Marcel
Naud

Title : Lawyer, trademark agent Year of call : 2001

Expertise : business law | intellectual property | access, protection of personal information and privacy

Hotline: 581 543-2686

Marcel Naud works as a lawyer and trademark agent on Cain Lamarre's intellectual property, privacy and business law teams. 

One of Quebec's pioneers in technology law, Mr. Naud's practice has always focused on the digital transformation of businesses, drawing on his considerable knowledge, skills and experience in trade-mark, copyright, confidential information and technology-based contracts, acquired over some twenty years with a highly specialized firm. This background also makes him a remarkable discoverer, initiator and proponent of approaches and tools that modernize the way things are done, drawing on advances in legal design, legal ops and legal tech. 

Before embarking on his areas of specialization, Mr. Naud completed a double bachelor's degree at McGill University's Faculty of Law (National Program, B.C.L. and LL.B.), where he was admitted after his high school and college studies at Collège Jean-de-Brébeuf. He also obtained a specialized graduate diploma (D.E.S.S.) in management applied to arts and culture from HEC Montréal a few years later, during a period in his career when he worked closely with an artist. 

Among his most notable achievements, Mr. Naud has supported fintech and adtech start-ups in their use of decisional and predictive artificial intelligence to carve out a place for themselves in the value chain of the automotive financing and online advertising markets. He has crafted the main contracts by which a major daily newspaper successfully moved from print to tablet screens. He also negotiated contracts on behalf of a cloud service provider selected by professional orders following a call for tenders to meet the needs of their members. He has also facilitated the development of business management software, and the conversion or sale of rights in such software into software-as-a-service (SaaS) offered to others in fields as varied as event management, agricultural product distribution, energy production, as well as municipal, banking, accounting and investment services. 

As part of his practice specializing in technology-based contracts and copyright law, Mr. Naud is called upon to draft, review and negotiate contracts for the development of applications, websites and video games, software-as-a-service (SaaS), licenses, remote business-to-consumer contracts, marketplaces, maintenance and technical support by service level, subcontracting, technology transfer, source code escrow, and the protection and sharing of confidential information. He excels at improving the substance and clarity of contract templates to make them more accessible and speed up the conclusion of agreements. Mr. Naud is also able to organize libraries of clauses, models and guides, providing organizations with tools that give them greater flexibility and autonomy to prepare, negotiate and conclude their day-to-day agreements.  

On the trademark side of his practice, Mr. Naud is one of Canada's most experienced lawyers in cybersquatting and other conflicting parasitic activities on the Internet resulting from unfair competition and deceptive marketing schemes (counterfeiting, phishing, deepfake, malicious advertising, misdirection of web traffic, etc.) He has thus acted in over 200 arbitration cases, mainly for trademark owners, but also for domain name holders. More generally, Mr. Naud assists companies at all stages of the trademark registration process, whether in Canada or elsewhere in the world. He provides opinions as to whether a proposed trademark is registrable or not, identifying potential obstacles by taking into account existing trademarks and names, as well as application examination criteria. He equips clients with strategies, tactics and tools for the day-to-day management of trademark and domain name portfolios, and reviews the status of such portfolios during mergers, acquisitions, financings or other commercial transactions, while ensuring that they are maintained and renewed according to their interests. Mr. Naud is also able to make representations to the relevant Canadian authorities in opposition and cancellation proceedings against potentially conflicting trademarks, and to draft and negotiate contracts relating to the licensing or assignment of rights, or the coexistence of trademarks of different owners. Mr. Naud's trademark services also include detecting and reporting the use of trademarks or domain names harmful to the interests of an interested party, providing legal advice and recommendations on the selection, adoption, use and protection of trademarks and domain names, and offering consultations and workshops on trademark-related issues. 

As part of his privacy practice, Mr. Naud responds to both exceptional and usual needs, including developing and documenting organizations' privacy governance policies and practices to ensure they are aligned with applicable laws and regulations. He monitors and reports on legislative and regulatory developments to enable organizations to anticipate future requirements and adjust to them preventively. Mr. Naud also helps those to whom the role of person in charge of the protection of personal information has been delegated within their organization to carry out their duties. This includes helping to map and inventory the various types of personal information processed, to map the flow of such information, to advise organizations on the handling of access requests by individuals, and to assist them with the privacy impact Assessments they must carry out in the context of projects involving the acquisition, development and overhaul of information systems, electronic service delivery or out-of-territory communications. In addition, it helps organizations maintain their confidentiality incident registers, and develops response plans. He also provides training and awareness-raising activities on legal issues relating to privacy and cybersecurity. 

Outside work, Mr. Naud enjoys cycling, hiking and cross-country skiing, the performing arts (theater, concerts, musicals, comedy, circus, etc.), board games and volunteer work. On the community front, he is guided by the maxim "Pay it forward " and grateful for what the school and extracurricular environments have instilled in him. His commitments have led him to act, among other things, as President of the governing board of the elementary school attended by his daughters for some ten years, and as a member of the Board of Directors of 2 national organizations for hobbies under the Ministry of Education's Recognition Program: Alliance chorale du Québec and Association des Scouts du Canada. 

Assistant : Nathalie Lebreton

Expertise 

  • Business law (commercial law) 
  • Intellectual property (copyright, trade secrets, trademarks and domain names, etc.)
  • Access, protection of personal information and privacy 

    Education 

    • Specialized Graduate Diploma (D.E.S.S.) in management - arts and culture, HEC Montréal (2008) 
    • Double Bachelor of Laws (bilingual and bijural National Program in Civil Law and Common Law, B.C.L./LL.B), McGill University (1999) 

    Professional experience 

    • Robic (2000 to 2003; 2006 to 2023) 

    Lecturing, conferences, publications 

    Lecturing: 

    Reconciling agile methods with the intrinsic requirements of a business or service contract: a challenge to be met. Continuing education program in the "Think Ahead | Pensée d'avance" series offered by McGill University's Faculty of Law (2015)

    Trade-mark Issues Related to Domain Names. Summer program on intellectual property offered by McGill University's School of Continuing Education in collaboration with the Intellectual Property Institute of Canada (2014) 

    Conferences: 

    • Top clauses most frequently negotiated in the emerging technologies sector, structured workplace learning activity presented by Robic (2023) 
    • Technological and legal trends to watch for 2024, Symposium on emerging technologies presented by Robic (2023)
    • Demystifying domain names: Tips to know and pitfalls to avoid, training webinar presented by the "Information, Telecommunications and Intellectual Property" section of the Canadian Bar Association, Quebec Division (2023) 
    • Copyright in the age of digital art and generative artificial intelligence, seminar with students in Arts, Literature and Communications at Collège Jean-de-Brébeuf (2023) 
    • A survival guide to creating or overcoming obstacles to accessing strategic data in artificial intelligence, structured workplace learning activity presented by Robic (2022) 
    • Overview of current and foreseeable practical applications of megadata in legal practice, presented as part of a training day on the theme "New trends in the legal world" organized by the Canadian Bar Association, Quebec Division, in collaboration with the Société québécoise d'information juridique (2017) 
    • The Dark Side of Domain Names, webinar for members of AIPF: Association of Intellectual Property Firms (2017)
    • What to expect from the Equustek decision, presented at the colloquium "A new international reality for marks in Canada" organized by the Public Law Research Center of Université de Montréal (2016) 
    • The GPL license: questions and answers, presented at WordCamp Montréal (2016) 
    • Licence to Licence: Be aware and beware of key differences between software license agreements and SaaS agreements, presented to a cohort of a program offered by District3 Innovation Center under the umbrella of Concordia University (2015)
    • Trademarks facing the expanding domain name space, Luncheon conference presented as an activity of the Regroupement des praticiens en marques (2014) 
    • Innovating in IT using "raw materials" under open licenses, luncheon conference presented by Licensing Executive Society (LES) Québec and la Voix des Entrepreneurs en T.I. de Québec (VÉTIQ) (2013) 
    • Legal particularities of agile development contracts, Internet law in the 2.0 era presented by Federated Press (2013) 
    • Are you the master of your domain? presented to Legal Counsel Subcommittee of the Interuniversity Cooperation Bureau (2012) 
    • Consumer-Generated Content: A Comparative Study of Online Services Based on Content Produced by Customer Users, Internet Law presented by Federated Press (2012) 
    • Crowdsourcing and the Law, LegalIT 5.0 presented by the Young Bar of Montreal (2011)
    • Origin and operation of Creative Commons licenses as standard contracts for making works available online or offline (2009) 
    • The impact of open source licenses on the commercialization of computer systems (2009) 
    • Protecting and managing domain names as extensions of trademarks: Developing and implementing a policy adapted to each company, presented by The Canadian Institute (2008) 

          Publications : 

          • Are you concerned by the European Union's General Data Protection Regulation (GDPR)? article published in Robic's newsletter and blog (2018)
          • How do you force Google to delist the websites of a distributor of counterfeit products worldwide? A Canadian example shows it's possible, article published in Robic's newsletter and blog (2017)
          • Se démarquer sur Internet par l'innovation et la créativité, article published in Chimiste magazine by the Ordre des chimistes du Québec (2011) 
          • Overview of five interesting domain name decisions in 2010, article published by Les Cahiers de propriété intellectuelle, Vol. 23, no. 2 (2011)
          • L'externalisation de masse ("crowdsourcing") et ses incidences en propriété intellectuelle, Développements récents en propriété intellectuelle, Volume 328 (ISBN 978-2-89635-399-6) article published by the Quebec Bar (2010)
          • Palmarès jurisprudentiel 2007 en droit du divertissement : la détermination d'interdits élevée au rang d'art, article published by Les Cahiers de propriété intellectuelle, Vol.20, no.2 (2008)  
          • Review of the book "Droit européen comparé d'Internet", (2001) 13 CPI, article published by Les Cahiers de propriété intellectuelle (2001)

            Associations, committees, boards 

            Associations 

            • Member of the College of Patent and Trademark Agents (CABAMC) 
            • Member of the Intellectual Property Institute of Canada (IPIC) 
            • Member of the International Association of Privacy Professionals (IAPP) 
            • Member of the Internet Society (ISOC) 
            • Member of World Commerce & Contracting (WCC) 

            Committees 

            • Member of the Legal IT organizing committee (2nd, 3rd and 4th editions in 2008, 2009 and 2010) 
            • Member of the Editorial Board of the Canadian Intellectual Property Journal (CIPR) published by IPIC 
            • Member of IPIC's Internet and Technology Committee 

            Boards 

            • Director, Association des scouts du Canada (2019-2022) 
            • Director, Alliance chorale du Québec (2016-2018) 

              Distinctions 

              • World Trademark Review (WTR): Listed in WTR1000 (2022 and 2023) 
              • Canadian Legal Lexpert Directory: Repeatedly recommended by peers as a leading practitioner of computer and IT law (2019 and 2020) 
              • Fédération des comités de parents du Québec: FCPQ Recognition Award (Innovative Project) (2016-2017)