Jacky Wong

Counsel

Vancouver
[email protected]
604.640.4046

Jacky specializes in intellectual property, with an emphasis on trademarks. He has extensive experience in providing targeted strategic advice to help brand owners align their intellectual property strategies with business goals and objectives.

A lawyer and trademark agent, Jacky’s practice primarily focuses on trademarks, copyright, domain names, licensing and intellectual property-related transactions. He regularly assists clients in securing trademark and copyright registrations in Canada and manages their global portfolios. He is also experienced in conducting contentious trademark matters, including trademark oppositions and non-use cancellation proceedings in Canada. 

Jacky enjoys learning clients’ business models and using that information to build a targeted branding strategy. Drawing on his extensive experience in protecting, managing and enforcing intellectual property rights in Canada, Jacky regularly advises clients on taking proactive measures when navigating through the trademark registration process, identifying potential contentious intellectual property issues, mitigating risks and managing cost expectations. 

Jacky is experienced in assisting brand owners of various sizes, ranging from multinational corporations to individually-owned businesses, operating in industries including food and beverage, fashion, finance, information technology, online retail, pharmaceutical, restaurants, and eSports. He also has particular knowledge in assisting early-stage companies with their intellectual property needs through his involvement with BLG’s StartUp & Grow™ program. 

 

Jacky has specific interests in the ongoing development of laws in artificial intelligence and non-fungible tokens (NFTs). 

Jacky is fluent in Cantonese and conversant in Mandarin.

Experience

  • Successfully defended client’s registration for the mark EN VOGUE DESIGN in a Section 45 proceeding in Sim & McBurney v en Vogue Sculptured Nail Systems Inc., 2020 TMOB 9, and the subsequent appeal at the Federal Court, 2021 FC 172.
  • Successfully defended client’s registrations for HORLICK’S and HORLICKS in a Federal Court expungement proceeding in Bedessee Imports Ltd. v. GlaxoSmithKline Consumer Healthcare (UK) IP Limited, 2019 FC 206
  • Assisted government-funded organizations in obtaining official mark protection in Canada.
  • Drafted and prosecuted Canadian trademark applications, including geographic indications and three-dimensional marks.
  • Provided trademark registrability opinions, including trademark clearance projects.

Beyond our Walls

Professional Involvement

  • Member, Examination Board, College of Patent Agents and Trademark Agents
  • Member, Intellectual Property Institute of Canada (IPIC)
  • Member, International Trademark Association (INTA), INTA Bulletins Committee
  • Member, Law Society of Upper Canada

Community Involvement

  • Board of Directors, Vancouver Cherry Blossom Festival, 2020-2022

Awards & Recognitions

  • Recognized in the 2020 and 2021 editions of Managing Intellectual Property as a Rising Star in Trademarks.

Bar Admission & Education

  • British Columbia, 2018
  • Ontario, 2010
  • JD, University of British Columbia, 2009
  • BSc (Hons.) in Biotechnology, University of British Columbia, 2006