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Robert (Rob) D. McDonald K.C.

Partner, Trademark Agent

Partner, Trademark Agent | Email

T: 780.917.5225

Email

Edmonton

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McDonald Rob
 
  • Recent Experience
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T: 780.917.5225


Email

Edmonton

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

Rob McDonald practices primarily in the areas of intellectual property litigation and enforcement, branding strategy, trademark protection and commercialization, and licensing and exploitation of all forms of IP. This includes advising clients on copyrights, trademarks, patents, industrial designs, trade secrets, and confidential information.

Rob has litigated copyright, trademark, and patent infringement actions at various levels of court. His litigation experience includes domain name disputes, franchise and shareholder disputes, counterfeit goods, and misappropriation of confidential information and trade secrets. He is a trusted advisor to clients with respect to all aspects of the protection, licensing, exploitation and enforcement of their IP and technology. Rob provides IP support with respect to mergers and acquisitions, cross border and international business, financing and other commercial transactions, including conducting due diligence on IP portfolios, analyzing ownership and validity issues, and assessing the strength and breadth of trademark and patent registrations.

Rob represents a broad range of clients worldwide in a variety of industries, including media and entertainment, telecommunications, oil and gas, energy, retail, luxury brands, finance, computer technology, life sciences, and cannabis. He has significant experience with respect to copyright collectives, having acted as legal counsel for the Society of Composers Authors and Music Publishers of Canada (SOCAN) and having served as a director of Access Copyright (formerly CANCOPY). Such work has included hearings before the Copyright Board and the negotiation of tariffs, royalty rates and structures.

Rob is a registered trademark agent in both Canada and the United States. He manages many IP portfolios and brands for local, national and global clients, and is an experienced litigator who enforces and defends client’s valuable IP rights.

Rob is a consultant for the newly-formed NRC-IRAP Legal Assist Program, designed to provide IP advisory services and assistance to start-ups and technology companies and promote innovation in Canada.

In 2023 Rob received the prestigious Distinguished Service Award for Service to the Profession, awarded jointly by the Canadian Bar Association and the Law Society of Alberta. 

He is recognized as one of Canada’s Leading Lawyers in the area of IP Law (Trademarks) by numerous publications, including Best Lawyers in Canada since 2009, The Canadian Legal Lexpert Directory since 2010, WTR 1000 World's Leading Trademark Lawyers and The National Post.

He is a member of several professional organizations including the International Trademark Association, the Intellectual Property Institute of Canada (Fellow), the Licensing Executives Society, and the Business, Law and Technology Forum, which he co-founded. Rob is also a sessional instructor of the IP Law Course at the University of Alberta Faculty of Law. He has taught this course since 1990. He is an instructor of the Legal Education Society of Alberta Intensive Trial Advocacy Course and the Osgood Hall Masters of Law Program. Rob has delivered IP lectures to the Faculties of Law at Oxford University, the MacEwan University Faculty of Graphic Design, the University of Alberta Faculty of Engineering and Cambridge University as a visiting professor. He was also an instructor at the McGill University and IPIC Intensive Trademarks Course.

Rob formerly sat on the Board of Directors of the Alberta Science and Technology Leadership Foundation (ASTech). It was a not-for-profit organization founded in 1989 to showcase the substantial achievements in science and technology in Alberta and to inspire the next generation of innovation for societal and economic benefit.

Education

University of Alberta, LLB, 1988

Bar Admissions

Alberta, 1989

Recent Experience

Represented a Canadian geotextile corporation which provides products and services to pipeline and civil construction industries, in successfully defending against a patent infringement action regarding a polypropylene geo-synthetic grid product. The litigation was heard in Federal Court as Tensar Technologies Limited, and Tensar Corporation LLC, and Tensar International Corporation, and Nilex Inc. v. Enviro-Pro Geosynthetics, Ltd. 2019 FC 277, and the non-infringement decision was issued on March 6, 2019 (T-1930-13).
Represented a global pet food corporation on intellectual property litigation issues, trademarks and branding strategy, protection, prosecution and enforcement, and misleading advertising matters.
Successfully registered a large portfolio of trademarks in Canada and globally for a large Canadian retail cannabis company.
Provided global branding strategy advice and coordinated with trademark firms worldwide to register brands for a multi-national neutraceutical company that produces natural sweeteners, probiotics, fiber and dietary supplements.
Represented a Canadian cannabis and biotechnology company with respect to their branding and trademark matters.
Acted for a major multi-national corporation, conducting due diligence and intellectual property contract review in the acquisition of an agrochemical and crop science division of a US corporation that produces herbicides and genetically engineered crops.
Reviewed licensing agreements and provided intellectual property advice for a Saskatchewan based agri-science corporation.
Provided branding and trademark advice for a Canadian retail coffee business with hundreds of locations across Canada, including successfully registering a number of Canadian trademarks.
Represented an agricultural biotechnology company in a trademark dispute in Germany, successfully obtaining European Union registrations for disputed trademarks and overcoming objections and litigation from a competitor.
Provided intellectual property litigation advice to a Canadian cannabis production company.
Successfully resolved an intellectual property and share purchase dispute involving an Edmonton-based agri-chemical supply company.
Provided copyright and trademark advice to a not-for-profit Canadian company which distributes a publication in the field of cannabis growing, production and education of the public.
Provided patent advice and general intellectual property and licensing advice to a Canadian inventor in respect of a novel method of detecting and eliminating pests in cannabis and other agricultural crops.
Represented an Alberta-based farming operation in an intellectual property dispute from a large European-based corporation .
Successfully defended a Saskatchewan based fertilizer supplier and provider of products and services in the field of soil management and crop nutrition and production, in a trademark infringement dispute with an Alberta-based competitor.
Successfully defended a food manufacturer in a trademark dispute involving the shape and design of a gluten-free cookie product and alleged infringement on the brand of a multi-national competitor.
Provided intellectual property, corporate structuring, licensing and due diligence advice to a new Alberta-based corporation promoting the preservation of honey bees and the use of honey in various products including food and beverage products.
Represented an Alberta-based Canadian craft brewery in various trademark and branding matters, licensing and IP disputes.
Provided intellectual property due diligence and licensing advice to a Canadian sustainable produce company regarding the delivery of produce to retail outlets and consumers.
Represented a Canadian hemp producer in a corporate reorganization and intellectual property due diligence and trademark review, including filing trademark applications and advising on international distribution, protection and enforcement matters.
Provided intellectual property advice and filed trademark applications for a Toronto-based craft brewery.
Advising on an Edmonton-based beverage start up and providing trademark registration and licensing strategic direction.
Enviro-Pro Geosynthetics Ltd., in a patent infringement lawsuit brought by Tensar Technologies Limited. Enviro-Pro Geosynthetics filed a counterclaim for invalidity of the patent, use of the Gillette Defense, and request for re-examination of issued patents.*
Puma, in the defense of an action involving allegations of inducement of breach of contract and inference with contractual relations in a matter relating to the apparel sponsorship of the Canadian Olympic track and field team at the Ontario Superior Court of Justice.*
Advised a financial lender on the IP due diligence including extensive review of prior art and registered patents of competitors in the aeronautics industry and specific technology involving communication and transmission of data from aircraft to ground services in real time.*
Acted as Canadian intellectual property counsel, corporate and regulatory counsel for an American Defense Contractor in the sale of its government information technologies. Involved in the sale of assets related to performance of high security contracts, such as the maintenance and refurbishment of Canada’s aging fleet of CF-18 fighter jets.*
Advised a global e-commerce website with the launch of its music services, advised on copyright licensing issues for Canada.*
Advised a global social media company on various Canadian licensing issues for online audiovisual content, as part of the company’s global review of these issues.*
Advised an investment group on various copyright licensing matters for the launch of the investment groups online service in Canada.*
Advised a global web service provider on issues relating to the acquisition of a image and video hosting website. *
Successfully stopped the unlawful importation, sale and distribution of counterfeit water bottles, protecting the proprietary designs and trademarks of the owner of an iconic global water bottle brand. To implement properly worked with border enforcement officers to prevent illegal importation in contravention of Canadian IP laws.*
Advised a publicly traded cannabis business with respect to global brand strategy, trademark protection, and intellectual property.*
Advised a private corporate entity in relation to trademark portfolio management, brand strategy, licensing and the set-up of recreational cannabis retail stores.*
Advised the estate of a celebrity in relation to protecting and preserving his personality right and proprietary trademarks.*
Represented an oil and gas entity in relation to a trademark dispute involving a US Corporation claiming to have rights to a similar name. Successfully negotiated a co-existence agreement that allowed the client’s trademark to proceed to registration and permitting them to continue to use their value and proprietary brand.*
Represented a startup food company in a dispute involving a competitor claiming confusion with an existing brand, successfully negotiated a co-existence agreement with the opposing party and preserved the right of the client to use their brand. *
Reviewed an extensive portfolio of various intellectual property assets, including registered and unregistered trademarks and domain names, registered and pending patents, registered industrial designs, and registered and unregistered copyrights, including security interests registered at various intellectual property offices, for an investment firms in relation to the purchase of a utilities company.*
Advised a pharmaceutical company with respect to their right to acquire, use, and conduct clinical trials of a probiotic. This included doing a review of their trademark rights, copyrights, and obligations with respect to licenses and the ownership, use, and perseveration of intellectual property.*
Acted for an international coffee company in relation to an investigation of online sales and distribution of counterfeit goods in Canada. *
*Work done prior to joining Bennett Jones

Recent Recognition

Canada Bar Association Distinguished Service Award
2023 Recipient for Service to the Profession
Lexpert Special Edition—Canada's Leading Health Sciences Lawyers

Recognized as a leading Health Sciences lawyer

Best Lawyers in Canada
"Lawyer of the Year" in Intellectual Property
Recognized for Franchise Law and Intellectual Property Law
Décideurs - Stratégie Finance Droit
Trade Marks & Designs in the 2017 edition of Innovation – Technologies & Intellectual Property in the French publication
Lexpert/Report on Business Special Edition - Canada's Leading Litigation Lawyers
Recognized as a leading litigation lawyer in Canada
National Post
Trademarks
The Canadian Legal Lexpert Directory
Consistently Recommended, Intellectual Property
Lexpert Special Edition on Agribusiness & Cannabis
Recognized as one of Canada's leading lawyers in Agribusiness and Cannabis
Lexpert Special Edition on Technology
Recognized as one of Canada's leading lawyers in Technology
WTR 1000 The World's Leading Trademark Professionals
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

Rob McDonald Wins 2023 CBA Distinguished Service Award

January 11, 2023
       

Announcements

Lexpert’s Leading Canadian Tech and Health Lawyers

June 20, 2022
       

Announcements

Bennett Jones' Best Lawyers in Canada 2022

August 26, 2021
       

Related Services

Commercial Litigation
Biotech, Pharma & Lifesciences
Franchising
Retail, Consumer & Luxury Law
Technology, Media & Entertainment
Intellectual Property Law
Intellectual Property Litigation
IT & Business Services
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