R. Nelson Godfrey

Career

Nelson Godfrey is a partner and the leader of Gowling WLG's Trademarks Group in Canada.

Based in Vancouver, Nelson is an intellectual property lawyer and strategic adviser for domestic and international clients operating in a wide range of industries, including computer hardware and software, manufacturing and fabrication, clothing and retail consumer products, entertainment, and alcoholic beverages.

Recognized as a leading intellectual property lawyer by Managing Intellectual Property, Legal 500, Lexpert, IAM, WTR, and The Best Lawyers in Canada, Nelson has particular experience in contentious disputes in all areas of IP law, including patents, trademarks, copyright, designs and trade secrets. Nelson has advised clients on contentious matters including:

Patent infringement and invalidity proceedings in the Federal Court of Canada and Federal Court of Appeal;

Copyright infringement and software license compliance matters in the Federal Court of Canada and Supreme Court of British Columbia;

Breach of confidence and breach of contract matters in the Supreme Court of British Columbia; and

Contentious trademark matters including trademark expungement proceedings in the Federal Court of Canada, anti-counterfeiting and trademark infringement proceedings in the Federal Court of Canada, trademark opposition and summary expungement proceedings before the Trademarks Opposition Board (TMOB), and domain dispute proceedings through the CIIDRC, FORUM, and the WIPO Center.

Nelson is also an experienced trademark procurement professional, assisting clients with clearing and protecting their brands in the Canadian market, as well as managing trademark portfolios for Canadian and international clients. In that capacity, he has managed trademark portfolios for some of the world's most recognizable brands. He also advises clients on contractual, ownership, privacy, and other legal considerations associated with the development, transfer, and commercialization of technology and intellectual property assets in various fields.

Nelson has been involved in several initiatives related to recent changes to Canada's Trademarks Act and ongoing changes to Trademarks Office practice, including as a member of a recently constituted Advisory Committee that advises the president of the Trademarks Opposition Board on matters related to TMOB practice and procedures.

Nelson regularly volunteers on a pro bono basis with Artists' Legal Outreach and Access Pro Bono, in ethics roles with the Human Research Ethics Board (HREB) of the University of Victoria and the Clinical Research Ethics Board (CREB) of the Vancouver Health Authority, and in a privacy role with the British Columbia Privacy Research Advisory Group (PRAG).

Nelson spends time sparring outside of the courtroom as well, having many years of experience in several disciplines of fencing.

Professional Memberships

Patent Agent, Trademark Agent; National

Year of Call, Alberta (2015)

Year of Call, British Columbia (2013)