Donna White

Managing Partner, Ottawa Office, Osler, Hoskin and Harcourt LLP

Acknowledged legal expert in trade mark law, licensing, enforcement and product labelling.

Media

Ottawa's top female lawyers

Ottawa Life, January 20, 2017Online

URL: https://issuu.com/ottawalifers/docs/janfeb2017_final_web

They are successful women in a still largely male dominated legal profession, in Canada. Through their work and by example, they have raised the bar for all lawyers and have proven that their area of expertise, over decades, is inspirational.

Trademarks: Trolls at the gate

Lexpert, October 3, 2016Online

URL: http://www.lexpert.ca/article/trademarks-trolls-at-the-gate/

Although Stephen Harper’s contribution to Canadian trademark law will most definitively live on, the advent of trademark trolls may be his most enduring legacy. Under Harper, the Conservative government introduced sweeping changes to the legislation and regulations governing trademarks.

Privilege for patent and trademark agents now in force in Canada (co-author)

Osler Update, June 24, 2016Online

URL: https://www.osler.com/en/resources/regulations/2016/privilege-for-patent-and-trademark-agents-now-in-f

By virtue of amendments to the Canadian Patent Act and Trademarks Act introduced in Bill C-59 (An Act to implement certain provisions of the budget tabled in Parliament on April 21, 2015 and other measures), which received royal assent on June 23, 2015, statutory privilege between Canadian patent and trademark agents and their clients comes into force as of June 24, 2016.

File early and watch closely as Canada’s IP rules change

Canadian Lawyer Magazine online, April 27, 2015Online

URL: http://canadianlawyermag.com/5562/File-early-and-watch-closely-as-Canada-s-IP-rules-change.html

Far-reaching changes to Canada’s intellectual property laws will force companies to keep an eagle eye on their trademark and patent applications, watching deadlines and actions by their competitors, filing before the new rules bite, and getting ready for a heftier bill.

Federal Budget Proposes Statutory Privilege for Canadian Intellectual Property Agents (co-author)

Osler Update, April 23, 2015Online

URL: https://www.osler.com/en/resources/regulations/2015/federal-budget-proposes-statutory-privilege-for-ca

On April 21, 2015, the Government of Canada, through the Honourable Joe Oliver, Minister of Finance, tabled Canada’s federal budget for 2015 (Budget 2015). As part of Budget 2015, the government plans to modernize Canada’s intellectual property framework by proposing amendments to the Patent Act, Trade-marks Act and Industrial Design Act to create a statutory privilege for confidential communications between intellectual property agents and their clients.

The trouble with trade-mark: Rule changes spark worry

The Globe and Mail online, November 20, 2014Online

URL: http://www.theglobeandmail.com/report-on-business/industry-news/marketing/the-trouble-with-trademark-rule-changes-spark-worry/article21682397/?cmpid=rss1&click=sf_rob

Critics of changes to Canadian trademark law are asking the federal government to consider regulations that could soften the blow that businesses are anticipating from added costs. The amendments to Canada’s Trademarks Act were included in the omnibus budget bill, C-31, introduced in March. The bill received royal assent in June, but will not be declared in force until the regulations are finalized, likely late next year or early in 2016.

Government Introduces Proposed Anti-Counterfeiting Legislation to Strengthen Rights of Copyright and Trade-mark Owners (co-author)

Osler Update, March 5, 2013Online

URL: https://www.osler.com/en/resources/regulations/2013/government-introduces-proposed-anti-counterfeiting-en

On March 1, 2013, the Canadian Government introduced Bill C-56, Combating Counterfeit Products Act. The passage of Bill C-56 would result in amendments to the Copyright Act and Trade-marks Act designed to strengthen the rights of copyright and trade-mark owners in Canada.
The proposed legislation aims to protect public safety and health by curtailing the importation of and trade in counterfeit goods in Canada. The Government has sought to address the growing problem of counterfeit branded goods (often referred to as “knock-offs”) and pirated copyright-protected works by granting increased powers to the Canada Border Services Agency (CBSA) and through the introduction of new enforcement measures for rights holders.

Applications to Register Sound Marks Now Accepted by the Canadian Trade-marks Office (co-author)

Osler Update, March 28, 2012Online

URL: https://www.osler.com/en/resources/regulations/2012/applications-to-register-sound-marks-now-accepted

On March 28, 2012, the Canadian Intellectual Property Office (CIPO) published a Practice Notice entitled “Trade-mark Consisting of a Sound” which provides that, effective immediately, CIPO will accept applications for the registration of sound marks.

Biography

Donna White is one of Canada’s leading lawyers in all aspects of trade mark law. She represents global brands, celebrities, fashion designers, and entertainers, and advises on registration, protection, and enforcement of their trademarks in the domestic and international market. White is also an editorial board member of Internet Law + Business and author and speaker on trade mark protection matters.

Recognition/Reconnaissance

Recognized as a leading IP lawyer in | Professional

• Chambers Global: The World’s Leading Lawyers for Business, 2015-2017 and Chambers Canada: Canada’s Leading Lawyers for Business, 2016-2017
• The Canadian Legal Lexpert Directory, 2014-2017, Repeatedly Recommended in the area of Intellectual Property
• The Best Lawyers in Canada, 2016-2017, recognized in the area of Intellectual Property Law
• WTR 1000 – The World’s Leading Trademark Professionals, 2011-2017: Prosecution and Strategy (gold band)

Other notable industry rankings in Managing Intellectual Property 2014-2017:
• Who’s Who Legal 2017: Trademarks
• Expert Guides: Women in Business Law 2014-2016: Trade Mark
• Managing IP 2015-2017: IP Star in the areas of trade mark; trade mark enforcement and litigation; trade mark prosecution; trade mark strategy and counselling

Additional Titles and Affiliations

• Canadian Bar Association, Committee Member
• Intellectual Property Institute of Canada, Committee Member
• International Trademark Association
• Registered Trade-mark Agent
• Former member of Trademarks Examination Board

Past Talks

Catching up with Practice Notices

Intellectual Property Institute of Canada (IPIC) Annual General Meeting

Presenter, September 1, 2010

Advanced Opposition Evidence

Intellectual Property Institute of Canada Annual General Meeting

Presenter, September 1, 2009

Securitization and Collateralization of Brands

International Trade-mark Association Annual Meeting

Presenter, May 1, 2009

Expertise

  • Intellectual Property
  • Trademark Law
  • Internet and domain name issues
  • Trade mark enforcement
  • Product labelling
  • Trade mark protection
  • Law firm management
  • Law firm leadership

Education/Éducation

  • University of Ottawa: LL.M.
  • University of Ottawa: LL.B
  • Carleton University: B.A.