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Robert (Rob) D. McDonald K.C.

Counsel
Trademark Agent
About

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. He also advises on video games and interactive entertainment, athlete sponsorship agreements, artificial intelligence, IT service and outsourcing agreements, and other technologies.

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, IP ownership disputes, royalty and licensing 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, artificial intelligence, 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 NRC-IRAP Legal Assist Program, designed to provide IP advisory services and assistance to start-ups and technology companies and promote innovation in Canada, and he is passionate about helping entrepreneurs and startups grow their emerging businesses.

Rob's expertise in Intellectual Property law is highly recognized. 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. His recent work representing Enviro-Pro Geosynthetics Ltd. in a patent infringement lawsuit has been recognized by Thomson Reuters as a precedent case. Clients benefit from Rob's extensive knowledge of Intellectual Property law and consistent ability to deliver desirable outcomes.

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 and was recently awarded the 2024 Pringle/Royal Sessional Teaching Excellence Award for his contributions as an educator and mentor over several decades. 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.

Bar admissions / Professional QualificationsAlberta, 1989

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, et al, v. Enviro-Pro Geosynthetics, Ltd. 2019 FC 277, and upheld on appeal to the Federal Court of Appeal 
  • Represented a global coffee company on the enforcement of their iconic brand throughout Canada, including providing strategic advice on Bill 96, the French Language legislation in Quebec
  • Represented a fantasy sports betting company involving discussions with the National Basketball Players Association regarding licensing of player names, images and likenesses
  • Represented a US based oil and gas services company in relation to a downhole tool patent infringement dispute and due diligence relating to the potential acquisition of a competitor in Canada
  • Represented a First Nations business in a dispute with software developer regarding use and ownership of proprietary source code
  • Represented an athletic clothing company in a dispute over the brand name of a yoga pant
  • Represented the owner of a US based carbon credit trading company in a shareholder dispute and cross border litigation involving injunctive relief against former employees and fiduciaries misappropriating intellectual property
  • Represented a Canadian software company in a dispute with a US company over the misappropriation of intellectual property rights in area of procurement
  • Represented a major satellite and streaming entertainment company in relation to a broad range of their intellectual property needs including brand protection and enforcement and setting up a new online news service
  • Represented a Canadian engineering and prototype design firm in an international arbitration dispute involving patented oilfield technology
  • Represented a global pet food corporation on intellectual property litigation issues, trademarks and branding strategy, protection, prosecution and enforcement, and misleading advertising matters
  • Represented a global entertainment company in the protection and enforcement of copyright and trademarks in Canada including seizure of counterfeit goods and character costumes
  • Represented a Canadian aviation company in relation to licensing and enforcement of patents and technology in the field of aeronautics and location tracking
  • Represented a Canadian company involving the patent infringement of an oil extraction device
  • 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
  • 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
  • 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
  • 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
  • Reviewed licensing agreements and provided intellectual property advice for a Saskatchewan based agri-science corporation and genetic engineering company
Languages
  • English
Education
  • LL.B., University of Alberta, 1988

Seminars

  • Presenter, "Intellectual Property Legal Strategies for Startups," Alberta Women Entrepreneurs, Digital Law and Innovation Society and the River City Venture Clinic, January, 2024

Teaching

  • Sessional instructor, IP Law Course at the University of Alberta Faculty of Law (since 1990)
  • Legal Education Society of Alberta Intensive Trial Advocacy Course
  • Osgood Hall Masters of Law Program
  • 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
  • Former Instructor, McGill University and IPIC Intensive Trademarks Course

Memberships and Appointments

  • International Trademark Association
  • Intellectual Property Institute of Canada (Fellow) 
  • Licensing Executives Society 
  • Business, Law and Technology Forum (Co-founder)
  • Former member of Board of Directors, Alberta Science and Technology Leadership Foundation (ASTech)

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