Paul W. Braunovan
Paul Braunovan is a trade-mark expert and an Ottawa lawyer with Perley-Robertson, Hill & McDougall’s Intellectual Property Group. From proactive trade-mark protection to licensing, Internet domain name protection, prosecution, opposition, an technology law, Paul and our intellectual property team can expedite the process of securing your brand name assets. An award-winning registered trade-mark agent, Paul also provides valuable opinions on trade-mark registrability, validity, title and infringement, as well as litigation in case 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.
Your brand name and goodwill are the most valuable assets of your business. Paul Braunovan makes it his business to help clients protect their intellectual property assets from unauthorized use and abuse, both locally and internationally.
- 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
- 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.
- Associate Member Intellectual Property Institute of Canada
- Member, International Trademark Association
- Former Director and Assistant Director, The Trade-marks Practitioner: An advanced Course, 2005-2007, presented by the Intellectual Property Institute of Canada and McGill University.
- Instructor, Trade-mark Agent Training Course, “Trade-mark Fundamentals and Likelihood of Confusion”, Presented by the Intellectual Property Institute of Canada.
- Tutor, Trade-mark Agent Tutorials, presented by the Intellectual Property Institute of Canada.
- “Case Summary: Ottawa Athletic Club Inc. v The Athletic Club Group Inc.”, Perley-Robertson, Hill & McDougall LLP/s.r.l. website, perlaw.ca, September 23, 2014.
- “Important Amendments to Canadian Trade-mark Law“, Perley-Robertson, Hill & McDougall LLP/s.r.l. website, perlaw.ca, April 14, 2014.
- “The Bellagio Gambles on “Use” Under Canadian Trade-mark Law – and Loses“, Perley-Robertson, Hill & McDougall LLP/s.r.l. website, perlaw.ca, October 28, 2013.
- “New Legislation to Combat Counterfeiting in Canada“, Perley-Robertson, Hill & McDougall LLP/s.r.l. website, perlaw.ca, April 22, 2013.
- “.XXX Domain Project“, Perley-Robertson, Hill & McDougall LLP/s.r.l. website, perlaw.ca, September 9, 2011.
- “The Seven Deadly Sins of Trade-Mark Owners“, Perlaw Reporter, August 2010.
- “Legislative Update: The Olympic and Paralympic Marks Act“, Perlaw Reporter, March 2010.
- “Using Unregistered Trade-Marks In Quebec“, Perlaw Reporter, October 2009.
- “The Trade-Marks Opposition Board“, Ottawa Business Journal, October 2009.
- “2009: Sleepless in Seattle / 2010: See You in Boston“, Perlaw Reporter, July 2009.
- “Goldfish Shaped Crackers: Using Trade-Mark Law To Protect The Shape Of Your Goods“, Ottawa Business Journal, March 2008.
- “The Chocolate Bar Wrapper As An Artistic Work: Copyright Law In Canada”, Ottawa Business Journal, September 2007.
- “Canadian Domain Name Disputes: Dot-Ca, Eh?”, Ottawa Business Journal, March 2007.