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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 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 trade-mark 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.

    • 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-494-17 (May 2017), FC T-543-16 (April  2016), FC T-527-15 (April  2015) and FC T-708-14 (April 2014)
    • 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

  • Managing Intellectual Property Magazine, The Top 250, 2017, recognized as an IP Star.
  • Managing Intellectual Property Magazine, 2014-2017, recognized as an IP Star.
  • The Legal 500, 2017, recognized as a Recommended Lawyer in the area of Intellectual Property.
  • The Legal 500 Canada, 2014-2016, recognized in the area of Intellectual Property.
  • Canadian Legal Lexpert Directory, 2016, recognized in the area of Intellectual Property.
  • President's Award, awarded by Women's Law Association of Ontario, 2016. 
  • Inducted into the University of Ottawa Faculty of Law's Common Law Honour Society, 2014.
  • WTR1000: The World’s Leading Trademark Professionals, 2013-2016, recognized as a Silver Band ranked lawyer in Canada for both trade-mark litigation and anti-counterfeiting.  

  • Fundraising Committee member, the equality effect (theequalityeffect.org)
  • Fundraising Committee member, Yee Hong Community Wellness Foundation
  • Using human rights law to improve the lives of women and girls in Africa and around the world
  • Diversity Champions Committee, 2016-2017

  • Certified Specialist Board Member, The Law Society of Upper Canada, 2016-2018
  • Co-Chair, Ontario Bar Association Institute Committee, 2014-2018
  • Chair, IP Year in Review 2016-2017, Law Society of Upper Canada annual programme
  • Committee Member, International Trade-mark Association, 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 Upper Canada, 2009-2012
  • Committee Member, International Trade-mark Association, Anti-Counterfeiting and Enforcement Committee, North American Subcommittee, 2006-2007 and 2008-2009 terms
  • Expert Advisory group member to the Law Society of Upper Canada's Committee on the Retention of Women in Private Practice, 2006-2008
  • Fellow, Intellectual Property Institute of Canada (IPIC)

  • Panelist, Through the Door and at the Table: Women and Racial Diversity, program co-hosted by the Law Society of Upper Canada and Women’s Law Association of Ontario, September 21, 2016.
  • Editor-in-Chief, Intellectual Property Journal, published by Federated Press, January 2013-2016.
  • Speaker, Counterfeit Products Identification, 20th Annual Fraud and Anti-Counterfeiting Conference, hosted by Kestenberg Seigel Lipkus, December 2-4, 2015.
  • Panelist, Women in the Legal Profession: How to be Successful, program co-hosted by the Law Society of Upper Canada and Ontario Bar Association, October 29, 2015.
  • Co-author, Chapter 32, Intellectual Property Law and Work, for textbook The Law of Work, published by Emond Montgomery, December 2015.
  • 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.
  • Speaker, It’s Official: Prohibited Marks Still Rule, 88th Annual Meeting of the Intellectual Property Institute of Canada (IPIC), October 16, 2014