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Sanjukta Tole

Partner

Sanjukta is a lawyer and trademark agent. She advises a variety of clients, from SMEs to Fortune 500 companies, on all facets of brand management.

She is highly experienced in the Canadian trademark prosecution process, including providing availability opinions, oppositions, cancellation proceedings, and management on international intellectual property portfolios. She also provides strategic guidance in enforcing her clients' intellectual property rights with a focus on domain name and Internet-related disputes, expungement proceedings and trademark infringement actions. On commercial transactions, Sanjukta advises on licensing agreements, IP due diligence, co-existence arrangements and technology / privacy contracts.

As an active member of the IP profession in Canada, Sanjukta is a co-author of Hughes on Trademarks (LexisNexis Butterworths) and Trademarks Act & Commentary (LexisNexis) and writes chapters in Canadian Forms & Precedents as well as the Halsburys’ Laws of Canada (Lexis) on trademarks. She recently also contributed to the introductory trademark chapter in the Canadian Trademark Law Benchbook (Westlaw Carswell). Sanjukta also participates in the Intellectual Property Institute of Canada (IPIC), the International Trademarks Association (INTA) and MARQUES, serving on various committees and teams. She was appointed to the Board of Examiners for the recently established College of Patent and Trademark Agents.

Sanjukta was the recipient of the Bereskin & Parr Prize for Patent Law, the Scotiabank Group Prize for Estates Law, and the Osgoode Hall Award for Upper Year Excellence.

Education & Credentials

Education

Osgoode Hall Law School

LL.B., 2007

University of Toronto

BSc, Human Behavioural Biology, 2004
  • High Distinction

Bar Admission

  • Ontario2008

Acknowledgements

  • WTR 1000
    "World's Leading Trademark Professionals," 2023
     Bronze, 2024
  • Best Lawyers in Canada®
    • Intellectual Property, 2022-2023
  • Who’s Who Legal
    • IP, 2024
    • Trademarks, 2023
    • Global Leader (IP) 2021-2022
    • National Leader (Canada) 2020, 2022
  • Managing Intellectual Property
    • IP Stars, 2024

Prominent Assignments

  • Handled trademark management for a renowned food product company spanning 20+ nations in Asia and Africa while also facilitating the expansion of their U.S. trademark portfolio.
  • Oversaw Canadian and Caribbean trademark matters for a client, leveraging strategic partnerships with top-tier firms.
  • Streamlined the international intellectual property portfolio for a premier furniture and mattress enterprise, optimizing global presence and protection.
  • Handled global IP management for an innovative investment firm with a unique family capital model, ensuring comprehensive coverage across diverse acquisitions.
  • Provided strategic counsel to a global online proctoring services giant, guiding brand selection, fortification, and vigilant enforcement.
  • Advised a worldwide human resource services company on brand strategy, fortification, and proactive enforcement measures.
  • Comprehensive guidance on brand selection, protection, licensing, and enforcement for a prominent manufacturer of wholesale cleaning products and hotel amenities.
  • Represented a gaming services entity on brand selection, fortification, and vigilant enforcement strategies across North America.
  • Counsel to a financial services powerhouse, ensuring global brand selection, protection, and enforcement.

Professional Involvement

  • International Trademark Association's Famous & Well-Known Mark Committee
    • Member, 2022 – 2023 
  • MARQUES
    • International Trade Mark Law and Practice Team, 2023-2025
    • Member, 2011 - Present
  • International Trademark Association (INTA)
    • Member, 2009 - Present
  • Canadian Bar Association (CBA)
    • Member, 2008 - Present
  • Intellectual Property Institute of Canada (IPIC)
    • Member, 2008 - Present
    • Member, Trademark Committee, 2021
    • Member, Continuing Professional Development Committee, 2021

Court Admissions

  • Ontario Superior Court
  • Federal Court of Canada
  • Trademark Opposition Board

Admissions

  • Canadian Trademark Agent, 2010

Publications/Presentations

Presentations 

  • Moderator, “Charting a Revolution – NFTs, Metaverse and Web3.0,” Intellectual Property Institute of Canada, September 2023
  • Speaker, "Refresher and Case Study," World Intellectual Property Organization, Practical Aspects of the Madrid System for the International Registration of Marks for Advanced Users, November 2022 
  • Moderator, "Art in Trade Marks: Bank(sy) On It!," International Federation of Intellectual Property Attorneys (FICPI) 2022 World Congress & Ex Co, September 2022 
  • Speaker, "Legal and Regulatory Virtual Seminar 2022," Direct Sellers Association, Master Class, February 2022  
  • Moderator, "IP Due Diligence in Corporate Transactions," Intellectual Property Institute of Canada, January 2022
  • Speaker, "Refresher and Case Studies: Preparing your International Applications and Post Management of International Registrations”, World Intellectual Property Organization, Second Edition: Seminar on the Practical Aspects of the Madrid System for the International Registration of Marks for Advanced Users, December 2021
  • Speaker, Welcome to Madrid: Everything You Need to Know, 35th Annual MARQUES Conference, September 2021  
  • Panel Moderator, Overcoming Objections to Trademarks, FICPI Congress, September 2020
  • Speaker, Canada’s New Trademark Regime: The Practical, Tactical Guide to Navigating the Sweeping Changes, Osgoode Professional Development, April 2019
  • Speaker, Canadian Legislative Changes, INTA Roundtable (Cleveland, Ohio), April 2019
  • Speaker, Registrability of Slogans, FICPI Congress in Toronto, June 2018
  • Instructor on Trademarks Law, Ryerson University, September 2012

Publications 

  • Author, "Are You Getting Bang for Your Buck with Canadian Trademarks?,” Dickinson Wright IP Blog, March 2024
  • Co-Author, "Canadian Intellectual Property Fees on the Rise in 2024,” Dickinson Wright IP Brief Blog, June 2023
  • Co-Author, "U.S. Marketing Materials Can and Will Be Used Against You in a Canadian Court,” All Things Canada Blog, March 2023
  • Co-Author, “Trademarks Act & Commentary, 2023 Edition,” LexisNexis Canada, March 2023
  • Co-Author, "Chapter 1: Overview of Trademark Law in Canada," Thomson Reuters, Canadian Trademark Law Benchbook, Fourth Edition, June 2022
  • Co-Author, “Recognized v. Registered Trademarks - Quebec Amends the Charter of the French Language,” Dickinson Wright Industry Alert, May 2022
  • Co-Author, "Expediting Examination: Pre-Assessment Letters," Dickinson Wright Client Alert, May 2022  
  • Co-Author, "Resetting the Clock: Changes to Canadian Trademark Regime You Need to Know About," World Trademark Review, April 2022 
  • Co-Author, "Trademarks Act & Commentary, 2022 Edition," LexisNexis, March 2022 
  • Author, "Canadian Trademarks," Dickinson Wright Client Alert, January 2022 
  • Co-Author, "The Canadian Trademarks Act: More Changes Are on the Way," World Trademark Review, October 18, 2021 
  • Canada Updates – Fast Track Examination and More, HouseMarques, May 2021
  • A Distinctively Canadian Approach to Distinctiveness, World Trademark Review, April 2021
  • Picking up the Pace? COVID-19 Exceptions to Expedite Trademark Process, World Trademark Review, December 2020
  • Lessons from a Pandemic –Impacts on Canadian Trademarks Practice, World Trademark Review, October 2020
  • Could You Be More Specific? Nice Classification in Canadian Trademark Examination, World Trademark Review, February 2020
  • Brand Protection Insights/Predictions for Canada, World Trademark Review, November 2019
  • Where is Canada with the Madrid Protocol? HouseMarques, September 2019
  • Strategies and Pitfalls with Fees under Canada’s New Trademark Regime, World Trademark Review, September 2019
  • Canada All Set to Join the Madrid Protocol, HouseMarques, March 2019
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