Justine Wiebe

Justine Wiebe  

Partner

Executive Summary

Justine is a Partner, Lawyer & Trademark Agent, and Regional IP Group Leader for Toronto. Justine has practised exclusively in the field of intellectual property since 1990 when she joined a Toronto intellectual property boutique firm as a first year law summer student.

Justine guides clients in the global clearance and protection of trademarks, and has particular expertise with non-traditional marks and pharmaceutical marks. Justine also specializes in trade dress protection, and the strategic use of trademark, design, and copyright regimes to develop comprehensive rights.

Justine also assists clients with the commercialization of intellectual property. Justine has significant transactional experience, and clients rely on her to provide strategic analysis of Canadian trademark portfolios owned by potential acquisitions, and the strength and expansion potential of key brands.

Justine's practice also extends to contentious matters. She enforces clients' trademark rights through opposition and cancellation proceedings, sending demand letters and negotiating settlement agreements, and working with the IP litigation team to devise strategies in court actions involving complex trademark issues.

Justine is consistently ranked as a leading trademark lawyer (see Rankings & Recognitions), and is known for her exemplary client service. She was awarded a Lexology / ILO Client Choice Award (IP: Trademarks, Ontario) in 2014, and is honoured to have been nominated in 2015, 2016, and 2017.

Representative Work

  • Serving as external trademark counsel to leading Canadian companies with international trademark portfolios and as external Canadian trademark counsel to leading companies in the United States and abroad. Clients span a wide range of industries, including insurance and finance, food and beverage, biotechnology and pharmaceutical, clothing and footwear, green chemistry, gaming & lottery, and automotive/power sports vehicles.
  • Elected to serve on Council (the Board of Directors) for the Intellectual Property Institute of Canada (IPIC) in 2013-2014. IPIC is the Canadian professional organization of patent and trademark agents and lawyers practising in intellectual property. There are significant changes on the horizon for Canadian trademark law and practice, prompted largely by Canada's engagement in trade talks and Canada's imminent accession to three international trademark treaties (the Singapore Treaty, the Nice Agreement, and the Madrid Protocol). Justine's election to IPIC Council during this critical stage speaks to her expertise and reputation as a leading Canadian trademark lawyer with considerable experience in international trade mark law and practice.

Publications & Presentations

  • Author, “Bill Proposing Significant Changes to Canadian Trademark Law Receives Royal Assent – Steps that Brand Owners Should Take Now”, BLG Intellectual Property Alert, June 23, 2014.
  • Author, “Budget Bill Contains Further Wide-reaching Changes to Canadian Trademark Law & Practice,” BLG Intellectual Property Alert, March 31, 2014.
  • Co-Presenter, "Upcoming Changes in the Canadian IP Framework," Toronto Intellectual Property Group, January 23, 2014.
  • Author, "What’s that sound? Roaring lions and the protection of non-traditional marks in Canada," ECTA Gazette, July 2013.
  • Co-Presenter, "Corporate Brands & Reputation," Canadian Corporate Counsel Association, 2012.
  • Co-Presenter, "Brand Protection: Developing Business-focused Strategies," BLG Auto Industry Seminar, 2012.
  • Principal Editor & Contributing Author, Canada country profile, Trade Dress: International Practice and Procedures, International Trademark Association (INTA), 2003-present.
  • Author, "Applications for Special Marks, Examiner's Reports & Responses, and Post-Advertisement Matters," prepared for and presented at "Understanding Trademarks" course, IPIC/McGill University, 2005-present.
  • Author, "Innovative Strategies for Protecting Product Shape & Packaging in Canada," and "The Strategic Use of Trademark & Design Protection for Trade Dress," World Trademark Review, 2010 and 2009.
  • Author, "Protecting Packaging & Product Design: The Canadian Perspective," and Panellist, "Protecting Packaging & Product Design," INTA Annual Meeting, 2009.
  • Panellist, "Global Perspectives on Trade Dress Protection:  Best Practices for Protecting Product Shapes and Designs — US, Canadian, European & Latin American Perspectives," AIPLA Spring Meeting, 2009.
  • Presenter, "Are We Speaking the Same Language? Canadian Trademark Prosecution Practice From a U.S. Perspective," Intellectual Property Sectional — Minnesota Paralegal Association, 2008.
  • Co-Presenter, "Effective Trademark Search Strategies for Canada & the United States," IPIC Annual Meeting, 2007.
  • Moderator, "Are We Speaking the Same Language? A Comparison of Canadian, U.S., U.K., & Community Trademark Laws," INTA Annual Meeting, 2006.

Rankings & Recognitions

  • Chambers Canada — Canada's Leading Lawyers for Business (Intellectual Property)
  • Chambers Global — World's Leading Lawyers for Business (Intellectual Property)
  • Who's Who Legal: Canada (Trademarks)
  • Best Lawyers in Canada® (Intellectual Property Law)
  • WTR 1000 — The World's Leading Trademark Professionals (gold tier)
  • World IP Review — WIPR Leaders: Trademarks
  • Managing Intellectual Property — IP Star (Trademark, Trademark enforcement and litigation, Trademark licensing, Trademark prosecution, Trademark strategy and counselling)
  • Managing Intellectual Property – IP STARS Top 250 Women in IP 
  • Euromoney's Expert Guide: World's Leading Trade Mark Law Practitioners
  • Euromoney's Expert Guide: World's Leading Women in Business Law — Trademark
  • Practical Law Company's PLC Which lawyer? (Canada IP — Commercial IP)
  • Lexology / ILO (International Law Office) — Client Choice Award (IP:  Trademarks, Ontario)
  • 2010 INTA Volunteer Service Award for the Advancement of Committee Objectives, in recognition for past and ongoing work as Principal Editor of Trade Dress: International Practice and Procedures