Catherine M. Dennis Brooks

Partner | Toronto

416.595.8567

Portrait of Catherine M.  Dennis Brooks

Overview

Catherine Dennis Brooks is a Partner and Registered Canadian Trademark Agent with a practice in intellectual property law and marketing and advertising law. She specializes in all aspects of trademark and copyright law.

Catherine assists clients in managing their domestic and international trademark portfolios through clearance and prosecution, licensing, opposition and cancellation proceedings, and enforcement strategy. She also has considerable experience in transactional work involving intellectual property and the commercialization of intellectual property through licensing, distribution, and  development agreements.

Catherine advises major marketers representing a wide variety of goods and services with regard to their advertising, promotions, contests, packaging, and labelling. Her practice includes advice on sponsorship agreements, Canada’s anti-spam law (CASL), privacy, consumer protection and performance claims.

Catherine is an active member of numerous professional organizations relating to intellectual property law, as well as marketing and advertising law. She is a past Chair of the Licensing Committee of the Intellectual Property Institute of Canada (“IPIC”), a member of the IPIC Trademark Practice Committee, a member of the Public Information Committee of the International Trademark Association (“INTA”) Bulletin Committee, and a member of the Trademark and Marketing Practices Committees of the Canadian Bar Association.

Professional achievements & leadership

  • The Best Lawyers in Canada - Privacy and Data Security Law, 2019 - 2024
  • International Trademark Association ("INTA") Committee member, 2002 - Present
  • Ranked as one of Canada's Leading Trademark Professionals in World Trademark Review 1000: The World’s Leading Trademark Professionals, 2012 - 2024
  • Expert Guides: Guide to the World’s Leading Women in Business Law, 2014 - 2019
  • Past Chair, Intellectual Property Institute of Canada ("IPIC") Licensing Committee
  • Registered Canadian Trademark Agent, 2000

Thought leadership

Presentations
  • Speaker, "Everything You Need to Know to Prepare for June 17, 2019 - The In-Force Date of Canada's New Trademark Regime", Miller Thomson Waterloo Trademark Law Seminar, April 2019
  • Speaker, Global Advertising Lawyers Alliance ("GALA") Client Seminar, "Thinking About Intellectual Property Rights in Social Media Marketing and Other Global Campaigns", March 2019
  • Speaker, Ontario Bar Association Marketing and Advertising Seminar, “Making the Most of User-Generated Content”, October 2017
  • Speaker, MT Corporate Counsel CPD Webminar on IP Due Diligence in Corporate Transactions, September 2017
  • Speaker, MT Corporate Counsel CPD webinar on the amendments to the Canadian Trademarks Act, September 21, 2016
  • Speaker, On May 2, 2016 (Toronto), May 11, 2016 (Waterloo) – MT One-Stop Marketing and Advertising Law Workshop – “Canadian Trademarks Act Amendments”
  • Speaker, MT Morning Recess – “Official Mark Protection for School Boards – The Better Way to Trademark”; April 21, 2016
  • Speaker, North American Food and Agriculture Symposium – “Building Brand Equity for Food and Agricultural Products”; March 18, 2016
  • Speaker, Recent Trends in Global Brand Protection Strategy and Management, 2015 Chief IP Counsel Exchange, September 2015
  • Speaker, Compliance Officers’ Network Meeting, Marketing Materials: A Discussion on Trademark & Copyright Legislation and Essentials for CCOs, Portfolio Management Association of Canada, April 2015
  • Panel Participant, Intellectual Property Institute of Canada Annual Meeting, Licensing Trends and Issues in the Fashion Industry, Vancouver, British Columbia, October 2012
  • Panel Participant, Intellectual Property Institute of Canada Webinar on Trade-mark Licensing, Toronto, Ontario, April 2012
  • Panel Participant, Ontario Bar Association-New York Bar Association Legal Summit, “Marketing in Cyberspace: Legal Protection in an Age of Social Media”, Toronto, Ontario, March 2012
  • Table Topic Presenter, International Trademark Association, May 2010 and 2011
Publications
  • "The Date is Set - Canada's New Trademark Laws Take Effect on June 17, 2019: What You Can Do now to Prepare", Co-author with David Schnurr, Miller Thomson Intellectual Property (IP) and Information Technology (IT) Law Practice Group Alert, November 22, 2018
  • “Canada's Proposed New Trademark Regulations Released for Comment”, Miller Thomson Intellectual Property (IP) and Information Technology  (IT) Law Practice Group Alert, June 22, 2017
  • Authored the Canadian Chapter in The International Comparative Legal Guide to Intellectual Property, published by Global Legal Group Ltd., London, Global Legal Group Ltd., 2015 to 2019
  • “Draft Regulations Relating to Signage in Quebec and French Language”, Miller Thomson Intellectual Property (IP) and Information Technology (IT) Law Practice Group Alert, May 12, 2016
  • “Significant Changes to Canada’s Trademark Regime: What you Need to Know”, Miller Thomson Intellectual Property (IP) and Information Technology (IT) Law Practice Group Alert, October 26, 2015
  • “Registered Trademarks on Signage in the Province of Quebec”, International Trademark Association Bulletin, 2015
  • “Federal Court of Canada Rules on Availability of Trademark and Copyright Protection for Metatags”, International Trademark Association Bulletin, 2015
  • Intellectual Property Forum contributor of articles in the “Current Developments – Canada” section, Journal of The Intellectual Property Society of Australia and New Zealand Inc., 2004 to present
  • Canadian Trademark Act Regulations Published for Consultation”, International Trademark Association Bulletin, 2014
  • “Royal Assent to Changes in the Canadian Trademarks Act has Significant Implications for Brand Owners”, Miller Thomson Intellectual Property (IP) and Information Technology (IT) Law Practice Group Alert, June 23, 2014
  • “The Good, the Bad, and the Ugly: The Proposed Amendments to the Trade-Marks Act”, Miller Thomson Intellectual Property (IP) and Information Technology (IT) Law Practice Group Alert, April 9, 2014
  • “Federal Court of Canada Upholds Decision Refusing FLIP-TOP Application for Lack of Distinctiveness”, International Trademark Association Bulletin, 2014
  • “MGM Shows Lion-like Persistence in Protecting Roar”, International Trademark Association Bulletin, 2013
  • “No-name Package Causes Confusion in the Dark”, International Trademark Association Bulletin, 2012
  • “Read It and Weep!” – Is Restaurant Calorie Disclosure an Effective Behaviour Modification Tool?, 2012
  • “Lion’s Roar Caged! Certain Sounds Can Now Be Trade-marked”, 2012
  • “.XXX Domain Opt-Out Period Ends”, 2011
  • “Trade-mark Confusion Analysis and First-to-Use v. First-to-File Clarified by Supreme Court of Canada”, 2011

Professional memberships

  • International Trademark Association
  • Intellectual Property Institute of Canada
  • Canadian Bar Association
  • Licensing Executives Society
  • Ontario Bar Association

Bar admissions & education

  • Ontario, 1992
  • LL.B., University of Toronto, 1990
  • B.A. (Economics and Political Science), Western University, King’s University College, 1987