Background

Colleen Spring Zimmerman is a partner of Borden Ladner Gervais LLP in our Toronto office and the Manager of the Intellectual Property (IP) practice group (Toronto). Colleen worked at an IP boutique firm, specializing in acquisition, protection, enforcement and litigation of IP rights. She then joined a top tier, national Bay Street law firm to spearhead the creation and development of its IP group, where she became a partner, served as the Director of the IP group and Director of the National IP and Technology practice group. Colleen has extensive expertise in corporate transactions involving IP, including acquisitions, mergers, financings, joint ventures, business development, bankruptcies, outsourcing arrangements, as well as in commercialization of IP through licensing, distribution and franchising agreements.

Colleen has appeared as counsel in the Federal Court (at trial and on appeal), including acting in all forms of interim and interlocutory relief, including Anton Piller Orders and other remedies, in Ontario Court (at trial and on appeal) and in the Supreme Court of Canada in cases involving patents, trade marks, industrial design, copyright, passing off, trade secrets, wrongful termination of distributorship agreements and related matters.

Colleen was admitted to the Ontario Bar in 1979 and graduated from the University of Western Ontario Law School in 1977. Colleen received a Bachelor of Sciences degree in Pharmacy from Dalhousie University. Colleen has been a registered trade-mark agent with the Canadian Trade-marks Office since 1979. She has also practised as a pharmacist and is recorded as a pharmacist with the Ontario College of Pharmacists.

Areas of Practice

• Colleen practises intellectual property and technology law, giving advice in the areas of trade-marks, patents, copyrights, industrial designs, trade secrets, plant breeders rights, advertising, computer law, entertainment law, food & drugs, packaging & labeling, licensing, franchising, distribution agreements, technology transfer and other related areas as well as transactions and litigation in these areas.
• She has comprehensive trade-mark expertise ranging from validity and infringement opinions, searching, clearing, filing and registering trade marks to oppositions and cancellation proceedings and negotiating trade-mark agreements, including licenses. Colleen also has litigation expertise in trade-mark related disputes.
• She has provided intellectual property protection and commercialization advice to pharmaceutical, biotech and medical device companies and universities, research institutions and hospitals.
• She routinely gives advice on IP aspects of transactions and due diligence in acquisitions, mergers, financings, joint ventures, business development and bankruptcies as well as on IP audits and development of IP policies and strategies for protection and exploitation of IP assets.
• She works with clients in all types of businesses, from retail merchandisers to high tech companies, charities, manufacturers, information specialists, companies in the medical field and others.
• Colleen has appeared in the Trial and Appeal Divisions of the Federal Court of Canada and the Ontario Court (at trial and on appeal) and in the Supreme Court of Canada in cases involving patents, trade marks, industrial design, copyright, passing off, trade secrets, wrongful termination of distributorship agreements and related matters, many such cases being reported.

Rankings and Recognitions

• Recognized in the 2010 edition of Chambers Global – The World's Leading Lawyers (Intellectual Property)
• Selected by peers for inclusion in the 2010 edition of The Best Lawyers in Canada (Intellectual Property Law)
• Martindale-Hubbell BV Peer Review Rating
• Recognized in the 2009 Canadian Legal Lexpert Directory (Intellectual Property)
• Named one of LawDay 's 24 leading lawyers in Canada in the practice area of Intellectual Property for 2009

Professional and Community Activities

• Editor in Chief of the Intellectual Property Journal
• Faculty:
  • Adjunct Professor - York University/Osgoode Hall Law School, LL.B. Program (Toronto) – 'Intellectual Property Law and Cognitive Science' Course with Dr. Ruth Corbin and Dr. John Senders – 1997 to the present
  • York University/Osgoode Hall Law School, LL.M. Program (Toronto) – 'Intellectual Property - Trade-Mark and Licensing Law' Course with R.T. Hughes - January, 1997 and November, 1999
  • McGill University/IPIC - (Former) Director of Trademarks Programs – 'Trade-marks - An Intensive Practical Course and Trade-marks - An Advanced Course' (Montréal) – 1995 to 1999
  • McGill University/IPIC - Trade Marks - An Intensive Practical Course - "How to Conduct an Opposition Course" (together with Workshop) or "Life After Registration" and Workshop on "Licensing Considerations" - August 1995, 1996, 1997, 1998, 1999, 2000 and 2001 (Montréal)
• Member, Intellectual Property Institute of Canada (IPIC)
• Canadian Bar Association
• International Trademark Association (INTA)
• Licensing Executives Society (LES)
• American Bar Association/Intellectual Property Section
• AIPPI
• ALAI Canada/Canadian Literary and Artistic Association Inc.
• The Law Society of Upper Canada
• Ontario College of Pharmacists
• Former member of the CBA/PTIC Committee on Copyright and attended before the Sub-Committee of the Standing Committee on Communications and Culture on the Revision of Copyright which recommended revisions to the Copyright Act
• Law Society's Certification Program – Former Member of the Intellectual Property Law Specialty Committee which is responsible for the Intellectual Property Certification Program in Ontario
• Past Chair of the Trademark Agent Examining Board of Industry Canada, the government department which sets the examinations for the qualification of trade mark agents to practice before the Trade Marks Office in Canada
• Editor:
  • Intellectual Property Journal – Editor-in-Chief - Carswell
  • Canadian Trade-mark Practice & Procedure – Editor - INTA – Revision Committee
  • Editor of the INTA Canadian Trade-mark Practice Manual, published in New York by INTA, Fall, 1993

Lectureships

Colleen is a regular lecturer at seminars for professional and business groups and clients, a selection of which is listed below:

• INTA – Toronto – Annual Meeting - Speaking on 'One Mark – Many Parties – What Happens When Different Parties Have Rights to the Same Mark?' – May 8, 2006
• Commercialization of New Therapies and Devices - Chair and also Speaking on 'A Primer on IP' and 'Building the Technology/Product Pipeline' – June 1, 2006
• Federated Press – Toronto – Intellectual Property Licensing – Program Chair and also Speaking on 'Boilerplate Provisions' – September 5 & 6, 2006
• BLG – Toronto – Labour and Employment Symposium – Speaking on 'IP/IT for Employees' - November 9, 2006
• BLG – Kitchener/Waterloo – Speaker, 'Domain Names - What Are They And How Do You Protect Them?' – March 30, 2006
• BLG – Toronto – Speaker, 'IP Primer' – February 21, 2006
• Annual General Meeting of the Alliance for the Commercialization of Canadian Technology (ACCT) Ottawa - Participating in Moot on Should There be an Exemption from Infringement in Canada for Uses Directed to Research Purposes – November 8, 2005
• BLG – Kitchener/Waterloo – Speaker, 'So you got a cease and desist letter – you are about to be sued for IP infringement – what are we going to do? (will anything be left at the end of the fight) – how do you avoid infringement in the first place?' – October 27, 2005
• BLG – Toronto - Chair Lecture Series from January to March, 2006 on:
  • IP Litigation: What do you want to know about the Federal Court?
  • Adoption, Use and Registration of Trade-marks; The What's and Why's of Copyright; Patents
  • IP Licensing
  • IP in Commercial Transactions - Part I
  • IP in Commercial Transactions - Part II - Due Diligence, Reps and Warranties, Opinions and Boiler Plate Clauses
  • Taking Security in IP
  • Domain Names
• Federated Press – Toronto – Intellectual Property Licensing – Program Chair and also Speaker, 'Boilerplate Provisions' – May 30 - 31, 2005
• BLG – Kitchener/Waterloo – Chair and also Speaker, 'Making More Money From Your Intellectual Property Portfolio' – February 22, 2005
• University of Western – London, Ontario – Enlarging the Canadian Intellectual Property Academy Conference - Panel Member on 'Meet the Editors' – January 20-22, 2005
• ABA Summer IPL Conference – Toronto, Leader of Panel on Women in IP – June 16-20, 2004
• Federated Press – Toronto – Negotiating and Drafting IP Licensing Agreements Conference 2004 – Speaker, 'Boilerplate – Unlocking the Mysteries of the ‘Standard Clause'' – June 7-10, 2004
• Northwind Professional Institute – New York – Intellectual Property Opinions, Speaker, 'Foreign Lawyers and Patent/Trademark Agent Opinions' – March 31 – April 1, 2004
• Atlas Information (Canada) - Negotiating and Drafting Major Commercial Agreements and Transactions – Speaker, 'Drafting Licensing Agreements to Maximize Your IP Value' – December 2-3, 2002
• Atlas Information (Canada) – 2002 International Film and Television Finance Summit – Speaker, 'Internet Related Intellectual Property Issues' – November 19-20, 2002
• IPIC Forums & Seminars – Managing the Intellectual Property Portfolio – Speaker, 'Granting Security in Intellectual Property' – June 17, 2002
• Federated Press – Negotiating and Drafting License Agreements – Panelist, 'International Licensing and Technology Transfers' – April 24-26, 2002
• IT.Can Law Association –The Third Annual IT Law Spring Training Conference – Speaker, 'Pitfalls in IP Licensing' – April 4-6, 2002
• Atlas Information (Canada) – Negotiating, Drafting and Understanding Major Commercial Agreements – Speaker, 'Drafting License Agreements to Maximize Your IP Value' – December 5-6, 2001
• Law Commission of Canada – London – Leveraging Knowledge Assets: Security Interests in Intellectual Property – Speaker, 'Intellectual Property and Security Interests' – November 16-17, 2001
• Osgoode Hall Law School – York University – International Intellectual Property – Bringing Canadian Business Up to Speed – Panelist, 'International IP Issues Specific to Bio-Technology, Telecommunication and Pharmaceutical Industries" – October 17, 2001
• INTA San Francisco - Annual Meeting - Entertainment/Sports Industry Breakout Session - Speaker, "Border Remedies for Counterfeit Goods" - May, 2001
• Insight - Washington - Negotiating and Drafting Licensing Agreements, Maximize the Value of Your Intellectual Property Assets - Speaker, "Key Elements of an Intellectual Property Trademark License" - September 26-27, 2000
• Insight - Toronto - Negotiating and Drafting Major Business Agreements Bullet Proofing Your Documents, Speaker, "Drafting License Agreements" - December 9-10, 1999
• Insight - Chicago - Intellectual Property Management for Corporate Counsel - Developing a Corporate Intellectual Property Strategy, Workshop Leader "Managing Intellectual Property Asset Value - How to Set Up an Internal Legal Compliance Program" - November 15-16, 1999
• FICPI - Monte Carlo - Annual Meeting - Licensees - Right in or Left-Out, Speaker, "Licensees Rights" - November 3-6, 1999
• Insight - Toronto - Advertising: Challenges and Opportunities of Advertising Today, Speaker, "Intellectual Property: Issues in Advertising: Protecting the Uniqueness of Your Brand" - October 14-15, 1999
• Insight - Toronto - The 1999 Film and TV National Forum, Speaker, "Licensing and Merchandising: Exploiting Your Ancillary Rights" - June 3-4, 1999
• Insight - Toronto - Negotiating Licensing Agreements: Maximize the Value of Your Intellectual Property Assets, Program Chair - April 29-30, 1999
• Insight - Washington, D.C. - Drafting Licensing Agreements: Maximize the Value of Your Intellectual Property Assets - Speaker, "Trademark, Patent, Trade Secret and Technology Licensing: Key Elements" - April 27-28, 1999
• Law Society - Toronto - Fundamentals of Intellectual Property Program, Trade-marks: I Came, I Saw, I Registered and Patents, Industrial Designs and Copyrights: Two's a Company, Three's a Crowd Program, Chair - April 14, 1999
• INFONEX - Toronto - Corporate Controllers Forum, Prepared Paper on "Leveraging Intellectual Properties: Understanding Strategic Value and How to Manage the Value of a Unique Class of Assets" - March 24, 25 and 26, 1999
• Insight - Toronto - Intellectual Property Litigation - Program Chair - February 22-23, 1999
• Insight - New York - Intellectual Property Management - Developing a Corporate Intellectual Property Strategy, Workshop Leader "Managing Intellectual Property Asset Value - How to Set Up an Internal Legal Compliance Program" - February 11-12, 1999
• Insight - Vancouver - The Complete Course on Negotiating Licensing Agreements: Maximize the Value of Your Intellectual Property Assets, Program Co-Chair - November 16 - 17, 1998
• International Bar Association - Vancouver - Annual Meeting, Session on Insolvency and Intellectual Property, Speaker "Intellectual Property, Taking Security in Intellectual Property and Bankruptcy and Insolvency Canada " - September 16, 1998
• American Bar Association - Toronto - Annual Meeting, Speaker "Aggressive Patent Enforcement" - August 3, 1998
• Insight - Toronto - Advertising Challenges and Opportunities of Advertising Today, Speaker "Intellectual Property Issues in Advertising" - April 6th & 7th, 1998
• Insight - New York - Intellectual Property Management, Speaker "Workshop: Managing Intellectual Property Asset Value: How to Limit Corporate Liability Through Employee Training" - April 6th & 7th, 1998
• Insight - Toronto - Negotiating Licensing Agreements: Maximize the Value of Your Intellectual Property Assets, Program Chair - March 5th & 6th, 1998
• Insight - New York - International Intellectual Property: Protecting, Exploiting and Enforcing Your Rights Globally, Speaker " Canada " - February 9th & 10th, 1998
• Insight - New York - Negotiating Licensing Agreements: Maximize the Value of Your Intellectual Property Assets, Speaker "Trademark Licensing" - November 6th & 7th, 1997
• The Canadian Institute - Toronto - International Trade-mark Protection, Speaker "Opposition Proceedings" - September 15th & 16th, 1997
• Intelpro 1997 Forums - Ottawa and Toronto - June 10th and 11th, 1997
• The Canadian Institute - Toronto - Legal, Practical and Tactical Advertising - How to Walk the Advertiser's Tightrope with Bold Successful Campaigns, Program Co-Chair - June 2nd & 3rd, 1997
• The Canadian Institute - Toronto - Licensing Intellectual Property - The Legal and Business Issues, Program Chair - April 17th & 18th, 1997
• American Conference Institute - New York - Intellectual Property Business Transactions: A Global Currency, Moderator on "Intellectual Property as a Source of Wealth" - January 30th and 31st, 1997
• Infonex - Toronto - Business Strategies for Managing Intellectual Property A Practical Course, Speaker "Internal Controls and Audit Procedures" - December 11, 1996
• AIPPI International Meeting - Toronto - Speaker "International Trade-marks" - November 26, 1996
• Step Ahead - Toronto - Manufacturing, Productivity and Cost Analysis, Speaker 'Product Strategy' - November 20, 1996
• American Conference Institute - New York - Licensing Intellectual Property, Paper on 'Trademark, Patent, Trade Secret and Technology Licensing' - November 7th and 8th, 1996
• The Canadian Institute - Toronto - Licensing Agreements in the Entertainment Industry, Speaker 'Dispute and Remedies: Key Provisions, Termination, ADR Clauses and Licences' - June 25th and 26th, 1996
• IntelPro 1996 Annual Forum - Toronto - How Do I Keep Up with Technology? The Impact of ever changing Technology on the Intellectual Property Field, Speaker, 'An International Look at Internet Domain Name Issues' - April 18, 1996
• American Conference Institute - New York - International Trademark Protection Enforcement, Speaker, "Establishing a Successful Trademark Protection Program/Strategy" - March 28 & 29, 1996
• The Canadian Institute - Toronto - Chair of Intellectual Property Licensing, Speaker, "Security Interests - Licenses as Collateral in Financing" - January 23 & 24, 1996
• American Conference Institute - Chicago - Licensing and Other Intellectual Property Transactions, Speaker, "Trademark, Patent, Trade Secret and Technology Licensing" - December 4 & 5, 1995
• The Canadian Institute - Toronto - International Intellectual Property Protection, Speaker, "Auditing International Intellectual Property Rights" - November 27 & 28, 1995
• The Canadian Conference Institute - Toronto - Chair of Searching and Opinions in Intellectual Property Law - October 16, 1995
• Insight, The Globe and Mail and Carswell Press - Toronto - The Business of Licensing and Merchandising, Legal and Practical Issues for Successful Licensing Programs, Speaker, "Contractual Issues" - June 19 & 20, 1995
• Law Society of Upper Canada - Toronto - Chair of Conference on Fundamentals of Intellectual Property - June 6, 1995
• Step Up - Women Business Owners Program - Federal Business Development Bank and Ministry of Economic Development and Trade/Managed by Step Ahead - Toronto - Product Strategy, Speaker 'The Basics of Intellectual Property and Licensing' - 1995, 1996 and 1997
• The American Conference Institute - San Francisco - Intellectual Property Transactions: Valuation, Transfers and Licenses the Art of Valuation, Speaker "Trade-mark, Patent, Trade Secret and Technology Licensing" - May 18 & 19, 1995
• The Canadian Institute - Toronto - Intellectual Property in the Public and Quasi-Public Sectors, Speaker, "Copyright in the Educational and Cultural Sectors" - April 12, 1995
• Infonex - Toronto - Intellectual Property on the Information Highway : A Practical Course, Speaker, "Understanding Intellectual Property in the Electronic Universe" - March 29 and 30, 1995
• American Conference Institute - New York, New York - Intellectual Property Transactions: Valuation, Transfers, Licensing and Franchising, Speaker, "Trade-mark, Patent, Trade Secret and Technology Licensing" - February 2 & 3, 1995
• Licensing Executives Society Annual Meeting - Hawaii - Speaker, 'NAFTA and GATT - New Opportunities for International Strategic Relationships' and 'Licensing and the Repeal of the Registered User Provisions in Canada ' - October 16-19, 1994
• PTIC Annual General Meeting with New York Intellectual Property Law Association - Lake George, New York - Speaker, "Intellectual Property, The NAFTA and Mexico" - October 5-8, 1994
• The Canadian Institute - Toronto - Business Transactions Involving Intellectual Property Conference, Speaker, 'Intellectual Property as Security' - September 26, 1994
• The Canadian Corporate Counsel Association 1994 Annual Meeting - Toronto - Changing Dynamics: Supporting Your Company Doing Business Within and Outside Canada, Speaker, 'Protecting Your Company's Products in the New Economy: Intellectual Property' - August 23, 1994
• The Canadian Institute - Toronto - Intellectual Property Licensing Conference - Chair of the Conference and Speaker 'NAFTA - FTA and GATT - Licensing' - May 30-31, 1994
• Arizona Bar Association Intellectual Property Sub-Section - Phoenix, Arizona - Exports and Intellectual Property Protection After NAFTA, Speaker 'Intellectual Property Protection After NAFTA' - April 29, 1994
• INTA - Toronto - 1994 - Co-Chair of the Spring International Roundtable: Survey and Expert Evidence in Opposition Proceedings Roundtable - April 22, 1994
• CBAO - Montréal - Summary Judgment Proceedings Speaker, 'Summary Judgment Proceedings in the Federal Court' - April 12, 1994
• IntelPro/Thomson & Thomson - Toronto - Trade-Mark and Intellectual Property: Current Issues, Speaker, 'Trade-mark Licencing: Now that Registered User Requirements are Abolished' - April 6, 1994
• The Canadian Institute - Toronto - NAFTA: New Opportunities and Business Implications for Canadian Companies in Mexico - Speaker, 'Protection of Intellectual Property: New Regime' - January 13 & 14, 1994
• EPIC Educational Program Innovation Center - Toronto - Intellectual Property: Exploiting Your Technology - Speaker, 'Trade-marks: When You've Got the Game, You'll Need a Name' - November 29, 1993
• \ INFONEX - Toronto - Intellectual Property In Business Transactions Course - Speaker, 'Transferring Rights: Asset or Share Purchase' with John Kelly MacGregor of Kraft General Foods Canada Inc. - November 22 - 23, 1993
• PTIC Annual Meeting - Montréal - Speaker, 'Tangential Issues in Licencing' - October 13 - 16, 1993
• The Law Society - Toronto - 'On Your Mark' Conference - Speaker, 'Trade-marks Proper Selection and Clearance of Trade-marks' - September 29, 1993
• PTIC Meeting - Ottawa - Speaker, 'Trade-mark Licensing in Canada : Abandoning the Registered User Requirement in Favour of Quality Control' - March 10, 1993
• University of New Brunswick Law School - Fredericton - Speaker, 'Trade-marks & Passing-off' and panel member on 'Interrelation between Intellectual Property, Universities and Private Sector Funded R & D' - February 13, 1993
• Licensing Executives Society Convention - Boca Raton, Florida - Speaker, "Licenses as Assets in Secured Transactions", and "Introduction to Licensing" - October, 1992
• Insight Educational Services Seminar - Toronto - Advanced Trade-mark Oppositions Practice - Workshop Leader - May 22, 1992
• CBAO - International Law Section - Toronto - Speaker, 'Going Global with Innovative Products: Securing the Intellectual Property Advantage' - November, 1991
• PTIC Annual Meeting - Quebec - Speaker, 'Taking Security in Intellectual Property' - September, 1991
• Conference on Effectively Managing Intellectual Property, Technology Training - Toronto - Speaker, 'Protecting Confidential Information and Trade Secrets; Trade Marks and Passing Off; Exploiting Intellectual Property Assets and Protecting Property Rights in International Markets - March/April/90
• Wisconsin Securities Commission Conference on International Franchising/Lecture on Franchising in Canada, Speaker – 1990

Publications

• The Lawyers Weekly –Co-authored the article 'Patent Ownership in Canada ' – April, 2006 Issue
• The Lawyers Weekly – Focus on Intellectual Property Law – Co-authored the article, 'Need for Reform in Pharmaceutical Regulation More Pressing than Ever' – November 25, 2005 Issue
• World Trademark Law Report Yearbook 2005 – A Global Guide for Practitioners – Co-authored the Country Chapter for Canada on behalf of Borden Ladner Gervais LLP – 2005
• LEXPERT 2005 Canada/US Cross-Border Lawyer Guide – Co-authored Article on Intellectual Property Pitfalls in Cross-Border Transactions – April 2005
• Federated Press – Toronto – Negotiating and Drafting IP Licensing Agreements Conference 2004 – 'Boilerplate – Unlocking the Mysteries of the ‘Standard Clause'' – June 7-10, 2004
• Northwind Professional Institute – New York – Intellectual Property Opinions - 'Foreign Lawyers and Patent/Trademark Agent Opinions' – March 31 – April 1, 2004
• Law Commission of Canada – Leveraging Knowledge Assets: Security Interests in Intellectual Property – 'Intellectual Property and Security Interests' – London – November 16-17, 2001
• INTA Annual Meeting Article - "Canadian Customs and Counterfeit Wares" - May, 2001
• Entertainment, Media & Communications Section Newsletter - CBAO Article - Recent Developments in Canadian Law on Domain Names - November, 1999
• Media and Communications Bulletin - CBAO Newsletter - Article - "Domain Names" - March, 1998
• Mergers and Acquisitions in Canada - Article - "Doing the Deal - Intellectual Property Law", Volume 9, Issue 2 - February, 1997
• AIPPI Canada - REFLEXIONS Publication - Article on "Practical International Trade-mark Considerations" - November 26, 1996
• EPIC - Toronto - Intellectual Property - Exploiting Your Technology, Paper on "Trade-marks: When You've Got The Game, You'll Need a Name" - November 13, 1996
• American Conference Institute - New York - Licensing Intellectual Property, Paper on "Trademark, Patent, Trade Secret and Technology Licensing" - November 7th and 8th, 1996
• American Conference Institute - New York - International Intellectual Property, Paper on "Recent Developments in Canadian Intellectual Property Law" - October 17th and 18th, 1996
• Co-author of Chapter entitled, "Intellectual Property and the NAFTA: The Canadian Perspective" with Patrick Shea - for the text entitled, How to Profit Under the NAFTA
• Contributor to the INTA "The Parallel Imports and Gray Market Goods Case List: United States and Canada " Compiled and Edited by Mark S. Sommers
• Author of Chapter entitled, "Intellectual Property: The Next Global Currency" with Leslie Dunlop - for the text entitled, The New Role of Intellectual Property in Commercial Transactions - Developing Trends in the Valuation, Exploitation and Protection of Intellectual Property, Melvin Simensky, Lanning G. Bryer, Concettina Sacheli, Editors, published by John Wiley & Sons, Inc. in New York and of the supplement
• Trade-mark Licensing in Canada : "Abandoning the Registered User Requirement in Favour of Quality Control", Canadian Intellectual Property
• Review, Volume 10, #2, October, 1993, co-authored with Christopher Erickson
• "Intellectual Property in Secured Transactions", Canadian Intellectual Property Review, Vol. 8, Dec., 1991