Lorraine M. Fleck
Lorraine M. Fleck is a Partner in WeirFoulds’ Technology and Intellectual Property Practice Group.
She is an experienced intellectual property, advertising, and privacy lawyer who applies a realistic, business-driven approach to help her clients proactively identify and manage risks, grow their enterprises, and increase profitability. She is also a registered Canadian Trademark Agent, and has been repeatedly recognized by World Trademark Review magazine as a recommended trademark expert in Canada in the fields of litigation, enforcement, prosecution (trademark applications) and strategy. Lorraine has also been recommended by her peers to Best Lawyers® in Canada for her expertise in intellectual property and advertising and marketing law. Prior to joining WeirFoulds, Lorraine was senior in-house legal counsel at a private equity owned consumer packaged goods company with international manufacturing operations, managing the company’s significant international patent and trademark portfolio in more than 120 countries, handling IP infringement matters (including counterfeit products), drafting and negotiating intellectual property license agreements and amendments, providing legal advice and support on the implementation of IP license agreements, reviewing all marketing collateral for claim substantiation, proper trademark use and IP notices, drafting IT use and privacy policies, advising on anti-spam and privacy law compliance, supporting various business units with the intellectual property and advertising law aspects of new product launches, and handling matters ancillary to her core areas of expertise that impact brand reputation, such as anti-bribery and anti-corruption, supply agreements and audits, and recalls. Lorraine also worked on COVID-19 pandemic specific matters, such as the application of essential services legislation to manufacturing operations, force majeure clauses, and advertising and marketing materials for various disinfectant products. She was part of an internal business and legal deal team in a business unit divestiture, representing the client in intellectual property and select regulatory matters. She was also the sole in-house counsel on two (2) transactions, overseeing the divestiture of three (3) trademark portfolios and associated assets, working closely with the business team.
Before working in-house, Lorraine co-founded an intellectual property boutique and then started her own firm. Both firms were ranked by Canadian Lawyer magazine, respectively in 2016 and 2018, as one of Canada’s top 10 intellectual property law firms. Lorraine’s initial legal training was at an intellectual property boutique firm.
Lorraine is active in the Toronto, Canadian and international IP communities, and uses the information and experience gained, and relationships built, from these activities so her clients can proactively manage their legal rights in Canada and abroad.
Lorraine has contributed to a number of legal publications and blogs, including the IP chapter in both editions of the LexisNexis book Social Media and Internet Law. She is a regularly invited guest speaker on her areas of practice, having presented at in person and virtual conferences in Canada, the United States, and Europe. Lorraine has been interviewed on Canadian national television about the EU KIT KAT trademark decision, and by Canadian Business magazine on trademark litigation strategy. She is currently a legal columnist for Manufacturing Automation magazine.
- Represented various Canadian and foreign clients in intellectual property license agreement negotiations
- Represented various Canadian clients in information technology software license and master service agreement negotiations
- Drafted a corporate information technology use policy in conjunction with other business department leads
- Assisted various Canadian mobile app clients with their Canadian and foreign intellectual property strategy
- Counselled foreign insurance client on compliance with Canada’s Anti-Spam Legislation (CASL)
- Advised various clients on use of IP in comparative advertising
- Advised various clients on Canadian law re acceptable environmentally friendly (“green”) product claims
- Developed social media policies for clients in various sectors
- Reviewed draft book copy for IP infringement prior to publication
- Reviewed websites for compliance with Canadian advertising, marketing and IP laws
- Reviewed a computer graphic user interface prior to deployment to assess possible copyright infringement
- Represented various clients in copyright and trademark disputes, including those spanning multiple jurisdictions and/or involving counterfeit products
- Represented a foreign client in large scale copyright enforcement program
- Advised clients on patent and trade secret protection strategy
- Represented various entities in the divesture of the KIK Personal Care division to Voyant Beauty
- Represented SolSkyn Personal Care LLC in its divestiture of the BULLFROG trademarks and associated intellectual property to a US private equity buyer
- Represented SolSkyn Personal Care LLC in its divestiture of the NO-AD and OCEAN POTION trademarks and related intellectual property to a private buyer.
2571011 Ontario Limited v Fig (Holding) SAL, 2020 TMOB 143
- Best Lawyers® in Canada 2017 – 2022 (Intellectual Property Law), 2022 (Advertising & Marketing Law)
- Recommended Expert in Canada for trademark enforcement, litigation, prosecution (trademark applications) and strategy, WTR 1000, World Trademark Review, 2016 to 2021
- IAM Strategy 300 – World’s Leading IP Strategists – Intellectual Asset Magazine (2017 – 2019)
Information Technology & E-Commerce Section Executive, Ontario Bar Association (OBA)
- Member-at-Large, September 2017 – August 2020
- Past-Chair, September 2016 – August 2017
- Chair, September 2015 – August 2016
- Vice-Chair, September 2014 – August 2015
- Member-at-Large, September 2013 – August 2014
- Secretary, September 2012 – August 2013
- Member-at-Large, September 2011 – August 2012
International Trademark Association (INTA)
- Member, Brand Restrictions Committee, January 2022 – present.
- Member and Task Force Leader, Brand Restrictions Committee, January 2020 – December 2021.
- Member and Task Group Leader, Emerging Issues Committee, Brand Restrictions Subcommittee, January 2018 – December 2019.
- Member, Emerging Issues Committee, Health Policy and Trademark Rights Subcommittee, January 2016 – December 2017.
- Member, United States & Canada Law & Practice Subcommittee, INTA Bulletin, January 2012 – December 2015.
- Member, Internet Subcommittee, Internet Governance & Contractual Relationships Subcommittee, January 2010 – December 2011.
- Member, Security Interests Subcommittee, January 2006 – December 2009.
Toronto Chapter, Licensing Executives Society (USA and Canada), Inc. (LES)
- Past Chair and Marketing Co-Chair, September 2013 – August 2014.
- Chapter Chair, September 2012 – August 2013.
- Logistics Chair, September 2011 – August 2012.
- Secretary, September 2010 – August 2011.
Intellectual Property Section Executive, Canadian Bar Association (CBA)
- Executive Member, September 2016 – present.
Called to the Bar
- Ontario (2005)
- Canadian Trademark Agent, College of Patent and Trademark Agents (CPATA), 2006
- L.L.B., Queen’s University, 2004
- M.Sc.F., University of Toronto, 2001
- B.Sc. (Honours), University of Toronto, 1997
- Ontario Bar Association
- Canadian Bar Association
- Canadian Technology Law Association
- International Trademark Association
- International Association of Privacy Professionals
- Intellectual Property Institute of Canada
- Author, An intellectual property licensing primer, Manufacturing Automation, January 18, 2022
- Author, Imitation is not always flattery: Anti-counterfeiting strategies for manufacturers, Manufacturing Automation, July 8, 2021
- Author, An intellectual property primer for manufacturers, Manufacturing Automation, March 18, 2021
- Author, What You Need to Know About Recent and Pending Changes to Canadian Intellectual Property Laws. Information Technology and Intellectual Property Section Newsletter, OBA, December 17, 2018
- Co-author, Intellectual Property. Social Media and Internet Law – Forms and Precedents, 2nd Edition, LexisNexis, May 2018
- Author, When to Apply and When to File an Action: The Pros and Cons of Commencing Trademark Litigation in Canada’s Federal Court via a Notice of Application. Landslide Vol. 9, No. 6, American Bar Association, July/August 2017.
- Author, Bypassing a Subscription Paywall Violates Technological Protection Measure Provisions in Copyright Act, Negates Fair Dealing Defence. Slaw.ca, December 2, 2015
- Author, Seven Principles to Follow When Contemplating Comparative Advertising in Canada, Slaw.ca, October 15, 2015
- Author, Federal Court of Canada Issues New Case Management Practice Notice Affecting IP Litigation. Slaw.ca, August 17, 2015.
- Author, Supreme Court of Canada Recognition of Duty of Honest Contractual Performance Impacts IP License Agreements, INTA Bulletin, Vol. 70, No. 10, June 1, 2015
- Co-author, Brand Aid – Implementation of the Combatting Counterfeit Products Act, INTA Bulletin, Vol. 70, No. 6, March 15, 2015
- Chapter co-author, Intellectual Property, Social Media and Internet Law – Forms and Precedents, LexisNexis, May 31, 2014
- Co-author, Registrations Resulting from Errors by Trade-Marks Office Cannot Be Appealed, INTA Bulletin, Vol. 69, No. 5, March 1, 2014
- Author, Bill C-56 Poised to Make Its Mark, INTA Bulletin, Vol. 68, No. 13, July 15, 2013. Roaring into a New Era: Sound Marks Now Registrable in Canada, INTA Bulletin, Vol. 67, No. 19, November 1, 2012
- Author, The Good, the Bad and the Ugly: Recent Canadian Bankruptcy Legislation Amendments and Their Impact on Intellectual Property Licensing, IP Osgoode Blog, January 19, 2010 (quoted in John T. Ramsay, Ramsay on Technology Transfer, Third Edition, 2013)
- Co-author, Canada’s Federal Court Rejects American Law of Fraud on the Trademark Office, Journal of Intellectual Property Law & Practice, Vol. 4, No. 10, August 2009
In the News:
- Interview on what can and cannot be trademarked in relation to the EU KIT KAT decision. Your Morning, CTV National News Channel, July 25, 2018, 7 a.m. newscast
- Are You Thinking About Copyright Before Posting on Social Media? Interview on Eva Chan legal marketing blog, May 30, 2018
- “What you need to know about claiming – and defending – your trademark”. Canadian Business magazine interview, November 11, 2016.