Michelle Nelles

Michelle Nelles

Counsel
Toronto: 416.865.7979
Fax 416.865.7380

Education

LLB/MBA, 1993
Osgoode Hall Law School and Schulich School of Business, York University
BSc (Chemistry and Zoology), 1989
University of Manitoba

Bar Admissions

Ontario, 1995

Overview

Michelle Nelles is a senior intellectual property lawyer whose practice focuses on all aspects of trademarks law. Her specific expertise includes managing large trademark portfolios, providing clearance opinions, and oppositions and enforcement. For many years, Michelle has advised and represented multinational and domestic clients on trademark, patent, industrial design and copyright matters, with a particular focus on the consumer goods, food, clothing, chemical, pharmaceutical and financial services industries.

Michelle provides strategic management of trademark portfolios of large international and domestic clients, including working closely with in-house counsel to coordinate a cost-effective prosecution, enforcement and opposition strategy. In addition, Michelle manages the international foreign trademark portfolios of many large domestic companies.

Michelle has many years of experience providing clearance opinions and managing trademark prosecution across various industries. She acts as counsel in numerous trademark opposition matters on behalf of clients, including preparing evidence and conducting cross-examinations and oral hearings; providing strategic enforcement advice on trademark and patent portfolios, including developing cease and desist strategies and negotiating desirable settlements with third parties; as well as acting for plaintiffs and defendants in various patent, trademark and copyright disputes in a wide range of areas (for example, consumer products, fabrics, fashion designs, medicated animal feeds, appearance of pharmaceutical tablets, food-related process patents and the estate rights of a famous artist).

In addition, Michelle provides strategic advice to clients pertaining to a wide variety of domain name issues, as well as initiating and responding to domain name dispute proceedings, including ICANN’s Uniform Domain-Name Dispute-Resolution Policy (UDRP), the CIRA Domain Name Dispute Resolution Policy (CDRP) and the Rapid Evaluation Service (RES).

Michelle works closely with in-house counsel to develop best practices and training materials to assist her clients’ businesses in the intellectual property area. She is also involved in reviewing marketing and advertising materials to advise on compliance with trademark laws and various regulatory regimes.

Michelle is a registered Canadian patent and trademark agent.

Insights

Professional Involvement

Michelle has lectured on aspects of patent law at the Faculty of Law and Faculty of Applied Science and Engineering at the University of Toronto, as well as at Osgoode Hall Law School, and at York University in Toronto for their LLM Course. She has spoken on various aspects of intellectual property law, including trademarks.

Memberships and Affiliations

  • International Trademark Association (INTA), Parallel Imports Committee
  • Intellectual Property Institute of Canada (IPIC), International Trade-mark Issues Committee