Sangeetha Punniyamoorthy

Partner

Chair, Canadian Intellectual Property and Technology Group

Trademark Agent

Exceptional", "[L]eading the next generation of practitioners with her innovative and creative approach
World Trademark Review 1000
Toronto
Trademark Agent
About

Sangeetha Punniyamoorthy practises intellectual property litigation and has over a decade of experience litigating copyright, patent, and trademark matters. She also provides strategic advice in the procurement and enforcement of global brands in a variety of industries, with a focus on pharmaceuticals.

Described as a “sharp tactician lauded for her detailed analysis, strategic mindset and ‎unrivalled expertise” (World Trademark Review 2020), Sangeetha has appeared as counsel in two appeals before the Supreme Court of Canada, as well as in matters before the Federal Court, the Ontario Court, the Trademarks Opposition Board, and the Competition Tribunal. Sangeetha has experience in all aspects of intellectual property litigation, ranging from pre-litigation opinions to appeals. In addition, she regularly works with counsel in various jurisdictions to co-ordinate the Canadian part of multi-jurisdictional lawsuits. She also has an active prosecution and opposition practice focused on global trademark portfolios. She counsels clients on brand clearance and related regulatory matters.

Sangeetha is a regular speaker, a published author, and an active member of the intellectual property community. She has been chair of the Ontario Bar Association IP-IT Section, as well as the Copyright Committee of the Intellectual Property Institute of Canada. She presently serves on the Canada Amicus committee of the International Trademarks Association, is a Global Fellow of the Federal Circuit Bar Association, and a Fellow of the Intellectual Property Institute of Canada.

Prior to obtaining her J.D. from Osgoode Hall Law School, Sangeetha obtained a B.Sc. in molecular biology from the University of Toronto, and did research in psychosomatic medicine at the Toronto General Hospital.

Bar admissionsOntario, 2004

EXPERIENCE

  • Represented Aphria Inc. (TSX: APHA and NASDAQ: APHA) in its reverse takeover of Tilray, Inc. (NASDAQ: TLRY).
  • Robertson v. Thomson Corp. (SCC File No. 30644/C38148) – representing the plaintiffs in this class action lawsuit at the Supreme Court of Canada in a successful appeal relating to substantive issues of copyright in respect of articles written by freelance authors and reproduced by newspaper publishers in electronic form.
  • Edibles Arrangements LLC v. Vaav et al (Federal Court File No. T-218-18) – representing a leading franchisor in an industrial design and trademark infringement suit against an online infringer, and successful obtaining default judgment, damages, and transfer of the domain names at issue.
  • Stargrove Entertainment Inc. v. Universal Music Canada Inc. et al. (Competition Tribunal CT-2015-09) – representing the applicant in a successful application for leave before the Competition Tribunal relating to the refusal of mechanical copyright licenses.
  • BMW Canada Inc. v. Nissan Canada Inc. (Federal Court File No. T-1395-05) – representing BMW AG and BMW Canada Inc. in a trademark infringement action relating to the trademark M in association with luxury performance vehicles. 
  • SOCAN v. Bell Canada et al (SCC File No. 33800) – representing two interveners (CanLII and Federation of Law Societies of Canada) before the Supreme Court of Canada in successfully advocating for a large and liberal interpretation of research and the analysis of the purpose of fair dealing from the perspective of the ultimate user.
  • GlaxoSmithKline SA v. Novartis Vaccines and Diagnostics Inc. (Federal Court File No. T-2113-06) – representing Novartis Vaccines in a patent impeachment action relating to their patent on adjuvant compositions and related vaccines.
  • Voltige Inc. v. Cirque X Inc. (Federal Court File No. T-830-06) – successfully defending a motion for an interlocutory injunction based on the trademark infringement allegations relating to use of AVAIA mark in association with horse shows.
  • Omniglass Ltd. v. Wojick et al. (Ont. Sup. Ct) – representing Omniglass in a trade secret lawsuit relating to pultrusion technology.
  • Creative Matters Inc. v. Korhani of Canada Inc. (Federal Court File No. T-726-11) – representing Creative Matters, the copyright owner and a leading Canadian carpet designer, in an infringement and moral rights action relating to carpet designs.
  • Diligent Corporation v. Dilitrust SAS et al (Federal Court File No. T-1775-18) – representing an international software-as-a-service company in a trademark dispute in Canada, in conjunction with multi-jurisdictional litigation.  
  • 3Genius v. Locationary Inc. et al (Ont. Sup. Ct File No. CV-14-497239) – successfully representing the defendants in a dispute relating to ownership of software and a motion to compel millions of dollars of holdback funds into Court.  
  • Richter Gedeon Vegyeszeti Gyar RT (Ont. Sup. Ct. File no. CV-312174; Federal Court File no. T-2520-93) – representing the Hungarian pharmaceutical company in a patent infringement action and a tort action against Apotex Inc.
Languages
  • English
Education
  • J.D., Osgoode Hall Law School, 2003
  • B.Sc., University of Toronto, 2000

Awards

  • Chambers Global (Intellectual Property: Litigation), 2024
  • Chambers Canada (Intellectual Property: Litigation), 2024
  • Leading Lawyer, The Legal 500 Canada (Intellectual Property), 2022-2024
  • Lexpert® ALM 500 Directory (Intellectual Property), 2024
  • Best Lawyers in Canada (Intellectual Property Law), 2019-2024
  • The Legal 500 Canada (Intellectual Property), 2018-2019, 2021-2023
  • Managing IP's Top 250 Women in IP, 2022-2023
  • IP Star (Trademark), Managing Intellectual Property, 2020-2022
  • Expert Guides: Guide to the World's Leading Women in Business Law, 2019-2021
  • Female Trailblazer Excellence Award Recipient, Canadian Law Awards, 2021
  • LMG Life Sciences Directory, Life Sciences Star in Canada, 2017, 2019-2021, 2023
  • World Intellectual Property Review, Patent and Trademark Leader, 2017-2023
  • Global Fellow, Federal Circuit Bar Association, 2019-2020
  • WTR 1000, World Trademark Review, Leading Trademark Professional (Enforcement and Litigation), 2017-2022, 2024; (Prosecution and Strategy), 2017-2022, 2024
  • Canadian Legal Lexpert Directory (Litigation: Intellectual Property), 2020-2023
  • Canadian Legal Lexpert Directory (Litigation: Intellectual Property), Lawyers to Watch, 2017, 2019, 2020
  • Lexpert Rising Stars: Leading Lawyers Under 40 in Canada, 2018
  • Expert Guides - Trade Mark, 2018
  • South Asian Bar Association Legal Excellence Award, 2017
  • Litigation Lawyers to Watch, Lexpert Guide to the Leading US/Canada Cross-Border Litigation Lawyers in Canada, 2017

Publications

Seminars

Media Mentions

  • Quoted, “Creativity in the age of AI” The Canadian Bar Association National, August 6, 2021
  • Quoted, "IP lawyers applaud launch of Ontario’s intellectual property action plan", The Lawyer's Daily, July 22, 2020
  • Quoted, "Copyright board overdue for review, say lawyers", Law Times, December 12, 2016
  • Mentioned, "Sony, Universal Curbing Competition, Budget CD Maker Says," Law360, September 2015
  • Quoted, “Stung by CBC, Lost in Court,” Blacklocks Reporter, May 4, 2015
  • Quoted, "Fair Dealing Evolves,” Law Times, February 2, 2015.

Community Involvement

  • Organizing Committee and Past Chair, Harold G. Fox IP Moot
  • Board Member, Osgoode Hall Law School Alumni Association
  • Advisory Board, Practical Law - Corporate and Commercial Transactions, Thomson Reuters
  • Advisory Board, Canadian Tamil Professionals Association
  • Director, National Inventors Hall of Fame Canada, 2019-2021
  • Director, Girls Inc. of York Region, 2011-2016

Memberships And Affiliations

  • Member, Federal Circuit Bar Association
  • Member, ChIPs
  • Past Chair, Information Technology and Intellectual Property Law Section Executive, Ontario Bar Association
  • Past Chair, Copyright Policy Committee, Intellectual Property Institute of Canada (IPIC)
  • Fellow, Intellectual Property Institute of Canada
  • Member, International Trademarks Association (Canada Amicus Committee)
  • Member, American Bar Association
  • Intellectual Property Executive (Ontario Representative), Canadian Bar Association
  • Member, Pharmaceutical Trademark Group (PTMG)
  • Editorial Board Member, Intellectual Property Journal, Federated Press, 2008-2015

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