Paul W. Braunovan
Partner
Paul Braunovan is a trademark lawyer with Perley-Robertson, Hill & McDougall’s Intellectual Property Group. From proactive trademark protection to licensing, Internet domain name protection, prosecution, opposition, and technology law, Paul and our intellectual property team can expedite the process of securing your brand name assets. Paul is the recipient of the Educational Foundation Prize from the Intellectual Property Institute of Canada, achieving the highest standing in Canada in the Trademark Agents’ Qualifying Examination in 2003. Paul also provides valuable opinions on trademark registrability, validity, title and infringement, as well as litigation in cases of infringement. At each stage of the process, from fact-finding to preliminary searches, from drafting, filing, and prosecuting of applications, to representation in opposition matters, Paul’s clients trust him to deliver results with the efficiency they need.
With an exclusive and expansive focus on intellectual property matters, Paul brings the depth and breadth of knowledge clients need to protect their intellectual assets and business interests. With his exceptional business background, Paul is sensitive to clients’ needs for a frank discussion of options, a clear understanding of consequences, and sage direction on the best course of action.
Paul is very knowledgeable of international issues in the area of trademark law, having received a Graduate Certificate in International Intellectual Property Law from the University of Victoria in 2007 (which involved study at both the University of Victoria, and Oxford University). Through his extensive network of foreign associates, Paul can help to protect your trademark internationally.
Credentials
- Graduate Certificate, International Intellectual Property Law, University of Victoria, 2007
- Registered Canadian Trademark Agent, 2004
- Admitted to the Ontario Bar, 2002
- LL.B., University of Western Ontario, 2001
- M.A. English, Carleton University, 1998
- B.A (Honours), English/Canadian Studies, Carleton University, 1997
Selected Experience
- SJOKLAEDAGERDIN HF v. Les Placements Arden Inc. / Arden Holdings Inc. – Counsel for the Opponent, an Icelandic corporation and owner of Canadian trademark registrations for 66°NORTH & Design and 66°N & Design, who was opposing a Canadian trademark application for 82°NORTH & Design. The opposition was successful on all of the more substantive grounds of opposition (non-registrability, non-entitlement, and non-distinctiveness – all relating to confusion as between the parties respective marks).
- Kim Gibbons Inc. v. Ian Brett – Counsel for Opponent Kim Gibbons Inc., a corporation based in Toronto that provides mortgage broker/mortgage agent services under the trademark MORTGAGE SUPERHERO. Opponent was opposing a Canadian application for REAL ESTATE SUPERHERO for use in association with a wide variety of goods and services, including real estate broker/real estate agent services. The opposition was successful both on the technical grounds (in that the Applicant’s claimed date of first use was incorrect) and on the substantive grounds (in that there was a likelihood of confusion as between the parties’ respective marks).
- Flat Rock Cellars Inc. v. Molson Canada 2005 – Counsel for Flat Rock Cellars Inc. in successful trade-mark cancellation proceeding under section 45 of the Trade-marks Act. Molson’s trade-mark for GRAVITY BEER was expunged even though it produced evidence of exports of the product, following our argument that use by export still required evidence that the shipment was part of a commercial transaction (which Molson had failed to provide)
- Canada Safety Council v. 3032102 Nova Scotia Ltd. – Counsel for Canada Safety Council in domain name dispute proceeding pursuant to the Canadian Internet Registration Authority domain name dispute resolution policy. The domain name was ordered to be transferred to our client after finding that the domain name NATIONALSAFETYCOUNCILS.CA was confusingly similar to our client’s prior official marks for CANADA’S NATIONAL SAFETY COUNCIL and CANADA SAFETY COUNCIL.
- Carleton University Students’ Association Inc. v. Justin Essiambre – Counsel for Carleton University Students’ Association Inc. in a domain name dispute proceeding. The Panel ordered the domain name to be transferred to our client after the other party registered CUSAONLINE.CA and had the domain name resolve to a website featuring inappropriate and offensive personal comments about various members of the students’ association.
- Stephanie Anne Pick v. 1180475 Alberta Ltd., operating as Queen of Tarts, and Linda Kearney – Co-counsel for Plaintiff Stephanie Pick in a trade-mark infringement action. Pick was the owner of a trade-mark registration for QUEEN OF TARTS and Defendant opened a bakery under an identical name. We obtained a default judgment before the Federal Court for trade-mark infringement and passing off, including a permanent injunction, a monetary award for damages, and costs.
- Dell Inc. v. 9153-3141 Quebec Inc. – Co-counsel for Plaintiff Dell Inc. in an action for trade-mark infringement and passing off. The Defendant was noted in default and the Federal Court ordered costs payable to the Plaintiff.
- Skinny Nutritional Corp. v. Bio-Synergy Ltd. – Attended at oral hearing in Trade-marks Opposition Board proceeding on behalf of the Opponent Skinny Nutritional Corp. Skinny Nutritional Corp. opposed two trade-mark applications for BIO-SYNERGY SKINNY and SKINNY WATER. The Board found that the Opponent had met its burden to demonstrate prior rights in the mark SKINNY WATER, and therefore they refused both applications.
- 642897 B.C. Ltd. and Punjab Milk Foods Inc. v. 1030983 Ontario Ltd. – Attended at oral hearing in Trade-marks Opposition Board proceeding on behalf of the Applicant, who was applying for a trade-mark registration for MALAI PANEER & Design. The Board rejected all of the grounds of opposition
- StudentUniverse.com Inc. v. Eugene Winer – Co-counsel for StudentUniverse.com Inc., the complainant in a domain name dispute proceeding. The Panel ordered the domain name STUDENTUNIVERSE.CA to be transferred to our client, since the domain name was found to be confusingly similar to our client’s mark, and the domain name was registered in bad faith without any legitimate interest.
- “K” Line America, Inc. v. Total Logistics Control Inc. – Co-counsel for “K” Line America, Inc. in a proceeding before the Trade-marks Opposition Board. We represented the Opponent who was successful in opposing a trade-mark application for TOTAL LOGISTICS GROUP OF COMPANIES, on the basis that the trade-mark was clearly descriptive of the associated services.
- Max Mara Fashion Group S.r.l. v. Maxxmar Inc. – Attended at oral hearing in Trade-marks Opposition Board proceeding on behalf of the Applicant, who was applying for a trade-mark registration for MAXXMAR. The application was opposed by Max Mara Fashion Group S.r.l., who owned several Canadian trade-mark registrations that contained the words MAX MARA. The Board rejected all of the grounds of opposition.
- Dell Inc. v. ASTDomains – Counsel for Dell Inc. in a domain name dispute proceeding, where the other party had registered DELLVISTA.COM. The Panel ordered the domain name to be transferred to our client, and dismissed the other party’s claim of reverse domain name hijacking pursuant to the Uniform Domain Name Dispute Resolution Policy rules.
- Infinity Cycle Works Ltd. vs. Shandong Linglong Tyre Co., Ltd. – Counsel for Infinity Cycle Works Ltd. in successful trade-mark cancellation proceeding under section 45 of the Trade-marks Act. Shandong’s trade-mark for Infinity & Design was expunged even though it had filed affidavit evidence purporting to show use, following our argument that the evidence did not demonstrate “use” as that term is defined in the Trademarks Act.
- 1648074 Ontario Inc. Akbar Brothers (Pvt.) Ltd. – Co-counsel for Appellant 1648074 Ontario Inc. (“164”) in successful appeal of Trademarks Opposition Board decision. 164’s trademark application was refused by the Board, who held that the mark was not distinctive of the Applicant. On appeal to the Federal Court, the Court held that the Opponent (Akbar Brothers) had not met their evidential burden on distinctiveness, so the Board’s decision on this issue was overturned. The matter was remitted back to the Board for further consideration of other grounds of opposition that the Board had failed to consider.
- Simin Sepehr Sepahan (Esalat Food Industries Co.) and Persia Food Products Inc. v. Nazo Products, Inc. Counsel for Applicant Nazo Products, Inc. Opponent filed statement of opposition, pleading four different grounds of opposition. The Board rejected the Opponent’s opposition, finding that the Opponent had not met its evidential burden on any of its grounds of opposition.
- Turbo-K Limited v. Roselli Chemicals Inc. – Counsel for the Opponent in a successful Trademarks Opposition Board proceeding. The Board held that the Applicant had not established its claimed first use date, and that the Applicant could not have been satisfied of its entitlement to the trademark. As a result, the Board refused the application.
- Western Logistics Inc. v. Great Emmanuel – Counsel for the Complainant in a domain name dispute before the World Intellectual Property Organization. The Panel found that the domain name was confusingly similar to a mark that the Complainant had rights in, that the domain name owner had no legitimate interest in the domain name, and that the domain name was registered and used in bad faith. As such, it ordered the domain name to be transferred to the Complainant.
Memberships/Affiliations
- Associate Member Intellectual Property Institute of Canada
- Member, International Trademark Association