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 (2017‐21) Managing IP, and WTR1000: World’s Leading Trademark Professionals (2013‐2021) Gold Band ranking for IP litigation. May has also received the Lexpert Zenith Award for mid‐career excellence in 2018 and the Women’s Law Association of Ontario President’s Award in 2016, for her community work in promoting the advancement of women.

    • 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)
    • Successfully opposed registration of ICPA PROFESSIONAL in Chartered Professional Accountants of Canada v Michael Schemmann, 2022 TMOB 3 (January 19, 2022)
    • Successfully defended registration of TL NETWORK in 2042923 Ontario Inc. o/a Travel Leaders v. Travel Leaders Group, LLC, 2021 TMOB 181 (August 16, 2021)
    • Successfully defended registration of NWHL in Ontario Women’s Hockey Association v. NWHL LLC, 2020 TMOB 25
    • Successfully recovered domain name cpacanada.online in Chartered Professional Accountants of Canada v. Zakaria Frouni, NAF File 1807001795339 (August 6, 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)
    • Obtained a judgment for permanent injunction, compensatory and punitive damages plus costs, totaling $140,850, enjoining the sale of grey market goods misrepresenting the source TFI Foods and I‐Mei Foods Co Ltd. v. Every Green International Inc. 2021 FC 241 (March 19, 2021)
    • Obtained interlocutory injunction to enjoin the sale of grey market goods sold with misrepresentation as to source TFI Foods and I‐Mei Foods Co Ltd. v. Every Green International Inc. 2020 FC 808 (August 4, 2020)
    • 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

  • The Lexpert/American Lawyer Guide to the Leading 500 Lawyers in Canada: Recognized in Intellectual Property (2020-2021)
  • TOP 250 Women in IP: Managing IP Magazine, global ranking 2017‐2021
  • Chambers Canada: Canada's Leading Lawyers for Business: Recgonized in Intellectual Property
  • WTR Global Leaders: Recognized in 2021 Director
  • The Canadian Legal Lexpert Directory: Recognized in Intellectual Property; Litigation - Intellectual Property; Ontario's best intellectual property lawyers in 2021
  • Lexpert Zenith Award: Recognized in Celebrating Mid-Career Excellence (2018)
  • Best Lawyers in Canada: Recognized in Intellectual Property Law
  • IP STARS: Recognized as a Trade Mark Star (Canada) by Managing IP
  • World Intellectual Property Review: Recognized as a Trademark 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)
    • “Strategic, thoughtful, respectful lawyer who seeks the best outcomes for her clients with great determination.”
    • "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.” 
  • WTR Global Leaders: Recognized as a Global Leader
  • 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

  • Winner of Award of Excellence in the Promotion of Women's Equality, Ontario Bar Association, 2022
  • Chair, Certified Specialist Board, Law Society of Ontario – November 2021‐present
  • Member, Certified Specialist Board, Law Society of Ontario – 2016‐2021
  • Diversity Champions Committee, 2016‐2017
  • Member of the funraising campaign comittee for The Equality Effect website (theequalityeffect.org)
  • Member of the funraising campaign comittee for the Yee Hong Community Wellness Foundation

  • Co‐Chair, IP Year in Review, The Law Society of Ontario, 2019‐2022
  • Certified Specialist, Ontario Bar Association, 2016-2018
  • Chair, IP Year in Review, The Law Society of Ontario, 2016‐2018
  • Co‐Chair, Ontario Bar Association Institute Committee, 2014‐2018
  • International Trademark Association (INTA) Anti‐Counterfeiting Committee, 2018‐19, 2020‐21 terms,
  • INTA Committee Member, Famous and Well‐Known Marks Committee, North American Subcommittee, 2012‐2014 and 2014‐2016
  • Committee Member, Ontario Bar Association Institute Committee, 2011‐2014
  • Women’s Equality Advisory Group Committee to the Law Society of Ontario, 2009‐2012
  • INTA Committee Member, Anti-Counterfeiting Committee, North American Subcommittee, 2006-2007 and 2008-2009
  • 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, “No liability for infringing comparative advertising”, The Lawyer’s Daily, January 26, 2022
  • Author, “Wiseau case: No need for a bazooka when fly swatter will do”, The Lawyer’s Daily, January 11, 2022
  • Author, “Association with cannabis still damaging to reputation, goodwill”, The Lawyer’s Daily, September 2, 2021
  • Author, “Using CBC’s leadership debates footage for campaign ads deemed “fair””, The Lawyer’s Daily, June 1, 2021
  • Co‐author, “Making the best of a bad year: Winning IP cases in 2020”, The Lawyer’s Daily, January 13, 2021
  • Co‐author, “Appeal Court rejects supreme reign of official marks”, The Lawyer’s Daily, December 24, 2020
  • Author, “Costco no longer “rocking” high end jeans after court upholds $500k in damages”, The Lawyer’s Daily, November 9, 2020 
  • Author, "Federal Court of Appeal slams ‘Goldilocks approach’ in right to interpret contract", The Lawyer’s Daily, September 10, 2020
  • Author, "Waszul, Wiseau, and Moral Rights on the Internet", Yale Journal of Law & Technology, August 26, 2020
  • 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.
  • Panelist, Through the Door and at the Table: Women and Racial Diversity, presented by the Law Society of Ontario and the Women’s Law Association of Ontario, September 21, 2016
  • Editor-in-Chief, Intellectual Property Journal, published by Federated Press, 2013-2016
  • Co-author, “Intellectual Property Law and Work,” The Law of Work, published by Edmond Montgomery, December 2015
  • Speaker, Counterfeit Products Identification, 20th Annual Fraud and Anti-Counterfeiting Conference, December 2015
  • Author, “Canada: Adidas’s Famous Three Stripes Can’t Stop Two Stripe Designs,” INTA Bulletin, Vol. 70, No. 19, November 1, 2015.
  • Panelist, Women in the Legal Profession: How to be Successful, presented by the Law Society of Ontario, October 29, 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 Assembly of the Intellectual Property Institute of Canada, October 2014