Peter Giddens Partner Toronto Tel : 416.307.4042 Fax : 416.304.3787 Email : peter.giddens@mcmillan.ca VCard :

Professional Activities  

• Registered Trade-mark Agent (Canada) 

Peter Giddens is a Partner in our Toronto office and a member of the firm's Intellectual Property Group.

Peter provides advice concerning the acquisition, development, clearance, management, protection, enforcement and licensing of intellectual property, with a particular emphasis on trade-mark, copyright and domain name issues. He has appeared in the Ontario and Federal Courts on matters including trade-mark infringement, passing off, copyright infringement and patent infringement. Peter regularly provides clearance opinions for clients concerning the availability of proposed trade-marks for use and registration, prosecutes applications to register trade-marks before the Trade-marks Office, represents clients in trade-mark opposition and expungement proceedings before the Trade-marks Opposition Board, and co-ordinates foreign trade-mark filings and portfolios. Peter also represents clients in domain name dispute proceedings, and has appeared before arbitration panels of the World Intellectual Property Organization and National Arbitration Forum.

Peter Giddens' recent work also includes: enforcing trade dress rights; structuring complex trade-mark licence agreements; negotiating IP transfer agreements; consulting regarding corporate re-branding initiatives; and providing advice concerning comparative advertising, grey marketing of consumer goods, ambush marketing, misappropriation of personality, copyright infringement in communication signals, software licensing and infringement, and issues concerning on-line trade-mark use (including keyword advertising, deep linking, framing, metatags, typosquatting and gripe sites).

After articling with the firm's Toronto office in 1997-98, Peter joined the Intellectual Property group as an associate lawyer in 1999 and has been a partner since 2006.

Special Recognition

• Recipient of the International Trademark Association Service Award for the Advancement of Trade Mark Law, 2005.

• Acted as intellectual property counsel (trade-marks) to Rogers Media in its acquisition of CTVglobemedia for C$375 million.
• Acted as intellectual property counsel (trade-marks) to AXA Canada in its acquisition of The Citadel General Assurance Company for C$310 million.
• Acted as intellectual property counsel (trade-marks, domain names) to Trader Media Corp. in its acquisition by Yellow Pages Media Group for C$436 million.
• Advised Rogers Stadium Limited Partnership, part of Rogers Communications, on intellectual property issues during its purchase of the Toronto SkyDome for C$25 million.
• Acted as intellectual property counsel to Rogers Communications in its acquisition of The Toronto Blue Jays Baseball Club and continues to provide intellectual property advice to the team's ownership, including sponsorship, licensing and marketing activities.
• Provides ongoing counsel on IP ownership rights, including trade-marks, copyright and information technology agreements, to Toronto-area community care access centres, academic institutions and other not-for-profit organizations.
• Provides ongoing trade-mark and advertising counsel to automotive manufacturers.
• Provides ongoing trade-mark counsel to various medical and diagnostic device manufacturers
• Acts as intellectual property counsel to a cosmeceutical company, including providing advice on celebrity endorsement agreements.

June 2012 update - ICANN reveals list of proposed new gTLDs intellectual property bulletin

April 2012 trade-mark owners be vigilant – ICANN to publish list of proposed new gTLDs intellectual property bulletin

June 2011 New Domain Names Announced – Trade-mark Owners Take Note Intellectual Property Bulletin

May 2011 the Supreme Court of Canada clarifies the test for trade-mark confusion in Masterpiece Inc v Alavida Lifestyles intellectual property bulletin