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About Us

Keri Johnston

kjohnston@jawiplaw.com

In 1999 Keri A. F. Johnston established a boutique firm, specializing in all aspects of intellectual property law.  Following the arrival of Michelle Wassenaar as a partner, the law firm Johnston Wassenaar LLP was formed in 2004.  Ms. Johnston represents a broad range of clients including multi-national, Canadian and foreign companies; non-governmental organizations; government organizations; not-for-profit, and individual intellectual property stake-holders.

Ms. Johnston received her Juris Doctor from Osgoode Hall Law School in 1994, and was called to the Ontario Bar in 1996 as a Barrister and Solicitor.  Ms. Johnston is also a Registered Trade-mark Agent in Canada.  Since being called, Ms. Johnston has represented parties in contentious multi-jurisdictional issues (patents, trade-marks, passing off, copyright, anti-counterfeiting, contractual IP rights); and managed international and national IP portfolios on behalf of Canadian and foreign clients. Most recently she successfully represented the Garbo Group in Harriet Brown & Company Inc. v. Garbo Group Inc., (2009) 74 C.P.R. (4th) 391 (T.M.O.B.), in which the Opposition Board distinguished previous decisions of both the Opposition Board and The Federal Court of Canada.

Ms. Johnston is committed to serving the local, national and international community with ongoing pro bono legal services representing among others BOOST (formerly the Toronto Child Abuse Centre); EQUITAS – International Centre for Human Rights Education; and Canadian Foundation for AIDS Research. From 2000 to 2004, she served as a Board Member of BOOST, and in 2006 Ms. Johnston received the BOOST “Making a Difference” award for commitment to the well being of children and youth.  In 2009, Ms. Johnston was appointed the Inaugural Chair of The Boost For Kids Foundation at the request of the Board of BOOST.

Ms. Johnston is active writing and serving the legal profession internationally and nationally on matters relating to intellectual property law.  Ms. Johnston’s recent professional involvement includes the following:

Professional Committee Work

  • Canadian Bar Association – National Intellectual Property Section (September, 2008 - present; Chair of the CBA IP Court Practice Committee from September, 2011 - present)

  • ECTA Anti-Counterfeiting Committee - Leader of the Working Group on ACTA and Member of the Working Group on Dangerous Counterfeits (April, 2009 – April, 2013)

  • MARQUES Geographical Indications Team (March, 2007 – present; Vice Chair from February, 2010 to February, 2013)

  • Women Lawyers Alliance - Member of the Advisory Board (November, 2010 - December, 2011)

  • WIPO Working Group on the Development of the Lisbon System, Appellations of Origin, NGO Observer on behalf of MARQUES (March 17 – 20, 2009; August 30 - September 3, 2010; May 23 - 24, 2011 and December 12 - 13, 2011 in Geneva, Switzerland)

  • INTA - Annual Meeting 2012 Project Team, member of the programs committee for the INTA 2012 meeting to be held in Washington, D.C.

  • INTA - Related Rights Committee, Geographical Indications Subcommittee (January, 2010 – present)

  • INTA - Leadership 2010 Project Team, member of the planning committee, responsible for the discussion on Anti-Counterfeiting (September, 2009 – November, 2010 for Leadership Meeting that was held in Phoenix, Arizona)

  • INTA North America Subcommittee – Geographical Indications (2006 – 2009)

  • INTA Amicus Brief Committee (2002 - 2005)

Ms. Johnston acted as an advisor to the INTA Board and President on three trade-mark cases that were heard by the Supreme Court of Canada during her tenure, namely: Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée, 2006 SCC 23 and Mattel, Inc. v. 3894207 Canada Inc., 2006 SCC 22 (both cases concerning famous trade-marks); and Kirkbi AG v. Ritvik Holdings Inc., 2005 SCC 65 (concerning the overlap between trade-marks and functionality).  With respect to the Kirkbi AG case, Ms. Johnston drafted and filed materials on behalf of INTA seeking intervener status (2003 – 2005).

Speaking Engagements

  • Baveno, Italy - MARQUES Annual Meeting - Moderated presentation entitled "Reality Bites – Enjoy a Smörgåsbord of Routes to Protection of GIs" (September 15, 2011)

  • Toronto, Ontario – Chaired INTA Roundtable on Dilution Post Veuve Clicquot (May 27, 2011)

  • Madrid, Spain - MARQUES Leadership Meeting - ACTA Workshop (February 24, 2011)

  • Phoenix, Arizona - INTA Leadership Meeting - Presentation entitled "Criminal Minds: Anti-Counterfeiting Strategies for Law and Order" (November 13, 2010)

  • Porto, Portugal – ECTA Council Meeting – Presentation to Anti-Counterfeiting Committee on Recent Development on ACTA (October 29 – 31, 2009)

  • Vancouver, B.C. – Chaired INTA Roundtable on Geographical Indications across Canada (September 4, 2008)

  • Ottawa, Ontario – Chaired INTA Roundtable on Geographical Indications across Canada (February 8, 2008)

  • Toronto, Ontario – Chaired INTA Roundtable on Geographical Indications across Canada (March, 30, 2007)

Publications

July, 2011

Canadian Chapter, Getting the Deal Through - Copyright - to view the article click here

October 25, 2010

"Finalising the Anti-Counterfeiting Trade Agreement (ACTA): ECTA Comments", ECTA Press Release - to view the press release click here

August, 2010

Canadian Chapter, Getting the Deal Through - Copyright - to view the article click here

May, 2010

“Hauling in the Middlemen: Contributory Trade Mark Infringement in North America”, The Journal of Intellectual Property Law & Practice; Volume 5, No. 5; co-authored with Andrea Long of Johnston Wassenaar LLP, James Bikoff and Philip Marano of Silverberg Goldman & Bikoff, LLP - to view the article click here

2009

“Expansion of the Champagne Region”, MARQUES Quarterly Newsletter, Issue 01; co-authored with student-at-law Alpesh Patel of Johnston Wassenaar LLP - to view the article click here

November, 2008

Canadian Perspective on “Global Guide to Geographical Indications”, Managing Intellectual Property

October 23, 2008

Drafted submissions to the Canadian Intellectual Property Office on proposed changes to Opposition Proceedings on behalf of the Canadian Bar Association – National Intellectual Property Section Trade-marks Committee - to view the document click here

Professional Memberships

  • International Trademark Association

  • European Communities Trade Mark Association

  • MARQUES – The Association of European Trade Mark Owners

  • Fédération Internationale des Conseils en Propriété Industrielle

  • Association Internationale pour la Protection de la Propriété Intellectuelle

  • Organization for an International Geographical Indications Network

  • Licensing Executives Society

  • Pharmaceutical Trade Marks Group

  • Women Lawyer’s Alliance

  • American Intellectual Property Law Association

  • American Bar Association

  • Canadian Bar Association

  • Intellectual Property Institute of Canada

  • Canadian Anti-Counterfeiting Network

  • Toronto Lawyers Association

  • Toronto Intellectual Property Group

  • Women’s Law Association of Ontario

  • Advocates’ Society

 

To learn more about our team please click on their links below:

Michelle L. Wassenaar
Andrea Long
Carolyn Hewitt

 

 

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