Wilson Lue LLP Patent & Trademark Agents, Intellectual Property Counsel

Henry Lue

Henry is one of the leading trademark lawyers in Canada, and has practised exclusively in trademark agency and litigation for more than twenty years. His clients include multinationals and top Canadian trademark filers who own some of the most recognizable brands in North America and worldwide.

Henry provides strategic advice in trademark protection and enforcement, and assists companies in management of their global trademark portfolios. He has been counsel in the Federal and Ontario Courts, and before the Trademarks Opposition Board in a variety of intellectual property matters. He has also been counsel in the Supreme Court of Canada in cases concerning fundamental trademark law issues.

Henry has written articles and given talks on a variety of trademark topics, including trademark functionality, grey market and counterfeit goods, trademark infringement, and trademark prosecution. He has been recognized in the World Trademark Review’s WTR 1000 Guide as a lawyer who is “extremely responsive, practical and commercially oriented, with a vast ken of trademark law at his disposal” and who “never takes the cookie-cutter approach”. He is ranked in the top Gold Tier for the trademark contentious category and the Silver Tier in the trademark non-contentious category by World Trademark Review, and is rated by Martindale-Hubbell as Martindale-Hubbell Distinguished℠. He has also been recognized by Chambers Canada, Best Lawyers of Canada, International Who’s Who of Trademark Lawyers and the Canadian Legal Lexpert Directory in the Intellectual Property category.

Representative work

  • Certified General Accountants v. American Institute of Certified Public Accountants (CV-12-463641)
  • BMW Canada Inc. v. Nissan Canada Inc. (T-1395-05/A-3-07)
  • Kirkbi AG (Lego) v. Ritvik Holdings Inc. (Mega Bloks) (SCC File No. 29956)
  • Kirkbi AG (Lego) v. Ritvik Holdings Inc. (Mega Bloks) (A-395-02)
  • Almecon Industries Ltd. v. Anchortek Ltd. (A-34-02, A-398-02/T-992-92)
  • Whirlpool Corporation v. Camco Inc. (SCC File No. 27208/A-630-97/T-2028-95)

Professional activities

Henry is a member of the International Trademark Association (INTA), MARQUES, and the Intellectual Property Institute of Canada (IPIC). Currently, he is Chair of the IPIC Trademark Practices Committee, a joint committee between IPIC and the Canadian Intellectual Property Office concerning Trademark Office practice and procedure. He has been or is currently a member of a variety of committees devoted to trademark issues, such as INTA Enforcement, INTA Programs, INTA Related Rights, INTA Emerging Issues, INTA Trade Dress, INTA Non-Traditional Marks, IPIC Trademark Agents Review, and MARQUES Trademark Practices.

Professional qualifications & education

  • Barrister and Solicitor, Ontario
  • Registered Trademark Agent, Canada
  • Registered Patent Agent, Canada
  • LL.B., Western University
  • B.Sc. (with Distinction), Physiology, University of Toronto

Selected publications

  • Canadian Marketing Handbook, Second Edition, Carswell (co-author)
  • “Canada’s proposed Trademark ‘No Use’ provisions”, HouseMARQUES, Issue 42, June 2014 (co-author)
  • “A big year for rights holders in Canada”, World Trademark Review, June/July 2013 (co-author)
  • “Functional Design and Artistic Expression”, INTA Design Protection Conference, Copenhagen, September 2012 (moderator)
  • “The Functional Boundary of Trademark Rights”, IPO Annual Meeting, Los Angeles, September 2011
  • “Trademarks in the Sports & Entertainment World: the business of making money”, INTA/ASIPI conference in Puerto Rico, March 2011 (moderator)