Volunteer Spotlight: Amalia Berg

Published: May 15, 2019

Nina O’Sullivan Mishcon de Reya LLP London, UK

For Amalia Berg (Goodmans LLP, Canada), involvement in INTA has been a cornerstone of her career. Admitted to the Ontario Bar in 1990, she attended her first INTA Annual Meeting in her hometown of Toronto in 1992, and joined her first INTA committee, the Membership Committee, in 1995. Since then, Ms. Berg has been involved as a member and subcommittee chair on a number of INTA committees, most recently as chair of the Law Firm Committee’s Programming Subcommittee. She also previously led the Program Committee’s Canadian Roundtables Project Team.

2019 is a noteworthy year for Canada’s trademark practitioners. This year, Canada will adhere to the Madrid Protocol and Singapore Treaty, and the much-heralded overhaul of trademark law and practice will take effect in June. Canada’s Trade-marks Act will undergo significant amendment, including the formal introduction of classification of goods and services and the removal of the use before registration requirements, which has been a fundamental principle of Canadian trademark law.

During this exciting time for Canadian trademark practitioners, Ms. Berg and others on the Roundtables Project Team have organized Canadian practitioners to lead roundtable meetings in various U.S. cities to discuss the changes, and to learn from the experience of U.S. practitioners. Ms. Berg notes that “meeting with colleagues from other countries to share information and learning from each other, while breaking bread” has been one of the personal highlights of her INTA involvement.

Aside from the forthcoming changes to Canadian trademark law and practice, online trademark infringement remains a major issue. With ever-increasing potential for infringement, trademark lawyers must be diligent in seeking to protect their clients’ rights. For example, Ms. Berg cites the significant increase in online infringement of brands by cannabis companies following the recent legalization of cannabis in Canada.

Ms. Berg heads the non-litigious Intellectual Property Group at Goodmans in Toronto, Canada. She is involved in all aspects of trademark law, including clearance and prosecution, administrative proceedings before the Canadian Intellectual Property Office, litigation support, and transactional and licensing work. Like most trademark lawyers, she finds her work interesting, varied, and ever-changing.

Ms. Berg keeps current on how artificial intelligence (AI) will affect the practice of trademark law, given that so much of the assessment (for example, clearance) in relation to trademarks, while tethered in the law, is subjective and layered with judgment and experience. As chair of the Law Firm Committee’s Live Programming Subcommittee, Ms. Berg regards AI and automation in law firms as key areas of interest.

Outside of the trademark world, Ms. Berg appreciates the arts in its many forms. She attends art exhibitions, the theater, and live musical performances regularly. A career in intellectual property seemed a natural way to marry her passion for the arts and her work. If Ms. Berg were not a trademark lawyer, she might have been a museum curator! So it is no surprise that her favorite trademarks are nontraditional and 3D-all of which convey the art of design and creativity as a way to distinguish goods and services.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2019 International Trademark Association