Jonathan Colombo

Partner

Toronto, 416.957.1613

Practice Group(s)

Trademarks
Litigation
Copyright & Digital Media

Education

B.A., University of Toronto, 1985
M.A., University of Toronto, 1986
LL.B., McGill University, 1989

Qualifications

Admitted to the Ontario Bar, 1991
Registered Canadian Trademark Agent, 1993

Professional Memberships

Advocates' Society
American Bar Association (ABA)
Intellectual Property Institute of Canada (IPIC), Fellow
International Bar Association (IBA)
Law Society of Upper Canada (LSUC)
Licensing Executives Society (LES)

Jonathan Colombo

B.A., M.A., LL.B.

Jonathan’s practice covers all areas of trademark and copyright law including the acquisition, exploitation and enforcement of these rights. He also has extensive litigation experience representing many national and international brands.

Jonathan was co-counsel in the Staples v. Office Depot case where a six year interlocutory injunction was obtained for our firm client Staples. He was co-counsel for McDonald’s in litigation against A&W, resulting in the first reported Canadian decision dealing with “reverse confusion”, and was counsel for Gap in the Gap v. G.A.P. Adventures case, leading to a settlement in which the defendant rebranded worldwide.

Jonathan represented  the Association of Chartered Certified Accountants, one of the world’s largest international accounting bodies, in litigation against four provincial accounting institutes regarding use of professional designations (the case settled one month prior to trial), and represented Canada Goose, a leading Canadian clothing manufacturer, in litigation against Sears Canada in a trade dress dispute. 

Jonathan is currently acting for CarGurus in a copyright proceeding where statutory damages in excess of $90 million have been claimed, and for The Canadian Real Estate Association in a trademark infringement action.

Jonathan has published several articles including "Confidential Information and Property Rights: A Study of Employment Contracts" in the National Labour Review, "Reverse Engineering and Process Patents: When is the Process Disclosed?" in the Intellectual Property Journal, and "The Right to Privacy in Verbal Communication: Unauthorized Participant Recording" in the McGill Law Journal. Jonathan has also taught at the McGill – IPIC Advanced Trademarks Course for the last five years.

Jonathan is a member of the International Trademark Association's (INTA) Enforcement Committee and is a former member of the Parallel Imports Committee. Additionally, he is a past member of the Canadian Trade-mark Agents Board of Examiners.

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Our People

Jonathan Colombo

Jonathan Colombo

B.A., M.A., LL.B.

Partner
Toronto      Ph: 416.957.1613

Practice Group(s)
Trademarks
Litigation
Copyright & Digital Media

Education
B.A., University of Toronto, 1985
M.A., University of Toronto, 1986
LL.B., McGill University, 1989

Qualifications

Admitted to the Ontario Bar, 1991
Registered Canadian Trademark Agent, 1993

Jonathan’s practice covers all areas of trademark and copyright law including the acquisition, exploitation and enforcement of these rights. He also has extensive litigation experience representing many national and international brands.

Jonathan was co-counsel in the Staples v. Office Depot case where a six year interlocutory injunction was obtained for our firm client Staples. He was co-counsel for McDonald’s in litigation against A&W, resulting in the first reported Canadian decision dealing with “reverse confusion”, and was counsel for Gap in the Gap v. G.A.P. Adventures case, leading to a settlement in which the defendant rebranded worldwide.

Jonathan represented  the Association of Chartered Certified Accountants, one of the world’s largest international accounting bodies, in litigation against four provincial accounting institutes regarding use of professional designations (the case settled one month prior to trial), and represented Canada Goose, a leading Canadian clothing manufacturer, in litigation against Sears Canada in a trade dress dispute. 

Jonathan is currently acting for CarGurus in a copyright proceeding where statutory damages in excess of $90 million have been claimed, and for The Canadian Real Estate Association in a trademark infringement action.

Jonathan has published several articles including "Confidential Information and Property Rights: A Study of Employment Contracts" in the National Labour Review, "Reverse Engineering and Process Patents: When is the Process Disclosed?" in the Intellectual Property Journal, and "The Right to Privacy in Verbal Communication: Unauthorized Participant Recording" in the McGill Law Journal. Jonathan has also taught at the McGill – IPIC Advanced Trademarks Course for the last five years.

Jonathan is a member of the International Trademark Association's (INTA) Enforcement Committee and is a former member of the Parallel Imports Committee. Additionally, he is a past member of the Canadian Trade-mark Agents Board of Examiners.

Articles

Speaking Engagements

2011 Summer Courses in Intellectual Property

McGill University / Intellectual Property Institute of Canada (IPIC)
Montréal, QC
July 25, 2011 - August 10, 2011

Stephen M. Beney of Bereskin & Parr LLP will be speaking on PatentsWorldwide: Global Systems on July 27 at 8:30 a.m.

Brigitte Chan & François Larose of Bereskin & Parr LLP will be workshop leaders in the Understanding Trade-marks course on Responding to Examiner’s Reports from August 1-5.

Jonathan G. Colombo of Bereskin & Parr LLP will be speaking on:

  • Navigating Opposition Proceedings and Preparation of Evidence on August 8 at 8:40 a.m.
  • Review of Section 45 Proceedings – Proving Use or Non-Use of a Trade-mark on August 8 at 1:30 p.m.
  • Workshop on Opposition Proceedings on August 8 at 3:45 p.m.

Terry Edwards of Bereskin & Parr LLP is the Assistant Program Director of the Managing Trade-mark Disputes course.

For more information go to: http://www.mcgill.ca

Event Attendance

INTA 139th Annual Meeting

International Trademark Association (INTA)
Barcelona, ES
May 20 - 24, 2017

Daniel Bereskin, Janice Bereskin, Jonathan Burkinshaw, Mina Chana, Cynthia Rowden, Susan Keri, Meghan Dillon, Brigitte Chan, Terry Edwards, Sharyn Costin, François Larose, Lloyd Sarginson, Jennifer McKenzie, Jonathan Colombo, Scott MacKendrick, Mark Robbins and Catherine Lovrics will be attending the 139th INTA Annual Meeting.

For more information about meeting, please click here.

INTA Leadership Meeting

International Trademark Association (INTA)
Hollywood, FL
November 15 - 18, 2016

Daniel R. Bereskin, Cynthia Rowden, Susan Keri, Scott MacKendrick, Jonathan Colombo, Mark Robbins, Janice Bereskin, Mina Chana and Jonathan Burkinshaw will be attending the INTA Leadership Meeting in Hollywood, FL.

Registrants of this invitation only event will have many opportunities to network with fellow volunteers at various receptions and to work with committees to further the Association's objectives and goals.

For more information on this meeting, please click here.

IBA 2016 Annual Conference

International Bar Association (IBA)
Washington, DC
September 18 - 23, 2016

Jonathan Colombo will be attending the International Bar Association's 2016 Annual Conference.

This conference will take place from September 18 - 23 in Washington, DC and brings together a global network of colleagues to exchange knowledge and contacts.

For more information on this conference, please click here.

International Trademark Association (INTA)

138th Annual Meeting
Orlando, Florida
May 21 - 25, 2016

Dan Bereskin, Lloyd Sarginson, Cynthia Rowden, Susan Keri, Scott MacKendrick, Terry Edwards, Jonathan Colombo, Jennifer McKenzie, Victor Krichker, Adam Bobker, Janice Bereskin, Brigitte Chan, François Larose, Mina Chana, Sharyn Costin, Meghan Dillon and Jonathan Burkinshaw will be attending the 138th INTA Annual Meeting in Orlando.

Speaking Engagements:

Saturday, May 21 2016
2:15pm - 3:15pm
Scott MacKendrick will be speaking the course International Trademark Law and Practice as part of the North American Panel

Sunday, May 22 2016
12pm - 2pm
Daniel Bereskin will be co-chairing the table topic session Trademark Confusion and Heuristics

2pm - 3:15pm
Daniel Bereskin will be speaking at the mock mediation session called Mediation Live! A Real-Life Mediation Experience

Monday, May 23 2016
8am - 10am
François Larose will be chairing the table topic session Lost in Translation: The Impact of Language Laws on Trademarks

Tuesday, May 24 2016
8am - 10am
Cynthia Rowden will be moderating the session Should TM registrations ever be granted or enforced if there is no use?

International Trademark Association (INTA)

137th Annual Meeting
San Diego, CA
May 2 - 6, 2015

Dan Bereskin, Lloyd Sarginson, Cynthia Rowden, Robert Storey, Susan Keri, Scott MacKendrick, Terry Edwards, Jonathan Colombo, Mark Robbins, Jennifer McKenzie, Victor Krichker, Janice Bereskin, Brigitte Chan, François Larose, Sharyn Costin, Meghan Dillon, Jonathan Burkinshaw and Lindsey Robinson will be attending the 137th INTA Annual Meeting in San Diego.

On Saturday, May 2, Scott MacKendrick will be on the North American panel at 11:15am as part of the “Course on International Trademark Law and Practice”. The course is designed to provide a comparative analysis of trademark law and practice in countries around the world. He will also be a moderating the table topic “Madrid Protocol, Nice Agreement, Singapore Treaty and Use: Major Changes to Canada's Trademark Regime” on Sunday, May 3 at noon.

Janice Bereskin will be speaking on Sunday, May 3 between 2pm and 3:15pm with other INTA leaders as part of the informative and interactive session "CSU50 INTA Committee Selection, Membership and Involvement: Behind the Curtain". The session will discuss the diverse and valuable benefits associated with active involvement in INTA.

To learn more about INTA and for further information about the meeting, please click here.

IBA

Tokyo Annual Conference of the International Bar Association 2014
Tokyo, Japan
October 19 - 24, 2014

Jonathan Colombo will be attending the Tokyo Annual Conference of the International Bar Association 2014. 

The event will include various sessions on the latest developments in all areas of law. It will also feature Asian legal practices covering issues such as negotiating fees, antitrust enforcement agencies and Asia’s investment in other parts of the world. 

Bringing together practitioners of every level, from every jurisdiction in the world for over 50 years, the International Bar Association (IBA)’s Annual Conference is the premier opportunity for legal professionals the world over to meet, share experience, develop business and learn from one another.

International Bar Association (IBA)

Annual Conference
Dubai, UAE
October 30, 2011 - November 4, 2011

Jonathan Colombo will attend this conference.

For more information go to: www.ibanet.org

Accolades

  • 2017 IP Stars Patent
  • 2017 Canadian Legal Lexpert Directory
  • Benchmark Litigation Canada 2017
  • World Trademark Review 1000 2017
  • 2016 Canadian Legal Lexpert Directory
  • Expert Guides: Trade Mark 2016
  • Benchmark Litigation Canada 2016
  • World Trademark Review 1000 - The World's Leading Trademark Professionals 2016
  • 2015 Canadian Legal Lexpert Directory
  • Managing Intellectual Property’s 2015 IP Stars Handbook: Trade mark and Copyright
  • Benchmark Litigation Canada 2015
  • World Trademark Review 1000 – The World’s Leading Trademark Professionals 2015
  • Expert Guides: Guide to the World’s Leading Trade Mark Law Practitioners 2014
  • The 2014 Canadian Legal Lexpert Directory
  • Managing Intellectual Property’s IP Stars Handbook 2014: Trade mark and Copyright
  • Benchmark Canada Litigation 2014
  • World Trademark Review 1000: The World's Leading Trademark Professionals 2014
  • World Trademark Review 1000: The World's Leading Trademark Professionals 2013
  • Expert Guides: Guide to the World's Leading Trade Mark Law Practitioners 2012
  • World Trademark Review 1000: The World's Leading Trademark Professionals 2012
  • PLC Cross-border IP in Business Transactions Handbook 2011/2012

Professional Memberships

Advocates' Society
American Bar Association (ABA)
Intellectual Property Institute of Canada (IPIC), Fellow
International Bar Association (IBA)
Law Society of Upper Canada (LSUC)
Licensing Executives Society (LES)

Media Coverage

  • CBC News References Jonathan Colombo’s Letter on Behalf of a Client
  • Jonathan Colombo was quoted in the article "Cheque scams now targeting intellectual property lawyers" which appeared in the January 9, 2012, edition of the Law Times.

Litigation Cases

Canadian Real Estate Association et al v Peter Maccabe et al
Successfully represented The Canadian Real Estate Association (CREA) in trademark and tradename infringement proceeding. CREA obtained Judgment that the defendants had infringed its rights in the REALTOR® and CREA® trademarks and The Canadian Real Estate Association trade name, and was granted a permanent injunction and an Order that the defendants destroy and deliver up all print and electronic materials that would offend the injunction.
Counsel: Jonathan Colombo and Amrita V. Singh
(Unreported decision)
(2017)
Trader Corporation v CarGurus, Inc
Successfully represented CarGurus in copyright infringement proceeding. CarGurus defended against Trader’s statutory damages claim of $98 million for infringement of copyright in 196,740 photos on CarGurus’ Canadian website. Trader claimed “statutory” damages of $500 per photograph, as well as $1 million for punitive damages, a permanent injunction and legal fees. The Court released its decision in April, lowering statutory damages to $2 per photo for 152,532 photos, or $305,064 in total. The Court denied Trader’s request for punitive damages and the injunction. CarGurus and Trader subsequently agreed that legal fees would not be payable. This is the first reported case in Canada dealing with the “information location tool” defence (the search engine defence) and the “making available” right under the Copyright Act.
Counsel: Jonathan Colombo and Amrita V. Singh
(Reported decision: 2017 ONSC 1841)
(2017)
1898848 Ontario Inc. dba Home Aesthetics Inc. et al ats Star Night Import & Export Inc.
Representing Home Aesthetics in an industrial design infringement action relating to a cylindrical bag for pillows and linens. The action also involves trademark and copyright infringement.
Counsel: Jonathan Colombo, Catherine Lovrics and Amrita V. Singh
(2016), (T-687-16)
Bereskin & Parr ats Vasilakos
Representing Bereskin & Parr in an appeal by John Vasilakos from a decision of the Trademarks Opposition Board pursuant to Section 45 striking the trademark F1QA Design from the Register of Trademarks.
Counsel: Jonathan Colombo and Amrita V. Singh
(2015), T-1256-15
Indigo et al. ats Miguna Miguna
Representing Indigo group of defendants in an action for copyright infringement, injunction and damages relating to a book.
Counsel: Jonathan Colombo and Amrita V. Singh
(2015), Ontario SCJ file No. CV-15-529
JD Irving, Limited v. John Doe a.k.a. Jason Jones
Representing JD, Irving in an action for copyright infringement against Jason Jones relating to JD Irving’s “I’m with JDI” advertising campaign. Successfully moved for default judgment.
Counsel: Jonathan Colombo and Amrita V. Singh
(2014), (T-2554-14)
Canada Goose Inc. v. Sears Canada, Inc.
Representing Canada Goose in an action for trademark infringement and passing off against Sears Canada relating to CANADA GOOSE intellectual properties and CANADA’S BEST and SEARS APPROVED clothing bearing “Alpinetek” or “Weather Gear” logos.
Counsel: Jonathan Colombo and Amrita V. Singh
(2013), (T-1820-13)
Canada Goose Inc. v. Vertical Axis Inc. and Kevin Ham
Represented Canada Goose in a trademark infringement action relating to the CANADA GOOSE trademark and canadagoose.com domain name.
Counsel: Jonathan Colombo and Adam Bobker
(2013), (T-571-13)
Cinque Moda GmbH and Cinque Fashion Inc. v. 130042 Canada Inc. c.o.b. as Cinque
Represented Cinque Moda and Cinque Fashion in an action for trademark infringement and passing off relating to the CINQUE and CINQUE COLLEZIONE trademarks.
Counsel: Jonathan Colombo and Meghan Dillon
(2013), (T-985-13)
The Saul Zaentz Company v. Al Moudabber Food Concepts SAL
Represented the owner of the LORD OF THE RINGS trade mark in opposition and Federal Court proceedings with respect to the registration of the trademark LORD OF THE WINGS for bar and restaurant services.
Counsel: Robert Storey, Jonathan Colombo, and Megan Langley Grainger
(2013), (T-540-13)
Canada Goose Inc. v. International Clothiers Inc.
Represented Canada Goose in an action for trademark infringement and passing off against International Clothiers relating to CANADA GOOSE intellectual properties and CANADA WEATHER GEAR – SUPER TRIPLE GOOSE clothing.
Counsel: Don Cameron and Jonathan Colombo
(2012), (T-262-12)
Polygon Canada Inc. ats. Winchester Investments Ltd.
Represented Polygon Canada in an action for trademark infringement with respect to its use of the POLYGON trade mark.
Counsel: Jonathan Colombo
(2011), (T-950-11)
Association of Chartered Certified Accountants et al. v. The Canadian Institute of Chartered Accountants et al.
Representing the Association of Chartered Certified Accountants in an action regarding the use of the ACCA trademark and designations ACCA and FCCA in Canada.
Counsel: Jonathan Colombo, Jerry Z. Chen and Amrita V. Singh
(Reported decisions: 2011 FC 1516)
(2010), (T-1261-10)
Home Depot of Canada Inc. and Homer TLC, Inc. vs. Custom Containers Inc. et al.
Successfully represented Home Depot in an action for infringement and passing off of its registered HOME DEPOT trademarks. Obtained an interim and interlocutory injunction and judgment for trademark infringement, including a permanent injunction, enjoining the defendants who consented to judgment from using, displaying or reproducing any trade marks, trade name or domain name including the words HOME DEPOT or the initials “H D” or “H D Disposal” or any confusingly similar name or mark in connection with a waste disposal bin service or any other business and requiring the defendants to permanently and completely efface the Home Depot trademarks appearing on or are associated with the defendants’ waste disposal bin services.
Counsel: Jonathan Colombo and Wynnie Chan
(2010), (T-1726-10)
Miranda Aluminum Inc. v. Miranda Windows & Doors Inc.
Acted for the applicant in expungement proceedings relating to the trademark MIRANDA for the custom design and installation of windows and doors.
Counsel: Jonathan Colombo
(Reported decisions: 2009 FC 669, 2010 FCA 104)
(2007), (T-1298-07, A-382-09)
Market Traders Institute Inc. v. Monetary Investment Group Inc.
Represented Market Traders Institute in an action for copyright infringement relating to training materials used to teach foreign currency exchange trading. A default judgment was obtained for $1,000,000 in damages and $50,000 in aggravated and exemplary damages.
Counsel: Jonathan Colombo and Josh Spicer
(Reported decisions: 2008 CanLII 65770 (ON SC))
(2006), (06-CV-305754PD2)
QAD Inc. v. Stratford Holdings Corporation
Represented QAD in an action for copyright infringement relating to QAD software used in managing manufacturing processes. A motion for summary judgment against Stratford Holding was brought. Although dismissed at first instance, the motion was granted in part by the Federal Court of Appeal. The action was later settled.
Counsel: Jonathan Colombo
(Reported decisions: 2007 FC 53, 2007 FCA 394)
(2006), (T-514-06; A-62-07)
Vizinczey v. Serendipity Point Films Inc.
Acted for the author Stephen Vizinczey in an application to recover royalties on the sale of the movie rights to his novel “In Praise of Older Women”. The defendant was unsuccessful in having the application converted into an action, and then a settlement was reached.
Counsel: Jonathan Colombo
(Reported decisions: 2007 CanLII 7410 (ON SC), 2007 CanLII 10908 (ON SC))
(2006), (06-CV-317673PD1)
Tigi Linea, LP et al v. Ecoly Canada Inc. et al.
Successfully represented Tigi Linea in a trademark infringement and passing off action with respect to the plaintiffs’ various TIGI registered trademarks (including TIGI, TONI & GUY) and unregistered trademarks (including BED HEAD and BED HEAD & Design) (the “TIGI trademarks”). Obtained an Anton Piller Order for seizure of all offending products, including related business records, not originating from plaintiffs but displaying one or more of the plaintiffs’ TIGI trademarks. Also obtained judgment against more than 25 corporate defendants, including a permanent injunction enjoining the defendants from (i) manufacturing, importing, distributing, exporting, sell, offering for sale, or advertising, any hair care or personal care product displaying any of the plaintiffs’ TIGI trademarks, including any counterfeit or genuine products and (ii) infringing the TIGI trademarks or passing off the defendants’ merchandise as and for those of the plaintiffs, or depreciating the value of the goodwill attaching to the TIGI trademarks. The plaintiffs also obtained an award of $500,000 from the defendants, including costs. The judgment was later varied to permit certain salons purchase genuine TIGI products from one particular supplier.
Counsel: Jonathan Colombo and Adam Bobker
(2003), (03-CV-244124CM1)
McDonald’s Restaurants of Canada Limited ats. A&W Food Services of Canada Inc.
Co-counsel for McDonald’s in a trademark infringement trial relating to a claim by A&W’s that McDonald’s use of CHICKEN MCGRILL violated A&W’s rights in the CHICKEN GRILL trademark.
Co-Counsel: Jonathan Colombo
(Reported decisions: 2005 FC 406, (2005), CPR (4th) 126 (FC))
(2001), (T-2023-01)
Nabisco Ltd. ats. Dole Food Co. et al.
Represented Nabisco in a contest with Dole over the ownership of the trademark FRUIT BOWLS in Canada.
Counsel: Robert MacFarlane and Jonathan Colombo
(Reported decisions: 2000 CanLII 15986 (FC), 2000 CanLII 16330 (FC))
(2000), (T-1161-00)
Warner-Lambert Co. et al. v. Concord Confections Inc.
Acted for Warner-Lambert in an action for infringement of its registered trademark CHICLETS by the sale of CHICLE gum products.
Counsel: Robert MacFarlane and Jonathan Colombo
(Reported decisions: 2001 FCT 139)
(1998), (T-1562-98)
Compuoffice Software Inc. ats. Compulife Software Inc.
Acted for Compuoffice Software to defend an infringement action and expungement proceeding by Compulife Software, with respect to the trademark COMPUOFFICE for computer software. The expungement proceedings were dismissed, and then the action for infringement was settled.
Counsel: Jonathan Colombo
(Reported decisions: 1997 CanLII 5905 (FC), 2001 FCT 559, 2002 FCT 1120)
(1997), (T-1398-97; T-2009-01)
Business Depot v. Office Depot
Acted for Business Depot (now Staples) as trademark co-counsel in litigation against Office Depot over the use of the DEPOT trademark and trade name for a big box office supply store. An interim and interlocutory injunction was granted when the litigation commenced. The action was settled shortly before trial.
Counsel: Cynthia Rowden, Jonathan Colombo, and Adam Bobker
(Reported decisions 1999 CanLII 9231 (FC), 2000 CanLII 14809 (FC), 2000 CanLII 15762 (FC), 2000 CanLII 16100 (FCA))
(1992), (T-3049-92; A-26-00)
 

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