May M. Cheng

Practice
  • Intellectual Property Litigation
  • Brand Protection and Licensing
  • Anti-Counterfeiting
Education & Admissions
  • 2005 – Certified as a Specialist in IP (Trademark and Copyright Law) by the Law Society of Ontario (“LSO”)
  • 1997 – Call to the British Columbia Bar
  • 1996 – Registered Trademark Agent
  • 1993 – Called to the Ontario Bar
  • 1991 – LLB (French program, cum laude), University of Ottawa
  • 1987 – BA in Law and Political Science, Carleton University

Experience

May started her legal career as a litigator in intellectual property at a full service firm, expanding her expertise to trademark prosecution and developing a practice focused on brand protection and enforcement.  She has spent over 25 years working for clients across a wide variety of industries, but particularly in retail, travel, fashion and food – all sectors that she happens to especially enjoy.

May’s litigation experience includes patent, trademark and copyright infringement cases, as well as expungement and injunction cases in the federal and provincial courts.  Over the course of her decades long legal career, she worked at a succession of large Bay Street firms before finding a Bay Street firm that truly reflects her core values of diversity and inclusion, where she can focus on what she loves most: working with forward-thinking and brilliant legal professionals who prioritize having fun and living fulfilling lives while also practicing law and focusing on the best interests of clients.

While enjoying a reputation as a “fearless” advocate, May’s goal is to arrive at the best business solution for her clients, which is often not going to be achieved through protracted litigation.  She prides herself on finding creative solutions to complex problems and having a deeper understanding of the underlying goals from nurturing long term relationships with her clients.

May M. Cheng
Career highlights include:
  • Acting for DC Comics’ “SUPERMAN” in suing Russell Oliver for trademark and copyright infringement in television advertisements for “CASHMAN”, where Mr. Oliver dressed in the classic blue leotard and red cape.
  • Obtaining the first and only Anton Piller Order for the STAR WARS intellectual properties on behalf of Lucasfilm Ltd.
  • Successfully renewing and enforcing an Anton Piller Order each year for the past 20 years on behalf of the famous luxury brand BOSS HUGO BOSS.
  • Enforcing Anton Piller Orders to seize counterfeit food products, including rice and ginseng, in the Greater Toronto Area.
  • Obtaining a summary judgment on behalf of AREVA against Atomic Energy of Canada Ltd. that set the high water mark for the confusion test in trademark cases, where the judge held that the test for confusion in the nuclear industry was not “moron in a hurry” like Homer Simpson.
  • Being retained as a consultant to rewrite the entire suite of intellectual property laws for the Government of the Bahamas and then drafting the regulations a few years later, so that the country could comply with the TRIPS agreement and be admitted to the World Trade Organization.
  • Obtaining an interlocutory injunction and final judgment against a grey market seller misrepresenting itself as an authorized distributor of Asian food products.
Community work highlights include:
  • Being the National Spokesperson for Head Tax Redress and being the President of the Chinese Canadian National Council when it commenced the action on behalf of the head tax payers, which ultimately helped the descendants of head tax payers obtain in an apology and community compensation from the Federal Government.
  • Being part of the original Justicia Project with the Law Society of Ontario, and working to advance the retention of women in private practice through mentoring and other initiatives throughout her legal career.
  • Fundraising for causes that she is passionate about, including Asian Community causes, such as ethno-specific service providers for disadvantaged and vulnerable communities.
  • Sponsoring a Ukrainian family in Canada displaced in the war launched by Russia.
  • When not practicing law, you will find May indulging in a night out with friends or enjoying all things domestic, including baking bread, sewing and knitting for her family that includes two teenagers, a spouse, a dog and a hedgehog.
Professional Association Volunteer work
  • Acting as Co-Chair for IP Year in Review, the annual Law Society of Ontario program, since 2015.
  • Chair of Certified Specialist Board of the Law Society of Ontario since 2021 and Board member since 2016.
  • International Trademark Association Anti-Counterfeiting Committee member from 2006-2009, 2017-2019 and 2020-2022.
  • International Trademark Association Famous & Well Known Brands Committee member from 2012-2014 and 2014-2016.
  • Women’s Equality Advisory Group Committee to the Law Society of Ontario 2009-2012
  • Expert Advisory group member to Law Society of Ontario’s Justicia Project on the Retention of Women in Private Practice 2006-2008
Publications
  • Contributing Author, “Intellectual Property and Work”, in textbook The Law of Work, published by Emond Montgomery, December 2015
  • Contributing Author of Canadian chapter in, “Intellectual Property Enforcement in the Digital World”, May 2017 edition published by Matthew Bender
  • Contributing Author, Intellectual Property Chapter, in textbook “Canadian Business Law 4th edition”, published by Emond Montgomery, March 2023
Awards and Recognition
  • IP STARS – recognized as a Trademark Star since 2013
  • Ranked Top 250 Women in IP (Global ranking by Managing IP from 2017-2021)
  • WTR Global Leaders – recognized as a Global Leader since 2018
  • WTR 1000 – gold band in trademark litigation, silver band in anti-counterfeiting (ranked since 2012)
  • Ranked in Top 500 Lawyers in Canada by Lexpert/American Lawyer (2021 – 2024)

The information contained on this website is not legal advice. It should not be construed as legal advice and should not be relied upon as such.
© Copyright 2024 Dipchand LLP. All Rights Reserved.

Skip to content