Essien Udokang is a member of the North America Intellectual Property Practice Group in Baker McKenzie's Toronto office. He is also a member of the Firm’s Luxury and Fashion Group, Technology, Media & Telecommunications Group and Consumer Goods & Retail Group.
Essien represents clients in the areas of technology, media and communications, consumer goods and retail, and financial services.
Essien advises clients on matters relating to the creation, exploitation and protection of IP rights. He has extensive trademark-related experience, assists global clients to grow and manage their worldwide trademark portfolios and represents them in oppositions and cancellation proceedings. Essien's practice includes coordinating global intellectual property enforcement and anti-counterfeiting efforts, regional and global corporate branding availability, assessing freedom to operate, drafting and negotiating trademark license agreements, and counseling clients on intellectual property aspects of major corporate transactions. Essien also participates in complex lawsuits dealing with trademark infringement, patent infringement and validity, internet issues, passing off and grey market goods.
Representative Legal Matters
- Advised global IT, social media, consumer goods, and product distribution companies on strategies for protecting and expanding their brand portfolios.
- Worked on major global product launches and marketing projects, one of which is for a world leader in the computer and digital products area and its subsequent trademark filing work.
- Managed coordination of anti-counterfeiting programs, notably for US-based global market leaders in the retail fashion field.
- Managed and assisted on numerous trademark oppositions, including oppositions protecting famous marks.
- Acted on trademark infringement actions for a large confectionary company involving grey market activity.
- Acted in commercial litigation for a European manufacturer of advanced gas coolers against one of Canada's largest auto parts manufacturers, leading to a successful settlement.
- Acted on numerous patent litigation matters between Canadian and North American pharmaceutical and biologics companies under the Patented Medicines (Notice of Compliance) Regulations.
- Acted on a complex patent impeachment action involving a large Canadian brand pharmaceutical company and a generic manufacturer.
- Acted on a complex patent infringement trial involving an international manufacturer of systems and components used in oil and gas drilling and production, which awarded our client damages of over USD 50 million.
- Acted on numerous trademark opposition proceedings for clients in the retail, technology, food and candy, financial and media spaces.
Professional Associations and Memberships
- Intellectual Property Institute of Canada – Member
- Ontario Bar Association – Member
- Canadian Bar Association – Member
- International Trademarks Association – Member, Trademarks Office Practices Committee
- Ontario~Canada (2011)
- Osgoode Hall Law School (JD) (2010)
- Canadian Memorial Chiropractic College (DC) (2000)
- Queen's University (BSc Life Sciences with Distinction) (1996)