key Details
Philip Lapin
Partner
Smart & Biggar/Fetherstonhaugh
Canada
Philip Lapin
Overview
Philip Lapin is a partner at Smart & Biggar/Fetherstonhaugh with more than 20 years of experience in all areas of intellectual property law. He focuses on trademark clearance, prosecution and registration, with a particular emphasis on oppositions and cancellation proceedings. His experience also covers copyright, industrial designs, licensing, IP transactions, domain names, and internet law. He was an adjunct professor at the University of Ottawa’s engineering school, where he taught trademark law to non-lawyers. He is a member of INTA, ECTA and the Intellectual Property Institute of Canada.
Participation in Wider Community
- "Offensive trademarks: can they be registered in Canada and the US?," (co-author: Nicole Vidinu), IP Update — Canada, February 05, 2016; Lexology, February 05, 2016; Mondaq, February 08, 2016; World Trademark Review Daily, February 23, 2016; International Law Office Intellectual Property Newsletter, March 14, 2016
- "Significant Changes to Canadian Trade Mark Law," ECTA Bulletin, October 2015
- "Canada now allows voluntary Nice classificatin - the beginning of significant changes to the Canadian trademark system," IP Update — Canada, October 1, 2015
- "How to take advantage of changes to trade mark filing" (co-author: Keltie Sim Luft), Managing Intellectual Property, September 2014
- "Registering Trademarks in Canada is About To Get A Whole Lot Easier. Brand-Owners Cheer ... But So Do Trademark Pirates." (co-author: Kohji Suzuki), Corporate Counsel IP Canada Report, August 2014
- Philip is the author of the "CANADA" section of the INTA Country Guides.
Professional Affiliations
- Fellow, Intellectual Property Institute of Canada; 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 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
Academic Affiliations
Speaking engagements
- "Passing Off," webinar hosted by the Intellectual Property Institute of Canada, May 2016
- “Trademark Case Law Review: Distinctiveness and Depreciation of Goodwill” (with Rob MacDonald), Intellectual Property Institute of Canada Webinar, April 2016
- "Top IP Law Cases of the Year (Trademarks)," Intellectual Property Institute of Canada (IPIC) Annual Meeting, Banff, Alberta, October 2015
- “Bills C-8 and 31: What the Changes Mean for Trademark Law in Canada” (with Rob MacDonald), The Licensing Executive Society and The Intellectual Property Institute of Canada, Ottawa, April 2015
- “Year in Review – 2014: Trademark Law Update” (with Rob MacDonald), Intellectual Property Institute of Canada Webinar, February 2015
Teaching activities
- "Opposition Proceedings: Overview, Context and Strategy," IPIC-McGill course Understanding Trademarks, Montreal, 2002-2014
- "Tips and Strategies in Opposition Proceedings" (workshop), IPIC-McGill course Understanding Trademarks, Montreal, 2002-2014
- IPIC-McGill course Understanding Trademarks, Montreal, August 2003 – Program Director
- "Intellectual Property Law for Engineers" (adjunct professor) University of Ottawa, 2002-2009
