R. Nelson Godfrey Partner Patent Agent, Trademark Agent; Head of Vancouver IP Litigation Department


Speaks:  English

Year of Call: 2015 - Alberta

Year of Call: 2013 - British Columbia

Primary phone: +1 604-891-2799

Fax: +1 604-683-3558

Email: nelson.godfrey@gowlingwlg.com

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Primary office:  Vancouver




R. Nelson Godfrey

Nelson Godfrey is a partner and the head of the IP Litigation department of Gowling WLG's Vancouver office.

Nelson is an intellectual property lawyer and strategic adviser for domestic and international clients operating in a wide range of industries, including computer hardware and software, manufacturing and fabrication, clothing and retail consumer products, entertainment, and alcoholic beverages.

Recognized as a leading intellectual property lawyer by Managing Intellectual Property, Legal 500, Lexpert, Euromoney, and Best Lawyers in Canada, Nelson has particular experience in contentious disputes in all areas of IP law, including patents, trademarks, copyright, designs and trade secrets. In the past year, Nelson has advised clients on matters including:

  • Patent infringement and invalidity proceedings in the Federal Court of Canada and Federal Court of Appeal;
  • Copyright infringement and software license compliance matters in the Federal Court of Canada;
  • Breach of confidence and breach of contract matters in the Supreme Court of British Columbia; and
  • Contentious trademark matters including trademark expungement proceedings in the Federal Court of Canada, anti-counterfeiting and trademark infringement proceedings in the Federal Court of Canada, trademark opposition and summary expungement proceedings before the Trademarks Opposition Board (TMOB), and domain dispute proceedings through the Canadian International Internet Dispute Resolution Centre (CIIDRC).

Nelson is also an experienced trademark procurement professional, assisting clients with clearing, protecting, and enforcing their brands in the Canadian market, as well as managing trademark portfolios for Canadian and international clients. In that capacity, he has managed the Canadian trademark portfolios for some of the world's most recognizable brands. He also advises clients on contractual, ownership, privacy, and other legal considerations associated with the development, transfer, and commercialization of technology and intellectual property assets in various fields.

Nelson has been involved in several initiatives related to recent changes to Canada's Trademarks Act and ongoing changes to Trademarks Office practice, including as a member of a recently constituted Advisory Committee that advises the president of the Trademarks Opposition Board on matters related to TMOB practice and procedures.

Nelson regularly volunteers on a pro bono basis with Artists' Legal Outreach and Access Pro Bono, in ethics roles with the Human Research Ethics Board (HREB) of the University of Victoria and the Clinical Research Ethics Board (CREB) of the Vancouver Health Authority, and in a privacy role with the British Columbia Privacy Research Advisory Group (PRAG).

Nelson spends time sparring outside of the courtroom as well, having many years of experience in several disciplines of fencing.

Career & Recognition

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Representative Work

Nelson has litigated cases across the entire spectrum of intellectual property law. References to representative cases and decisions follow below.

Patent

  • dTechs EPM Ltd. v. BC Hydro et al. (Fed. Ct. T-227-17) (Fed. Ct. App. A-121-21): patent infringement case involving theft detection in electricity grids (counsel for BC Hydro). Fed Ct. found patent not infringed, invalid: 2021 FC 190

  • Farmobile LLC v. Farmers Edge Inc. (Fed. Ct. T-449-17): patent infringement case involving farm data collection and processing technology (counsel for Farmobile)

  • Western Oilfield Equipment Rentals Ltd. v. M-I LLC (Fed. Ct. T-1056-15) (Fed. Ct. App. A-481-19): patent infringement case involving shale shakers (counsel for Western)

  • Zainul Ebrahim v. James Brownlee (BC Sup. Ct. S-208582): patent ownership and license case involving patents for diaper technology (counsel for Ebrahim)

Copyright & Industrial Design

  • Autoscan GmbH et al. v. 5121175 Manitoba Ltd. dba DCC Hail (Fed. Ct. T-359-20): copyright infringement case involving dent detection software (counsel for DCC Hail)

  • Trimble Solutions Corporation et al v. Quantum Dynamics Inc. et al (Fed. Ct. T-885-19): copyright infringement case involving building information modeling software (counsel for Trimble). Default judgment granted: 2021 FC 63

  • Hexagon Manufacturing Intelligence Canada Limited v. Kobay Enstel Limited et al. (Fed. Ct. T-1119-19): copyright infringement case involving sheet metal forming software (counsel for Hexagon)

  • Pyrrha Design Inc. v. Plum and Posey Inc. et al (Fed. Ct. T-2022-13) (Fed. Ct. App. A-98-19): copyright infringement case involving copyright in jewellery designs (counsel for Pyrrha)

  • MBurger, LLC v. Browns Social House Ltd. (Fed. Ct. T-129-19) : copyright infringement case involving Super Duper Burgers logos (counsel for MBurger)

  • 0912139 B.C. Ltd. et al. v. Rampion Enterprises Ltd. et al. (Fed. Ct. T-1476-16): copyright and industrial design infringement case involving underwear pouch designs (counsel for Plaintiffs)

  • Caracal Consulting Inc. and Caracal Enterprises LLC v. Robert Suranyi (BC Sup. Ct. S-163919): copyright infringement case involving software for parking enforcement (counsel for Suranyi)

Trademark

  • Comité interprofessionnel du vin de Champagne and Institut national de l'origine et de la qualité v. Coors Brewing Company, 2021 TMOB 78 (Fed. Ct. T-1050-21): trademark expungement case involving CHAMPAGNE OF BEERS trademarks (counsel for Coors)

  • Techno Pieux Inc. v. Techno Piles Inc. et al (Fed. Ct. T-969-21) : trademark infringement case involving TECHNO PIEUX trademarks (counsel for Techno Pieux)

  • Panago Pizza Inc. v. Panagio's Inc. (Fed. Ct. T-877-21): trademark infringement case involving PANAGO trademarks (counsel for Panago)

  • Churchill Brewing Corp. v. Prairie Baard Corp., 2021 TMOB 191: opposition involving Prairie Baard logo trademark (counsel for Prairie Baard)

  • Sonos Inc. v. Duck Distribution Inc. et al (Fed. Ct. T-151-21): trademark infringement case involving counterfeit SONOS products (counsel for Sonos)

  • Norsteel Building Systems Ltd. v. Toti Holdings Inc. (Fed. Ct. T-1180-20): expungement application proceeding involving Toti's NORSTEEL trademark (counsel for Norsteel Building Systems). Fed Ct. granted application and expunged mark: 2021 FC 927

  • International Sail and Power Academy Inc. v. International Sail and Power Association et al (Fed. Ct. T-491-19): trademark infringement case involving ISPA trademarks and copyright infringement case involving copyright in sailing manuals (counsel for the Academy)

  • Steven M. Ewing et al v. Yolks Breakfast Ltd. (Fed. Ct. T-149-19): trademark infringement and passing-off case involving YOLKS trademarks (counsel for Plaintiffs)

  • Auto One Group Limited v. Auto One Vancouver Motor Ltd. et al (Fed. Ct. T-1034-20): trademark infringement of the AUTO ONE trademark (counsel for Auto One Group)

  • Nail Cartel Inc. v. Ugly Duckling Nails Inc. et al (BC Sup. Ct. S1610681) : trademark infringement, copyright infringement, and passing-off case (counsel for Nail Cartel)

  • Aird & Berlis LLP v Mark Anthony Group Inc., 2020 TMOB 47: trademark expungement case involving SCREW trademark (counsel for Mark Anthony)

  • Anenda Systems Inc. v EasyTrim Reveals Inc., 2020 TMOB 96: trademark opposition case involving design trademarks for trim reveals (counsel for Anenda)

  • Alibaba Group Holding Limited v Ilze Kaulins-Plaskacz, 2019 TMOB 90, 2018 TMOB 104, 2018 TMOB 105: trademark opposition and expungement cases involving ALIBABA trademarks (counsel for Alibaba)

Other

  • Keezio Group, LLC v. The Shrunks' Family Toy Company Inc. and David Cirjak (BC Sup. Ct. S-1914059): case involving defamation and economic torts involving alleged false statements regarding Defendants' alleged IP rights (counsel for Keezio)

  • 612431 B.C. Ltd. dba Maple Leaf Powder Company v. Summit Lift Company Ltd. et al (BC Sup. Ct. S-194467): trade secret and confidential information and copyright infringement case involving avalanche gun designs (counsel for Summit Lift)