overview
Peter Giddens is a Partner in our Toronto office, the Co-Chair of the firm's Intellectual Property Group, and a certified registered trademark agent in Canada.
Peter counsels clients concerning the acquisition, clearance, management, protection, enforcement and licensing of intellectual property, with a particular emphasis on trademark, copyright and domain name issues.
Peter advises clients concerning the availability of trademarks for use and registration, prepares and prosecutes applications to register trademarks before the Canadian Intellectual Property Office, co-ordinates international filings and manages domestic and foreign trademark portfolios. Peter also negotiates trademark 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 trademark opposition and expungement proceedings before the Trademarks Opposition Board and domain name dispute proceedings under the UDRP and CDRP. Peter also advises clients and other lawyers with respect to matters of trademark 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
COVID-19: Expedited Examination of Canadian Trademark Applications
9 Things You Should Do Right Now to Protect Your Franchise System During the COVID-19 Pandemic
Implied Trademark Licenses: A Case Study
COVID-19: Seeking Court Relief Regarding the Disease of Trademark Infringement
Bill C-4 Receives Royal Assent: Incoming Changes to the Intellectual Property Landscape
Trademark Law: Change in Practice Regarding Extensions of Time in Examination
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
McMillan Achieves 34 rankings in Who's Who Legal: Canada 2020
McMillan Lawyers Earn 38 Rankings Across 21 Categories in the 2021 Chambers Canada Directory
McMillan Recognized for 114 Rankings in the 2021 Edition of Best Lawyers in Canada
62 McMillan Lawyers Recognized in the 2020 Canadian Legal Lexpert Directory
Chambers Global 2020 Ranks McMillan as a Leading Firm in Six Practice Areas and Features 17 McMillan Lawyers
Who's Who Legal: Canada 2019 Ranks 32 McMillan Lawyers as Top Business Law Advisors
McMillan Lawyers Earn 41 Rankings across 23 Categories in Chambers Canada 2020
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
- Listed in Who’s Who Legal: Canada 2020 as a leader in Trademarks
- Recognized by Chambers Canada (2021) as a leading lawyer in the area of Intellectual Property
- Recognized by the Best Lawyers in Canada (2021) as a leading lawyer in the area of Intellectual Property Law
- Recognized in the 2020 Canadian Legal Lexpert Directory as a Repeatedly Recommended lawyer in the area of Intellectual Property
- Recognized by Chambers Global (2020) as a Recognized Practitioner in the area of Intellectual Property
- Listed in Who’s Who Legal: Canada 2019 as a leader in Trademarks
- Recognized by Chambers Canada (2020) as a leading lawyer in the area of Intellectual Property
- 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