John Lee

LawyerLee IPT LawCommercial

John is a leading Intellectual Property and Technology lawyer with global legal and business experience who advises clients on matters related to their intellectual property and technology issues. Prior to starting Lee IPT Law, John was a partner at Dentons Canada LLP. John was also Assistant General Counsel (Trademarks & Marketing) at BlackBerry, where he was responsible for global protection of the iconic smartphone brand, while serving as a member of the legal leadership team.

John is a leading Intellectual Property and Technology lawyer with global legal and business experience who advises clients on matters related to their intellectual property and technology issues. Prior to starting Lee IPT Law, John was a partner at Dentons Canada LLP. John was also Assistant General Counsel (Trademarks & Marketing) at BlackBerry, where he was responsible for global protection of the iconic smartphone brand, while serving as a member of the legal leadership team.

John acts as lead counsel to clients in the development and management of their proprietary brands in Canada, the U.S. and throughout the world. He regularly advises clients on advertising and social media legal issues. John also advises clients on intellectual property licenses and other commercial agreements and is an experienced contract negotiator.

John also advises clients on intellectual property licenses and other commercial agreements and is an experienced contract negotiator. John has significant expertise negotiating shared services agreements, endorsement agreements, event contracts and supply agreements.

John is an expert in global anti-counterfeit and grey market enforcement strategies, with experience managing numerous counterfeit actions in jurisdictions around the world. He has frequently supported Customs and law enforcement authorities in criminal prosecutions for counterfeiting and has managed numerous civil actions against counterfeiters, including ex parte seizures (Anton Piller orders).

When a client's intellectual property rights are being infringed, John provides clear options and direction for enforcement, and when appropriate, negotiates a resolution that best protects the client's interests. In trademark disputes, John represents clients before the Federal Court of Canada, the Ontario Superior Court of Justice and the Trademarks Opposition Board. John has served as an arbitrator and has written a number of decisions for Internet.ca domain name disputes (CIRA Dispute Resolution Process) with the British Columbia International Commercial Arbitration.

John is a registered Trademark Agent who drafts and regularly provides trademark clearance opinions and prosecutes trademark applications directly with the Canadian Intellectual Property Office. He is also an instructor (2013, 2014) for the Trademark Agent training course offered by the Intellectual Property Institute of Canada.

Education

  • University of Ottawa, LL.B., 1997
  • Carleton University, M.A., 1994
  • Carleton University, B.A., 1993

Bar Admission

  • Ontario, 1999

Accreditations

  • Registered Trademark Agent (Canada)

Experience

  • Obtained an injunction in the Federal Court of Canada on behalf of a global telecommunications company to halt the infringement of the client's trademarks
  • Provided trademark expertise and strategy in an infringement action on behalf of a corporate plaintiff resulting in the award of an injunction and damages, where the judgment was upheld by the Alberta Court of Appeal
  • Developed an enforcement strategy to address the dumping of grey market goods (parallel imports) into Canada for a global electronics company and a Canadian coffee company
  • Successfully acted on behalf of a major Canadian Chartered bank to secure multiple domain names from multiple cyber squatters under the UDRP
  • Prepared a cross-border trademark license agreement for a popular undergarment corporation that included a complex royalty arrangement and related financing
  • Maintained a Canadian trademark registration attacked in a cancellation proceeding for a client in China where the mark used in Canada varied from the mark registered
  • Prevailed in a trademark opposition on behalf of an applicant by canceling the opponent's registered trademark in separate "use" proceedings
  • Acted as a chair of a three person panel for a .ca domain name arbitration that turned on the issue of trademark entitlement

Associations

  • Associate, Intellectual Property Institute of Canada
  • Canadian Bar Association
  • International Trademark Association (including the Anticounterfeiting Committee, Canada Subcommittee 2014-2015)
  • Pro bono legal counsel, Canadian Institute of Diversity & Inclusion

Awards & Honours

  • Recognized in World Trademark Review 1000 - The World's Leading Trademark Professionals 2014 as one of Canada's recommended experts in the area of Intellectual Property: "John Lee is just the kind of person you want to leave your complicated files with. He is a firstclass lawyer, very commercial in his outlook and he knows that a file in Canada is not in isolation — he has a global perspective."