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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

  • Expert Guides: Women in Business Law, 2017: Trade Marks
  • WTR1000: The World’s Leading Trademark Professionals, 2013-2017 recognized as a Silver Band ranked lawyer in Canada for both trade-mark litigation and anti-counterfeiting.  
  • Managing Intellectual Property Magazine, The Top 250 Women in IP, 2017 global ranking.
  • 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.

  • Counterfeiting and Piracy: Canadian Judicial Experience, Measurement of Impacts and Consumer Attitudes

    Speaker, York, September 20, 2017

  • Your First Intellectual Property Matter: A Practical Guide

    Speaker, Unravelling Infringement, Passing-off and Depreciation of Goodwill, Toronto , May 30, 2017

  • 7th Annual In-House Counsel Summit

    Speaker, Marketing and Advertising: Best Practices & Potential Pitfalls, Toronto, February 27, 2017

  • 21st Annual Intellectual Property Law: The Year in Review

    Moderator, Program Chair, Toronto, January 19, 2017

  • 21st Annual Fraud & Anti-counterfeiting Conference

    Speaker, Toronto, December 2, 2016

  • Intellectual Property Institute of Canada webinar

    Speaker, Primer on Remedies in IP Infringement Cases, November 30, 2016

  • Through the Door and at the Table: Women and Racial Diversity

    Panelist, September 21, 2016

  • 20th Annual Fraud and Anti-Counterfeiting Conference

    Speaker, Counterfeit Products Identification, December 2-4, 2015

  • Women in the Legal Profession: How to be Successful

    Speaker, October 29, 2015

  • 88th Annual Meeting of the Intellectual Property Institute of Canada (IPIC)

    Speaker, It's Official: Prohibited Marks Still Rule, October 16, 2014

  • Fundraising Committee member, the equality effect (theequalityeffect.org)

  • Fundraising Committee member, Yee Hong Community Wellness Foundation

  • Diversity Champions Committee, 2016-2017

  • Certified Specialist Board Member, The Law Society of Upper Canada, 2016-2018
  • Co-Chair, Ontario Bar Association Institute Committee, 2014-2017
  • Chair, IP Year in Review 2016-2018, Law Society of Upper Canada annual program
  • 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)

  • Contributing author, Lexis Practice Advisor, Canada's Anti-counterfeiting Topic © 2017.

  • Contributing author, Intellectual Property Enforcement in the Digital World - © 2017 LexisNexis.

  • The Law of Work - © 2016 David J. Doorey, Emond Montgomery Publications Limited           

           Co-author of Chapter 32, Intellectual Property and Work

  • Editor-in-Chief, Intellectual Property Journal, published by Federated Press, January 2013-2016.

  • 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.


Upcoming Speaking Engagements
  • 22nd Annual IP Year in Review

    January 18, 2018

  • The Osgoode Certificate in Intellectual Property Licensing

    September 25 - December 5, 2017

  • Intellectual Property Institute of Canada (IPIC) Annual Meeting

    October 11-13, 2017

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