Peter Giddens 

Co-Chair, Intellectual Property
Toronto  t: 416.307.4042  |  e: peter.giddens@mcmillan.ca

Peter Giddens

Toronto
Brookfield Place, Suite 4400
181 Bay Street
Toronto, Ontario M5J 2T3

t: 416.307.4042
e: peter.giddens@mcmillan.ca

overview

  • 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 counsels clients concerning the acquisition, clearance, management, protection, enforcement and licensing of intellectual property, with a particular emphasis on trade-mark, copyright and domain name issues.

Peter advises clients concerning the availability of trade-marks for use and registration, prepares and prosecutes applications to register trade-marks before the Canadian Intellectual Property Office, co-ordinates international filings and manages domestic and foreign trade-mark portfolios. Peter also negotiates trade-mark license agreements and other agreements affecting IP rights. Peter also manages and protects the trademark portfolios for international franchise systems, and assists our Business Law and Franchise + Distribution Law Groups with IP issues across a broad range of industries. A significant portion of his practice is representing clients in contentious matters such as trade-mark opposition and expungement proceedings before the Trade-marks Opposition Board and domain name dispute proceedings under the UDRP and CDRP. Peter also advises clients and other lawyers with respect to matters of trade-mark infringement and passing off. Peter assists our corporate and commercial lawyers on transactions involving the acquisition or disposition of IP assets, and with commercial agreements impacting IP rights. Peter is frequently asked to consult regarding corporate re-branding initiatives and to provide strategic advice concerning the proper use and maintenance of intellectual property assets.

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.

Representative Matters

  • Acted as intellectual property counsel to Rogers Media in its acquisition of CityTV from CTVglobemedia
  • Acted as intellectual property counsel to AXA Canada in its acquisition of The Citadel General Assurance Company
  • Acted as intellectual property counsel to Trader Media Corp. in its acquisition by Yellow Pages Media Group
  • Advised Rogers Stadium Limited Partnership, part of Rogers Communications, on intellectual property issues during its purchase of the Toronto SkyDome (now Rogers Centre)
  • 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 to world-famous brands in industries including: beverage alcohol, insurance, financial services, furniture retail, professional sports; entertainment; film production; telecommunications; education; cosmaceuticals; food; security; professional services; software; kitchen appliances
  • Meets with government officials regarding proposed changes to Canada's trade-mark legislation and regulations

Publications

TOP TWELVE THINGS TO KNOW - New Canadian Trademarks Act June 17, 2019
Canada Announces a National Intellectual Property Strategy
The Top 10 Trademark Cases of 2017
Internet and E-Commerce Law In Canada
Social Media and Websites as National Communication Platforms in Canada in Light of French Language Requirements
Update - ICANN reveals list of proposed new gTLDs
Trade-mark owners be vigilant – ICANN to publish list of proposed new gTLDs
New Domain Names Announced – Trade-mark Owners Take Note
The Supreme Court of Canada clarifies the test for trade-mark confusion in Masterpiece Inc v Alavida Lifestyles
'Special Circumstances' Test Justifying Judicial Review of Interlocutory Decisions of TMOB Rendered Unclear Where Opponent Seeks to Add Ground of Opposition
gTLD – Is Your Brand Up for a New Domain?
.YourTrademarkHere - Is Your Brand Domain Worthy?
Law Note - New Humanitarian Symbol: The Red Crystal
List of 'Prohibited Marks' Increases - Red Crystal Recognized as an Additional Mark Protected by Geneva Convention
Brand Promotion and Unauthorized Trademark Use in Virtual Worlds
Can Copyright Curb Grey Marketing? - The Supreme Court Speaks
The Counterfeiting Problem
The Fame Game: The Scope of Protection for Famous Trade-marks in Canada
Chapter on "Trade-marks"
Senior Users at Risk: Earlier filing dates poised to trump senior users in contests between co-pending applications during Canadian examination procedure
Don't Get Burned in Effigi: A Warning to Unregistered Trade Mark Users
Selection of Registrar: Important Considerations for Domain Name Registrants
Trade Dress Protection In Canada
Canada Mulls Joining Madrid
Domain Name Issues in Commercial Transactions
.biz and .info Implementation Schedule Update
Protecting Trade Mark Owners' Rights Under the New .biz and .info Domain Name Registration Procedures
Changes to .ca Domain Name System
Do Your Own Patent Search

News

71 McMillan Lawyers Named in the 2020 Edition of Best Lawyers in Canada
McMillan LLP Once Again Recognized as a Top Patent, Trademark and Copyright Firm in Managing Intellectual Property's IP STARS
32 McMillan lawyers recognized in Who's Who Legal Canada 2018
65 McMillan Lawyers Named in the 2019 Edition of Best Lawyers in Canada
Managing Intellectual Property has once again recognized McMillan LLP among the leading Canadian firms in the 2018 edition of IP Stars
Peter Giddens Appointed Chair of INTA's Trademark Office Practices Committee
Margaret McNee recognized as Mutual Funds Lawyer of the Year, along with 58 McMillan Lawyers in the 2018 Best Lawyers in Canada Report
McMillan lawyers well-represented in the 2017 Canadian Legal Lexpert Directory
61 McMillan lawyers recognized in The Best Lawyers in Canada 2017
McMillan lawyers well-represented in the 2016 Canadian Legal Lexpert Directory
Peter Giddens appointed Vice Chair of INTA's Trademark Office Practices Committee
McMillan LLP ranks among top Canadian patent and trademark firms in Managing Intellectual Property's IP Stars Handbook
Dale Schlosser, Sharon Groom and Peter Giddens listed in the World Trademark Review (WTR) 1000 (2013)
Peter Giddens discusses protecting a brand in the National Post

Education

  • Dalhousie University, LLB - 1997
  • Dalhousie University, B.Sc. (Hons. Biology) - 1994

Year Of Call

  • Called to the Ontario bar - 1999

Practices

intellectual property
trademarks
copyright
social media
licensing
intellectual property litigation
confidential information
advertising
franchise and distribution
franchising and distribution disputes

Industries

media, communications and entertainment
banking, finance and insurance
cannabis practice group
life sciences
applied technology
food, beverage and agribusiness
manufacturing, distribution and retail
franchising and distribution

Directorships and Professional Associations

  • International Trademark Association (INTA), Chair of the Trademark Office Practices Committee (2018-2019)
  • International Trademark Association (INTA), Vice-Chair of the Trademark Office Practices Committee (2016-2017)
  • International Trademark Association (INTA), Trademark Office Practices Committee (2010-2011)
  • Intellectual Property Institute of Canada (IPIC), IPIC/CIPO Joint Liaison Committee on Trade-mark Practices
  • Foreign Affiliate Member of American Intellectual Property Law association (AIPLA)  
  • International Association for the Protection of Intellectual Property (AIPPI)
  • Canadian Bar Association
  • Ontario Bar Association

Awards & Rankings

  • Recognized by Best Lawyers in Canada (2020) as a leading lawyer in the area of Intellectual Property Law
  • Listed in 2019 Managing Intellectual Property's IP Stars - The Guide to the World's Leading IP Firms and Practitioners
  • Listed in Who’s Who Legal Canada: 2018 as a leader in Trademarks
  • Recognized by Best Lawyers in Canada (2019) as a leading lawyer in the area of Intellectual Property Law
  • Listed in Best Lawyers in Canada (2018) as a leading lawyer in the area of Intellectual Property Law
  • Repeatedly recommended, Intellectual Property, in the 2017 Canadian Legal Lexpert Directory
  • Listed in the Canadian Legal Lexpert Directory 2016 as leading lawyer in the area of Intellectual Property
  • Listed in World Trademark Review's WTR 1000 – The World's Leading Trademark Professionals
  • Listed in Managing Intellectual Property's IP Stars - The Guide to the World's Leading IP Firms and Practitioners
  • Recipient of the International Trademark Association Service Award for the Advancement of Trade Mark Law, 2005
vcard
  • 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 counsels clients concerning the acquisition, clearance, management, protection, enforcement and licensing of intellectual property, with a particular emphasis on trade-mark, copyright and domain name issues.

Peter advises clients concerning the availability of trade-marks for use and registration, prepares and prosecutes applications to register trade-marks before the Canadian Intellectual Property Office, co-ordinates international filings and manages domestic and foreign trade-mark portfolios. Peter also negotiates trade-mark license agreements and other agreements affecting IP rights. Peter also manages and protects the trademark portfolios for international franchise systems, and assists our Business Law and Franchise + Distribution Law Groups with IP issues across a broad range of industries. A significant portion of his practice is representing clients in contentious matters such as trade-mark opposition and expungement proceedings before the Trade-marks Opposition Board and domain name dispute proceedings under the UDRP and CDRP. Peter also advises clients and other lawyers with respect to matters of trade-mark infringement and passing off. Peter assists our corporate and commercial lawyers on transactions involving the acquisition or disposition of IP assets, and with commercial agreements impacting IP rights. Peter is frequently asked to consult regarding corporate re-branding initiatives and to provide strategic advice concerning the proper use and maintenance of intellectual property assets.

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.

  • Acted as intellectual property counsel to Rogers Media in its acquisition of CityTV from CTVglobemedia
  • Acted as intellectual property counsel to AXA Canada in its acquisition of The Citadel General Assurance Company
  • Acted as intellectual property counsel to Trader Media Corp. in its acquisition by Yellow Pages Media Group
  • Advised Rogers Stadium Limited Partnership, part of Rogers Communications, on intellectual property issues during its purchase of the Toronto SkyDome (now Rogers Centre)
  • 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 to world-famous brands in industries including: beverage alcohol, insurance, financial services, furniture retail, professional sports; entertainment; film production; telecommunications; education; cosmaceuticals; food; security; professional services; software; kitchen appliances
  • Meets with government officials regarding proposed changes to Canada's trade-mark legislation and regulations
April 2018
Canada Announces a National Intellectual Property Strategy

Intellectual Property Bulletin

January 2018
The Top 10 Trademark Cases of 2017

Intellectual Property Bulletin

July 2015
Internet and E-Commerce Law In Canada
Social Media and Website as National Communication Platforms in Canada in Light of French Language Requirements
June 2012
Update - ICANN reveals list of proposed new gTLDs
Intellectual Property Bulletin
June 2011
New Domain Names Announced – Trade-mark Owners Take Note
Intellectual Property Bulletin
Spring 2009
gTLD – Is Your Brand Up for a New Domain?
InBrief Spring 2009
Winter 2008
.YourTrademarkHere - Is Your Brand Domain Worthy?
Intellectual Property Brief Winter 2008/2009
Fall 2008
Law Note - New Humanitarian Symbol: The Red Crystal
InBrief Winter 2008/2009
September 2007
Brand Promotion and Unauthorized Trademark Use in Virtual Worlds
INTA Bulletin, Vol. 62, No. 17
September 2007
Can Copyright Curb Grey Marketing? - The Supreme Court Speaks
Toronto Law Journal Vol. 2, No. 8
Winter 2007
The Counterfeiting Problem
Real Estate Brief Winter 2007
Fall 2006
The Fame Game: The Scope of Protection for Famous Trade-marks in Canada
Intellectual Property Brief Fall 2006 and Canadian Corporate Counsel (Canada Law Book), December 2006
2006
Chapter on "Trade-marks"
Ultimate Corporate Counsel Guide, CCH Canada
October 2004
Senior Users at Risk: Earlier filing dates poised to trump senior users in contests between co-pending applications during Canadian examination procedure
TerraLex Intellectual Property Newsletter, 10th ed
Fall 2004
Don't Get Burned in Effigi: A Warning to Unregistered Trade Mark Users
Lang Michener Intellectual Property Brief
Spring 2004
Selection of Registrar: Important Considerations for Domain Name Registrants
Lang Michener Intellectual Property Brief
November 2003
Trade Dress Protection In Canada
INTA
August 2003
Canada Mulls Joining Madrid
INTA Bulletin Vol. 58, Issue 14
July 2001
Domain Name Issues in Commercial Transactions
Lang Michener Intellectual Property Brief
July 2001
.biz and .info Implementation Schedule Update
Lang Michener Intellectual Property Brief
June 2001
Protecting Trade Mark Owners' Rights Under the New .biz and .info Domain Name Registration Procedures
Lang Michener Intellectual Property Brief
Summer 2000
Changes to .ca Domain Name System
Lang Michener Intellectual Property Brief
June 1999
Do Your Own Patent Search
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