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May Cheng - Intellectual Property Lawyer

May Cheng

Partner, Intellectual Property


Contact Information

mcheng@osler.com

tel: 416.862.5664

Office

Toronto

Bar Admission

Ontario, 1993

British Columbia, 1997

Education
  • Carleton University, B.A.
  • University of Ottawa, LL.B.
  • Registered Trademark Agent
Language(s)
English, French

May is a Certified Specialist in Intellectual Property Law (Trade- mark/Copyright), and a senior partner. She has 25 years of experience in advising clients on all aspects of intellectual property protection and enforcement, including branding strategy, acquisition, licensing and anti-counterfeiting. She is regularly involved in a wide variety of IP infringement cases and complex licensing deals.

May has acted as an expert consultant to The Government of the Bahamas in redrafting their intellectual property legislation for ascension to the WTO.  She has consistently been recognized as a leading lawyer in IP by:  IAM Strategy 300: The World’s Leading IP Strategists 2019, IP STARS and Top 250 Women in IP (2017-19) Managing IP, and WTR1000: World’s Leading Trademark Professionals (2013-2019) Gold Band ranking for IP litigation.  May has also received the Lexpert Zenith Award in 2018 and the Women’s Law Association of Ontario President’s Award in 2016.

    • Successfully renewed Anton Piller Orders to curb the sale of counterfeit goods on behalf of famous brand: Hugo Boss Trade Mark Management GmbH & Co KG, Hugo Boss AG and Hugo Boss Canada Inc. v. Jane Doe and John Doe, FC T-510-19 (May 2019), FC T-688-18 (May 2018) , FC T-494- 17 (May 2017), FC T-543-16 (April 2016) and FC T-527-15 (April 2015)
    • Assisting The Bahamas in drafting Intellectual Property Regulations to achieve WTO compliance – September 2017 to April 2018
    • Obtained consent judgment for $30,000 for trademark and patent infringement: Dentsply Sirona Inc. et al. v. Canada-Wide Dental Suppliers Inc., FC T-1750-17 (February 19, 2018)
    • Obtained consent judgment for $40,000 against counterfeit goods supplier: Dentsply Sirona Inc. et al. v. Konstantinovskiy, FC T-64-17 (March 2, 2017)
    • Successfully represented Chartered Professional Accountants of Canada, among other co-defendants, on a motion striking out two expert affidavits sought to be relied upon at trial: ACCA UK et al. v. CPA Canada et al., 2016 FC 1076
    • Advised large foreign corporation on name choice for multi-million dollar amalgamation of multiple industrial divisions, March 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
    • Intellectual Property counsel to Intact Financial Corporation on the acquisition of Canadian Direct Insurance from Canadian Western Bank, completed in May 2015
    • Successfully defeated appeal in the Federal Court from Trade-marks Opposition Board decision allowing Compass Minerals to obtain registration of trade-mark ENVIRO-GUARD: Tiger Calcium Services Inc. v. Compass Minerals Canada Corp., 2015 FC 1257
    • 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 FCA 104
    • 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 FC 215
    • 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

  • Chambers Canada: Canada's Leading Lawyers for Business: Recgonized in Intellectual Property
  • The Canadian Legal Lexpert Directory: Recognized in Intellectual Property, Litigation - Intellectual Property
  • Lexpert Zenith Award: Recognized in Celebrating Mid-Career Excellence
  • Legal 500: Recognized as Recommended Lawyer, Intellectual Property
  • Managing Intellectual Property: Recognized in The Top 250 Women in IP (Global); Trade Mark Star (Canada)
  • Managing Intellectual Property: IP STARS: Recognized in Top 250 Women in IP
  • World Intellectual Property Review: Recognized as a WIPR Leader
  • World Trademark Review 1000: The World’s Leading Trademark Professionals: Recognized in Gold Band for enforccement and litigation (Canada); Silver Band for anti-counterfeiting (Canada)
    • "Her advice is solid and her follow through exemplary. She thinks through cases strategically, keeping in mind both the client’s business goals and budget constraints where being able to advise from a both prosecution and enforcement perspectives is a huge value add.” 
  • Women's Law Association of Ontario: Recognized for the President's Award
  • University of Ottawa Faculty of Law: Recognized in the Common Law Honour Society

  • Selection Committee member, Common Law Honours Society of the University of Ottawa 2018-present
  • Fundraising Committee member, the equality effect (theequalityeffect.org)
  • Diversity Champions Committee, 2016-2017

  • Certified Specialist Board, Law Society of Ontario, 2016-2019
  • Co-Chair, IP Year in Review, The Law Society of Ontario, 2019 Chair, IP Year in Review, The Law Society of Ontario, 2016-2018 International Trademark Association (INTA) Anti-Counterfeiting Committee, 2018-19, 2020-21 terms
  • Co-Chair, Ontario Bar Association Institute Committee, 2014-2017 INTA Committee Member, Famous and Well-Known Marks Committee, North American Subcommittee, 2012-2014 and 2014-2016 terms
  • Committee Member, Ontario Bar Association Institute Committee, 2011-2014
  • Women’s Equality Advisory Group Committee to the Law Society of Ontario, 2009-2012
  • Expert Advisory group member to the Law Society of Ontario's Committee on the Retention of Women in Private Practice, 2006- 2008
  • Fellow, Intellectual Property Institute of Canada (IPIC)

  • Author, “How Canada Should Deal with Obscene Trademarks’, The Lawyers Daily, September 17, 2019
  • Author, "Peachy keen: How geographical indications could reshape how we view peaches", The Lawyer’s Daily, June 17, 2019
  • Author, "Copyright in artistic works created by AI", The Lawyer’s Daily, Apr 25, 2019
  • Author, "Lessons for brands: Delayed enforcement may mean denial of rights", The Lawyer’s Daily, Mar 15, 2019
  • "Major changes to Canadian trademark law and practice coming into force June 17, 2019 — Are you ready?", Update: Mar 14, 2019 (co- author)
  • Author, “Takeaway in burger wars: Bullies lose more often than you might think”, The Lawyer's Daily, January 28, 2019.
  • Co-author, No breaks in Europe for KitKat bars: Stripped of design protection, The Lawyer's Daily, August 31, 2018.
  • "Ontario Court of Appeal enforces contracts restricting grey market sales, not void for restraint of trade", Update: Jun 20, 2018
  • Author, Grey market sales can be restricted, even if not from Mars, The Lawyer's Daily, July 10, 2018.
  • Author, How to truly support women in private practice, Precedent Magazine, September 7, 2017.
  • Author, Canada: Adidas’s Famous Three Stripes Can’t Stop Two Stripe Designs, INTA Bulletin, Vol. 70, No. 19, November 1, 2015.
  • Co-author, Counterfeit diabetes products and the ethical question of access, Diabetes Management, Vol. 5, No. 5, September 1, 2015.