Trade-mark oppositions and appeals

Procter & Gamble Inc. v. Colgate-Palmolive Canada Inc., 2010 FC 231 — Successfully resisted opposition appeal in the Federal Court of Canada, on behalf of Colgate-Palmolive, thereby permitting registration of a non-traditional trade-mark for coloured stripes applied to toothpaste.

H-D Michigan Inc. v MPH Group Inc., 2006 FC 538 — Successful Federal Court appeal of Opposition Board decision, on behalf of Harley-Davidson, thereby blocking registration of the trade-mark HARLEYWOOD.

Garbo Group Inc. v. Harriet Brown & Co. (1999), 3 C.P.R. (4) 224 — Successfully resisted opposition appeal in the Federal Court of Canada thereby permitting the registration of the Greta Garbo Signature trade-mark on behalf of estate of Greta Garbo.
 

Trade-mark expungements and cancellations

TSA Stores, Inc.. v. Registrar of Trade-Marks, 2011 FC 273 — Successful Federal Court appeal, thereby maintaining series of registrations for SPORTS AUTHORITY trade-mark for sporting goods store services. Federal Court held that the trade-marks were in use in Canada, notwithstanding the absence of any bricks and mortar stores or sales in Canada, by means of information provided on a U.S.-based website.

Bereskin & Parr v. Fairweather Ltd., 2007 FCA 376 — Successfully resisted appeal in the Federal Court of Appeal, and maintained registration of the trade-mark TARGET APPAREL with award of costs in favour of client.

Fairweather Ltd. v. Registrar of Trade-Marks, 2006 FC 1248 — Successful appeal in the Federal Court of Canada with award of costs in favour of client. Federal Court maintained registration of the trade-mark TARGET APPAREL for wearing apparel even though commercial use of mark had not yet recommenced in the marketplace.

Maison des Pates Pasta Bella Inc. v. Olivieri Foods Ltd. (1998), C.P.R. 3d) 234 — Successfully resisted expungement in Federal Court of Canada of trade-mark registration concerning food products, with award of solicitor-and-client costs against applicant.

Cornerstone Securities v. Registrar of Trade-marks (1994), 56 C.P.R. (3d) 209 — Successfully resisted appeal in Federal Court of Canada, thereby obtaining cancellation of trade-mark registration for financial services.

Coscelebre Inc. v. Registrar of Trade-marks (1991), 35 C.P.R. (3d) 74 — Successfully resisted appeal in trade-mark cancellation proceeding in Federal Court of Canada, thereby maintaining trade-mark registration for cosmetics with award of solicitor-and-client costs against respondent.

Rogers, Bereskin & Parr v. Registrar of Trade-marks (1987), 17 C.P.R. (3d) 397 — Successfully resisted appeal in trade-mark cancellation proceeding in Federal Court of Canada, thereby maintaining trade-mark registration for clothing.

Pre-trial injunctions and seizure orders

Target Corporation v. Fairweather Ltd (2011), T-1902-10 — Successfully defended interlocutory injunction in Federal Court in passing off case concerning operation of TARGET APPAREL chain of retail stores, with award of costs against the plaintiff.

Contour Optik v. Hakim Optical Ltd. (2000), T-1880-00 — Successfully rescinded Anton Piller Order and issuance of interim injunction in Federal Court of Canada in patent case concerning eyeglasses.

Salton Appliances (1985) Corp. v. Salton Inc. (1999), 4 C.P.R. (4) 491 — Successfully defended interlocutory injunction in Federal Court of Canada in trade-mark case on behalf of manufacturer of George Foreman Grill.

Castlemore Marketing Inc. v. International Trade & Finance Corp. (1996), 65 C.P.R. (3d) 334 — Successfully defended interlocutory injunction in Federal Court of Canada in trade-mark case concerning toiletries.

Excelled Sheepskin & Leather Coat Corp. v. Y.M. Inc. (Sales) (1995), T-1217-95 — Successfully rescinded
Anton Piller Order and issuance of interim injunction in Federal Court of Canada in trade-mark case concerning clothing; successfully resolved action with award of solicitor-and-client costs against plaintiff.

Alphanet Telecom Inc. v. MCI Communications Corp. (1994), B44/94 — Successful in avoiding issuance of interlocutory injunction in Ontario Court in trade secret case concerning telecommunications.

Walkabout v. Icon Distribution Systems (1998), T-1732-98 — Successfully rescinded Anton Piller Order and issuance of interim injunction in Federal Court of Canada in trade-mark case concerning clothing.

Macdan Inc. v. International Clothiers Inc. (1991), 37 C.P.R. (3d) 530 — Successfully defended interlocutory injunction in Federal Court of Canada in copyright and trade-mark case concerning clothing.

Summary judgments

Inhesion Industrial Co. v. Anglo Canadian Mercantile Co. (2000), 6 C.P.R. (4) 362 —Successfully resisted summary judgment motion in Federal Court of Canada in copyright case concerning tableware.

Productions and Distributions Videodrome Inc. v. Cavis Productions Inc. (1994), 56 C.P.R. (3d) 449 — Successfully struck out action in Federal Court of Canada as no genuine issue for trial in trade-mark case concerning videos.

Memberships

• Fellow, Intellectual Property Institute of Canada
• Member, International Trademark Association; member of the Law Firm Committee; former Sub-Chair of the Anti-Counterfeiting & Enforcement Committee
• Member, Canadian Bar Association

Speaking engagements

• "Canadian Trademark Law--Important Developments for U.S. Brand Owners and Practitioners", Michigan State Bar Association's Intellectual Property Law Summer Institute, Mackinac Island, Michigan, July 2011
• "Business and legal issues in intellectual property licensing," panel discussion at the International Trademark Association's annual meeting, San Francisco, May 2011
• "Effective Intellectual Property Management for the Non-IP Specialist," panel discussion/webinar, Canadian Corporate Counsel Association, February 2011
• "How the Bill Will Affect the Availability of Statutory Damages," Understanding Bill C-32: Copyright Modernization Act seminar, Osgoode Hall Law School of York University, Toronto, November 2010  
• Presentation on Canadian Opposition proceedings, Intellectual Property Institute of Canada's 82nd Annual Meeting, Toronto, October 2008
• "Trade-mark Litigation Remedies and Procedures" (co-author: Michael D. Manson), presented to the Law Society of Upper Canada, Toronto, June 2008
• "IP Rights Enforcement: Protecting Product Configuration in Europe and Beyond" (moderator), panel discussion at the International Trademark Association’s forum, Rome, Italy, December 2006
• "Defining the Critical Elements of IP Licensing: Rights and Grants of Rights," The Canadian Institute's IP Licensing Conference, Toronto, November 2006
• "Protecting Intellectual Property in the Distribution Channel," Product Distribution Marketing, Federated Press, Toronto, September 2006

Teaching activities

• "Enforcement," IPIC/McGill Business of Copyright course, Montreal, August 2008
• "Enforcement," IPIC/McGill Business of Copyright course, Montreal, August 2007
• "Enforcement," IPIC/McGill Business of Copyright course, Montreal, August 2006
• "Enforcement," IPIC/McGill Business of Copyright course, Montreal, August 2005
•  Former Adjunct Professor in Trade-mark Law, Osgoode Hall Law School

Publications

• "Federal Court expands what may constitute 'use' of a 'service,'" World Trademark Review, March 29, 2011
• "A Global Guide to Protecting Copyright (Canada)," Managing Intellectual Property, November 2009
• "New court decision on 'use it or lose it' provision," World Trademark Review, January 21, 2008
• "Copyright Licensing Not the Answer to Grey Marketing" (co-author: Geneviève M. Prévost), Managing Intellectual Property, September 2007
• "Fairweather achieves aim in TARGET APPAREL appeal," World Trademark Review, November 7, 2006
• "'Infringing' use wipes registered mark off of the register," World Trademark Review, February 6, 2006
• "Internal use of mark does not constitute actual use or passing off," World Trademark Review, November 23, 2005
• "CIPO seeks comments on streamlined opposition procedures," World Trademark Review, November 14, 2005
• "Supreme WIPO releases overview of key issues in UDRP decisions," World Trademark Review, May 3, 2005
• "Court to hear Lego appeal," World Trademark Review, June 22, 2004
• "A sound examination should not include design elements," World Trademark Review, March 24, 2004
• "Roller Derby iced by Federal Court," World Trademark Review, July 7, 2003
• "No stopping use of BOSTON MARKET before trial," World Trademark Review, June 2, 2003
• "American Sporting Goods gets the boot," World Trademark Review, May 28 2003
• "BOSTON CHICKEN plucked from registry," World Trademark Review, April 11 2003