Kimberley Baillie

Trademark Agent

Overview

A seasoned trademark agent with over 20 years experience, Kimberley has extensive knowledge in trademark prosecution and supports clients in the enforcement of their trademark rights providing practical guidance in every step your trademark journey.

Throughout her career, she has worked with SME’s as well as large corporation, both as a registered trademark agent and as an employee of the Canadian Intellectual Property Office holding positions as Trademark Examiner, Acting Manager of the Trademarks Branch and Acting Manager of Technical Policy. Kimberley is also widely recognized globally for her work in Nice Classification.

Kimberley conducts trademark clearance searches and provides trademark registrability opinions. She has extensive experience in preparing Affidavits of Use and Affidavits of Distinctiveness and provides detailed advice on how to overcome any objection raised in an Office Action or a Total Provisional Refusal.

She is an active member of the Intellectual Property Institute of Canada (IPIC).

Legal Overview

Kimberley is a graduate of Algonquin College's legal administration studies program. In 2004 she obtained a Certificate in Intellectual Property from the World Intellectual Property Organization and has been a Registered Trademark Agent since 2006.

Involvement in Professional Associations and Community Involvement

Leadership:

• Co-Chair, IP Trade Policy Committee, Intellectual Property Institute of Canada (2022-present)
• Trademark Knowledge Examination Developer, College of Patent and Trademark Agents (2023 and 2024)
• Nice Classification Expert, World Intellectual Property Office (2016-present)
• Member of the Board for the Trademark Agent Examinations (2013 to 2017)
• Secretary of Board for the Irish Society of the National Capital Region (2005)

Membership:

• Intellectual Property Institute of Canada (IPIC) (+ 5 years to current)
• College of Patent Agents & Trademark Agents (+3 years to current)

Publications

• “The Metaverse – A Whole New World for Nice Classification” (author) published article for IPIC’s UnscrIPted, September 2023
• “A Reflection on Nice Classification in 2022 and The Coming-Into Force of the 12th Edition, (author) published article for IPIC’s UnscrIPted, December 2022
• “IPIC Participates in 31st Session of the Nice Committee of Experts”, (author) published article for IPIC’s UnscrIPted, May 2021
• “Canada’s Trademark Applications for Marijuana Products and Services Causes an International Stir at the Nice Committee of Experts” (author) published article for IPIC’s UnscrIPted, July 2019
• “Nice Classification in the Age of Globalization”, June 2018
• Canadian Forms & Precedents – Debtor/Creditor, 2nd Edition – Chapter 5 Levying Execution, LexisNexis Canada (co-author)
• World Trademark Review– “The Global Guide on Anti-Counterfeiting Laws, Procedures and Strategies – Canada” (co-author) (2011-2020)

Speaking Engagements

• "Metaverse use in the Canadian marketplace" presenter to the World Intellectual Property Organization (WIPO) (2023)
• “The Nuances of Nice Classification” presenter (2018)
• “Trademark Basics” presenter to the Business Development Bank of Canada (2014) and Herzing College (2006)

Awards and Distinctions

• “CEO Sector Head Merit Award for Trademarks Branch” for her contribution to the adoption of the Nice Classification Agreement in Canada and her involvement in Canada’s participation in joining TMClass with the European Union Intellectual Property Office (EUIPO) (2015)
• “Director General Merit Award” for her valuable contribution in the training of Canadian Intellectual Property Office Trademark Examiners (2014)