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Jeilah Y. Chan

Partner, Trademark Agent

Partner, Trademark Agent | Email

T: 416.777.5779

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Toronto

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Chan Jeilah
 
  • Recent Experience
  • Recent Recognition
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T: 416.777.5779


Email

Toronto

Download vCard
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  • Education
  • Bar Admissions
  • Recent Experience
  • Recent Recognition
  • Insights, News & Events
  • Related Services
  • Recent Experience
  • Recent Recognition
  • Insights, News & Events
  • Related Services

Jeilah Chan is a fierce advocate for her clients, whether asserting or defending their rights, or negotiating and structuring a deal on their behalf. Clients view Jeilah as “skilled, creative and extremely clever” with “an incredibly high level of competence and a client-oriented approach” (WTR 2020).

Jeilah practices all aspects of intellectual property, representing clients in litigation involving patent, trademark, contract/licensing, trade secret and copyright issues.

Jeilah advises clients on IP issues arising out of M&A transactions, joint ventures and licensing matters. She also advises clients on advertising and labelling, and IP protection, enforcement, commercialization and brand-building strategies.

Chambers Global 2023

"Jeilah is an excellent professional; a client-oriented and pragmatic lawyer with a huge knowledge of IP law." "She knows the business and culture of our company really well, and provides tailored advice based on that."

Jeilah is lead counsel for clients across a wide range of industries, including biotechnology, agriculture, food and beverage, technology, luxury goods, media, telecommunication, and construction technology.

WTR 1000

“Jeilah Chan is a shrewd enforcement expert who knows her way around the courtroom.”

Jeilah is the Editor-in-Chief of the Canadian Intellectual Property Review law journal. She is an active fellow of the Intellectual Property Institute of Canada, serving on committees and as Past-Chair of the Basics of Law Course. Jeilah is on the advisory board of ChIPs’ (Chiefs In IP) inaugural Canadian Chapter. She is also an active member of the International Trademark Association and the Advocates’ Society.

Jeilah is the author of the Intellectual Property Risk section of the Directors’ Duties in Canada, 7th edition (Lexis Nexis). She is co-author of WTR’s Trademark Litigation Guide (Canada) and WTR’s Best Practice in Litigation Strategies: Global Perspectives. She is a guest lecturer at Osgoode Hall Law School (IP LLM) and regularly presents on advocacy and IP topics.

Chambers Canada 2022

"Jeilah Chan is able to distil the nuanced and technical legal issues into business advice."
"Her legal opinions are meticulous but always based on a client-oriented approach."

Education

University of Toronto, BSc, 1999 Osgoode Hall Law School, LLB, 2002 

Bar Admissions

Ontario, 2003

Recent Experience

Litigation
Transactions
Ferrero S.p.A, in a trademark opposition against A & V 2000 Inc., regarding the trademark NUTERRRA & Design (1,635,286), 2017 TMOB 84
Ferrero S.p.A, in various cancellation proceedings including ROCHER
The defendant, in successfully defending against a patent infringement action commenced by Tensar (Tensar Technologies Limited, and Tensar Corporation LLC, and Tensar International Corporation, and Nilex Inc. v. Enviro-Pro Geosynthetics, Ltd. 2019 FC 277 (decision issued March 6, 2019) (T-1930-13).
Ferrero S.p.A, in a trademark dispute against Roshen involving the famous ROCHER trademark (Ferrero S.p.A, v. Dotchirne pidpriemstvo Konditerska korporatzia Roshen, 2017 TMOB 166 – ROSHEN & Ribbon Design (App No. 1548677; Ferrero S.p.A, v. Dotchirne pidpriemstvo Konditerska korporatzia Roshen, 2017 TMOB 167 ; Dotchirne pidpriemstvo Konditerska korporatzia Roshen v. Ferrero S.P.A., 2018 TMOB 38; Dotchirne pidpriemstvo Konditerska korporatzia Roshen v. Ferrero S.P.A., FC (T-305-18); Dotchirne pidpriemstvo Konditerska korporatzia Roshen v. Ferrero S.P.A., (T-306-18).
Guccio Gucci SpA, in opposition proceedings involving its famous GUCCI and GG branding portfolio.
Lehigh Hanson Materials, in successfully defending a cancellation proceeding (Cameron IP v. Lehigh Hanson Materials 2018 TMOB 136 – dated Nov. 8, 2018).
Successfully defended Venngage Inc. in a copyright infringement action in the Federal Court, resulting in a discontinuance (Court File no. T-1731-21). 
Successfully represented Craig Proctor IP Holdings Inc. in a copyright infringement application in the Federal Court (Court File no. T-1061-22). 
Successfully represented Grandeur Custom Homes in its action for $10 million arising from the construction of a luxury mansion. The defendant's appeal was dismissed. (Grandeur Custom Homes v. Zeng, Court File no. 2021 ONSC 4005) 
TELUS Corporation, in trademark oppositions brought by Shaw Telecommunications Inc. regarding the trademarks OPTIK and OPTIK TV DESIGN. Shaw Telecommunications Inc. v. TELUS Corporation 2015 TMOB 173; 2015 TMOB 175; 2015 TMOB 174  and 2015 TMOB 176.
Elte Carpets Limited, in trademark oppositions brought by Brasstech, Inc. regarding the trademarks GINGER'S and GINGER'S DESIGN. Brasstech, Inc v Elte Carpets Limited 2014 TMOB 92; 2014 TMOB 93.
Sears Brands, LLC, in a trademark opposition brought by GetThere L.P. regarding trademark HELPING YOU GET THERE FASTER. GetThere LP v. Sears Brands, LLC 2013 TMOB 3.
Marc Anthony Cosmetics, Inc., in a trademark and trade dress infringement, passing off and unfair competition Federal Court action launched by Moroccanoil.
Sears Canada Inc., in a copyright infringement action brought by Northern Reflections. Northern Reflections Ltd. v. Sears Canada Inc. (Court File No. T-408-11).
Ferrero S.p.A, in a trademark opposition against Cantarella Bros Pty Limited regarding the trademark NUTINO (1353327), 2012 TMOB 45
Sears Canada Inc., in a trademark opposition against With You, Inc. regarding trademark JS BY JESSICA. Sears Canada Inc. v. With You, Inc.  2012 TMOB 81.
Sears Canada Inc., in a copyright infringement action brought by L.A. Printex Industries. L.A. Printex Industries, Inc. v. Sears Canada Inc. et. al. (Court File No. T-1716-10).
Research In Motion Limited, in successfully obtaining an interim and interlocutory injunction to restrain the sale of counterfeit replacement parts.
Sears Canada Inc., in defending a trademark infringement action, culminating in discontinuance. Caplan Industries Inc. v. Sears Canada Inc. et. al. Court File No. T-2012-09.
Canadian Motion Pictures Distributors Association, in an application to the Federal Court to expunge copyright registrations. Court File No. T-1534-08.
Swamp Mats Inc. and Sterling Lumber Company, defendants in a patent infringement action, in a patent infringement claim made by a competitor in respect of bolted three-ply temporary road mats. Successfully resisting plaintiffs' motions (and subsequent appeal to the Federal Court of Appeal) to amend statement of claim to add new allegations of patent infringement. Sterling Lumber Company v. Harrison, 2008 FCA 383; 2008 FC 220.
Agropur Cooperative, in an application to the Ontario court to enforce a restrictive covenant involving Parmalat's trademark.  Agropur Cooperative v. Parmalat Dairy & Bakery Inc. (Court File No. 07-CV-328949 PD2).
The Canadian Copyright Licensing Agency, in copyright infringement actions against various individual and corporate defendants. The Canadian Copyright Licensing Agency v. Apex Copy Centre et al. (Court File No. T-1788-04),  Canadian Copyright Licensing Agency v. Keele Copy Centre Inc. et al. (Court File No. T-1333-09), Canadian Copyright Licensing Agency v. Triple Sound Investments Ltd. et al. (Court File No. T-1328-09), Canadian Copyright Licensing Agency v. 1758543 Ontario Inc. et al. (Court File No. T-1329-09) and Canadian Copyright Licensing Agency v. Duc Tinh Nguyen (Court File No. T-2214-07).
Research In Motion Limited, in an application to the Federal Court to vary entries in the records of the Canadian Patent Office for two purchased patents.
Sawmill Creek Golf and Country Club Ltd., alleged infringer, in copyright claims relating to photographs, resulting in dismissal of the action and subsequent appeal. Ritchie v. Sawmill Golf and Country Club Ltd. (2003), 27 C.P.R. (4th) 220; Ritchie v. Sawmill Golf and Country Club Ltd. (2004), 35 C.P.R. (4th) 163.
Canadian Motion Pictures Distributors Association, in an application to the Federal Court to expunge copyright registrations. (Court File No. T-1534-08).
The Canadian Copyright Licensing Agency, in obtaining and enforcing judgments for copyright infringement against individual and corporate defendants.
Novopharm Ltd., defendant in a patent infringement action, in successfully appealing (in the Federal Court of Appeal) an order requiring the defendant to answer certain questions on discovery. Novopharm Ltd. v. Eli Lilly and Co. 2006 FCA 176.
Sobeys Inc., defendant/respondent, in an infringement claim made by a registered trade-mark owner, resulting in the dismissal of the action and subsequent appeal primarily because plaintiff's survey evidence was successfully challenged. Tradition Fine Foods Limited v. Oshawa Group Limited, 2005 FCA 342Tradition Fine Foods Ltd. v. The Oshawa Group Ltd., 2004 FC 1011.
Canada Law Book, Appellant in a copyright action, in successfully arguing costs motions.  CCH Canada Limited v. Law Society of Upper Canada 2004 FC 1760.
Novopharm Ltd., in two patent infringement and unfair competition Federal Court actions involving Eli Lilly and Company and Apotex Inc..  These disputes related to the drug Nizatidine. Eli Lilly and Company v. Apotex Inc. and Novopharm Ltd. (Court File No. T-1697-01); Eli Lilly and Company v. Apotex Inc. and Novopharm Ltd. (Court File No. T-1100-97).
Novopharm Ltd., in a breach of contact Ontario Court action involving Apotex Inc. and the drug Nizatidine.  Apotex Inc. v. Novopharm Inc. (Court File No. 98-CV-160140).
Teknaform Inc., a manufacturer of PVC edgebanding products, in its sale to a portfolio company of Incline Equity Partners, a Pittsburgh-based private equity fund.
Kensington Capital Partners and Kensington Private Equity Fund in its acquisition and subsequent amalgamation of Resolute Health Corporation Limited, a leading Canadian healthcare services business specializing in the testing and treatment of obstructive sleep apnea.
PowerSchool in its acquisition of Chalk.com Education.
Lineage Logistics, an international refrigerated warehousing and storage company owned by Bay Grove Capital, on its acquisition of VersaCold Logistics Services, a Canadian refrigerated warehousing company with fully integrated logistics capabilities, from Torquest Partners, The Investment Management Corporation of Ontario and OPTrust.
Nuralogix, in its formation, acquisition of intellectual property assets, and various financings.
ecobee Inc. in the US$770-million acquisition by Generac Holdings Inc. of all of ecobee Inc.'s outstanding securities by way of a plan of arrangement under the Canada Business Corporations Act.
Freed Developments Ltd. in its approximately $330-million acquisition of a portfolio of real property assets of including Horseshoe Valley Resort, Deerhurst Resort and some additional lands from Skyline Investments, together with the purchase of the portion of Muskoka Bay Resort it did not already own.
CF Acquisition Corp. VI, a special purpose acquisition company (SPAC) sponsored by Cantor Fitzgerald, as Canadian counsel on its business combination with Rumble Inc., a high growth neutral video distribution platform with an international user/subscriber base, valued at an initial enterprise value of US$2.1-billion.
Redecan, Canada's largest privately-owned licensed producer with leading market shares across multiple categories, on its sale to Hexo Corp., a TSX listed company, for a purchase price of $925 million payable in cash and shares. 
Dye & Durham Limited, a leading provider of cloud-based software and technology solutions for legal and business professionals, in its $530-million acquisition of DoProcess L.P., the leading provider of real estate practice management software in Canada and an affiliate of Teranet Inc., from OMERS Infrastructure, a leading global infrastructure investment manager and the infrastructure arm of one of Canada’s largest pension plans.
Transflo, a True Wind portfolio company, and a mobile, telematics and business process automation provider for the transportation industry, in its acquisition of Microdea, a leader in document management and workflow automation solutions in the transportation and logistics industry. 
Datasite LLC, a portfolio company of CapVest Partners LLP, in its acquisition of Firmex Inc., a leading virtual data room and subscription file-sharing provider.
TELUS, in numerous private, technology-focused, M&A acquisitions throughout Canada and the United States.
Diversified, in its acquisition of the business of Advanced Presentation Products.
Stone Canyon Industries Holdings LLC and Kissner Group Holdings, as Canadian counsel, in their US$3.2-billion agreement to acquire K+S Aktiengesellschaft's North and South American salt business, including Morton Salt and Windsor Salt.
Wilbur-Ellis Holdings II, Inc., in its acquisition of Nachurs Alpine Solutions.
Clearpath Robotics, in numerous matters, including financings that included Canadian and U.S.-based venture capital investors, and its credit facility with Silicon Valley Bank.
ECI Software Solutions, in its acquisition of Shoptech Industrial Software Corp., a provider of ERP software for job shops and made-to-order manufacturers.
ecobee, in its $127-million Series C financing that included foreign-based venture capital investors, and related matters, its M&A acquisitions, and convertible note financings.
Flo Partners, in its sale to strategic U.S. acquiror.
Kensington Capital Partners and Kensington Private Equity Fund in its $35-million acquisition and related financing through its portfolio company, Clearpoint Health Network Inc., of the surgical and medical centres business of Centric Health Corporation, and in its investment in LifeSpeak Inc., a leading North American digital education platform that caters to the mental health and wellness of employees, with Round 13 and Roynat Capital joining Kensington in the investment round for aggregate proceeds of $42 million.
Kensington Capital Partners and Kensington Private Equity Fund in its majority equity investment in Jewlr and its affiliate, Safyre Labs, both direct-to-consumer ecommerce retailers specializing in the design and manufacturing of personalized and custom jewelry.
Klick Health, in connection with various matters including spin out and financing of Sensei Labs division.
NeoGraft Solutions Inc., in the sale of its hair restoration business to Venus Concept Ltd.
S.i. Systems Ltd., in its acquisition by Quad C Partners.
S.i. Systems ULC, Canada's largest information technology staffing company, in its sale by Quad-C Management and management shareholders to Cornell Capital LLC and TorQuest Partners.
York1 Group of Companies, a leading private-equity backed environmental and infrastructure services provider, in its acquisition of the Budget Group of Companies, specializing in residential, commercial, and industrial waste and recycling solutions as well as metal salvage, waste facilities and demolition. 
Canadian counsel to Conagra Brands, Inc. in its $10-9 billion acquisition of Pinnacle Foods Inc.
SurfEasy Inc., in its acquisition by Opera Software.
Blue Ant Media Inc., in its acquisition of Canadian broadcaster High Fidelity HDTV and its four premium high definition channels – Oasis HD, eqhd, radX and HIFI HD.
Blue Ant Media Inc., in its acquisition of Canadian broadcaster GlassBOX Television Inc. and the Travel+Escape, Bite TV and AUX TV specialty channels.
A syndicate of underwriters led by Salman Partners Inc., in an $8.675-million bought deal offering of common shares of Slyce Inc.
VimpelCom Ltd., in its sale process and disposition of their debt and equity interests in the Globalive group of companies in Canada, including Globalive Wireless Management Corp. (WIND Mobile), including the forgiveness or sale of approximately $2 billion of debt owed by WIND Mobile and the sale of their equity interests in WIND Mobile for approximately $130 million.
Research In Motion Limited, in its $200-million acquisition of QNX Software Systems from Harman International Industries, Incorporated.
Intrafinity Inc., doing business as SharpSchool, in the acquisition of substantially all of its assets by West Corporation.

Recent Recognition

Chambers Canada
Ranked, Intellectual Property
The Canadian Legal Lexpert Directory
Repeatedly Recommended, Intellectual Property
Chambers Global
Ranked, Intellectual Property Litigation
Who's Who Legal: IP
Recognized as a leading Trademark lawyer
The Legal 500: Canada
Next Generation Partner, Intellectual Property
Benchmark Litigation: Canada
Future Star
M&A Today: Global Awards
Intellectual Property Lawyer of the Year - Canada
Managing IP: IP Stars
Recognized as an IP Star for Trademarks – Ontario
WTR 1000 The World's Leading Trademark Professionals
Recommended Individual, Transactions
Recognized among the top 1000 Trademark professionals in Prosecution and Strategy
Recognized among the top 1000 Trademark professionals in Enforcement and Litigation

Insights, News & Events

Announcements

Chambers Global Ranks Bennett Jones Lawyers in 2023 Edition

March 06, 2023
       

Articles

Trademark Litigation in Canada: WTR's Global Guide 2023

January 24, 2023
       

Announcements

Bennett Jones Shines In Legal 500 Canada Rankings

November 09, 2022
       

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