May Cheng

May Cheng

PartnerOsler, Hoskin & Harcourt LLPIntellectual Property & Technology

May is a Certified Specialist in Intellectual Property Law (Trademark/Copyright), and a partner in the Intellectual Property Group. She has more than 20 years of experience in advising clients on all aspects of intellectual property protection and enforcement, including branding strategy, licensing and anti-counterfeiting. She is regularly involved in injunctive proceedings and appeals to the Federal Court of Canada in Trademark disputes and infringement cases. May's litigation experience also includes patent infringement litigation involving telecommunications and nuclear technology, trade secret and copyright infringement litigation, in both Federal and Provincial courts. 

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May is a Certified Specialist in Intellectual Property Law (Trademark/Copyright), and a partner in the Intellectual Property Group. She has more than 20 years of experience in advising clients on all aspects of intellectual property protection and enforcement, including branding strategy, licensing and anti-counterfeiting. She is regularly involved in injunctive proceedings and appeals to the Federal Court of Canada in Trademark disputes and infringement cases. May's litigation experience also includes patent infringement litigation involving telecommunications and nuclear technology, trade secret and copyright infringement litigation, in both Federal and Provincial courts.

She has expertise in the execution and enforcement of Anton Piller Orders to seize counterfeit goods bearing famous luxury brands and consumer goods. She also has considerable experience in on-line arbitration of domain name disputes.

Education

  • University of Ottawa, LL.B., 1991
  • Carleton University, B.A. (Hons.), 1987

Bar Admission

  • British Columbia, 1997
  • Ontario, 1993

Experience

  • Obtained consent judgment for $40,000 against counterfeit goods supplier: Dentsply Sirona Inc. et al. v. Konstantinovskiy, FC T-64-17 (March 2, 2017), 2017
  • Successfully represented Chartered Professional Accountants of Canada, among other co-defendants, on a motion striking out two expert a?davits sought to be relied upon at trial: ACCA UK et al. v. CPA Canada et al., [2016] F.C.J. No. 1495, 2016
  • Advised large foreign corporation on name choice for multi-million dollar amalgamation of multiple industrial divisions, 2016
  • Intellectual Property counsel to Aviva Canada Inc. on acquisition of RBC General Insurance Company and entry into a 15 year strategic agreement with RBC signed January 2016, 2016
  • Successfully defeated appeal in the Federal Court from Trademarks Opposition Board decision allowing Compass Minerals to obtain registration of trademark ENVIRO-GUARD: Tiger Calcium Services Inc. v. Compass Minerals Canada Corp., [2015] F.C.J. No. 1313, 2015
  • Represented Jamieson Laboratories Ltd. in an appeal to the Federal Court of Appeal against an interlocutory injunction issued in favour of Reckitt Benckiser LLC, where the Court varied the terms of the injunction: Jamieson Laboratories Ltd. v. Reckitt Benckiser LLC et al., [2015] F.C.J. No. 587, 2015
  • Represented Jamieson Laboratories Ltd. in interlocutory injunction proceedings in the Federal Court that resulted in a departure from traditional test for issuance of an interlocutory injunction: Reckitt Benckiser v. Jamieson Laboratories Ltd., [2015] F.C.J. No. 996, 2015
  • Successfully obtained and executed Anton Piller Orders for Ontario to curb counterfeit ginseng sales: Korea Ginseng Corp. et al. v. Yue Tak Tong Ginseng and others, FC T-1575-14, Korea Ginseng Corp et al. v. 1554939 Ontario Inc. o/a Wing Shing Herbs Co., FC T-1578-14, June–September 2014, 2014

Associations

  • Chair, IP Year in Review, Law Society of Ontario, 2016–2018
  • Co-Chair, Ontario Bar Association Institute Committee, 2014–2017
  • Committee Member, International Trademark Association, Famous and Well-Known Marks Committee, North American Subcommittee, 2012–2016
  • Committee Member, Ontario Bar Association Institute Committee, 2011–2014
  • Women’s Equality Advisory Group Committee, Law Society of Ontario, 2009–2012
  • Expert Advisory group member, Law Society of Ontario's Committee on the Retention of Women in Private Practice, 2006–2008
  • Fellow, Intellectual Property Institute of Canada

Awards & Honours

  • Managing Intellectual Property Magazine, IP STARS Top 250 Women in IP 2017, recognizing female IP practitioners in private practice around the world who have performed exceptionally for their clients and firms in the past year, 2017
  • The Legal 500, recognized as a Recommended Lawyer in the area of Intellectual Property, 2017
  • Canadian Legal Lexpert Directory, recognized in the area of Intellectual Property, 2016
  • President's Award, awarded by Women's Law Association of Ontario, for mentorship and advancement of women in law, 2016
  • Inducted into the University of Ottawa Faculty of Law's Common Law Honour Society, 2014
  • WTR1000: The World’s Leading Trademark Professionals, recognized as a Silver Band ranked lawyer in Canada for both Trademark litigation and anti-counterfeiting, 2013–2017