Mark Robbins

Partner

Toronto, 416.957.1605

Practice Group(s)

Trademarks
Litigation
Copyright & Digital Media

Education

B.A., University of Toronto, 1989
LL.B., Queen's University, 1992

Qualifications

Admitted to the Ontario Bar, 1994
Registered Canadian Trademark Agent, 2005

Professional Memberships

American Bar Association (ABA)
Intellectual Property Institute of Canada (IPIC), Fellow
International Trademark Association (INTA)
Toronto Intellectual Property Group (TIPG)

Mark L. Robbins

B.A., LL.B.

Mark’s practice focuses on trademarks, copyright, and litigation with an emphasis on trademark protection and enforcement issues including trademark infringement, passing off, and oppositions.

Mark regularly appears before the Trade-marks Opposition Board and in Federal and Ontario court proceedings concerning trademark and copyright matters. He has also been co-counsel in a number of leading trademark cases concerning the rights of foreign trademark owners in Canada, trademark infringement on internet websites, and challenges to the rights of public authorities and universities to control the use of certain words and marks in Canada.

Mark was the Chair of the Canada subcommittee of the International Trademark Association’s (INTA) International Amicus Committee from 2012 to 2015.  With Dan Bereskin, he acted as counsel for the INTA as intervener in the Supreme Court of Canada in Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27.  He is now on the INTA Enforcement Committee. 

Mark has been actively involved with the Intellectual Property Institute of Canada (IPIC) having assisted in organizing, moderating, and presenting numerous IPIC educational seminars and meetings. 

When not practicing law, Mark enjoys skiing, cycling, and tennis.

Bereskin & Parr LLP
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Our People

Mark Robbins

Mark L. Robbins

B.A., LL.B.

Partner
Toronto      Ph: 416.957.1605

Practice Group(s)
Trademarks
Litigation
Copyright & Digital Media

Education
B.A., University of Toronto, 1989
LL.B., Queen's University, 1992

Qualifications

Admitted to the Ontario Bar, 1994
Registered Canadian Trademark Agent, 2005

Mark’s practice focuses on trademarks, copyright, and litigation with an emphasis on trademark protection and enforcement issues including trademark infringement, passing off, and oppositions.

Mark regularly appears before the Trade-marks Opposition Board and in Federal and Ontario court proceedings concerning trademark and copyright matters. He has also been co-counsel in a number of leading trademark cases concerning the rights of foreign trademark owners in Canada, trademark infringement on internet websites, and challenges to the rights of public authorities and universities to control the use of certain words and marks in Canada.

Mark was the Chair of the Canada subcommittee of the International Trademark Association’s (INTA) International Amicus Committee from 2012 to 2015.  With Dan Bereskin, he acted as counsel for the INTA as intervener in the Supreme Court of Canada in Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27.  He is now on the INTA Enforcement Committee. 

Mark has been actively involved with the Intellectual Property Institute of Canada (IPIC) having assisted in organizing, moderating, and presenting numerous IPIC educational seminars and meetings. 

When not practicing law, Mark enjoys skiing, cycling, and tennis.

Articles

Speaking Engagements

Official Marks

Intellectual Property Institute of Canada
Webinar
May 12, 2017

Mark Robbins will be speaking at the upcoming IPIC webinar "Official Marks" on May 12. The presentation is part of the 15 webinar series “Patent & Trademark Case Law Review” hosted by IPIC.

For more information, please click here.

Masterpiece, Confusion and Expert Evidence

Osgoode Hall Law School, York University
Toronto, ON
February 6, 2017

On February 6, 2017 Mark Robbins was a featured guest speaker at the Osgoode Hall Law School course on Judgment & Decision Making. Dr. Ruth M. Corbin is the course instructor. The lecture focused on the role of expert evidence in assessing likelihood of confusion in trademark cases in light of the Supreme Court of Canada’s decision in Masterpiece v. Alavida Lifestyles

Passing Off Webinar

Intellectual Property Institute of Canada
Webinar
May 10, 2016

Mark Robbins will be speaking at the upcoming IPIC webinar “Passing Off” on May 10th. The presentation is part of the 15 webinar series “Patent & Trademark Case Law Review” hosted by IPIC.

For more information, please click here.

Official Marks Webinar

Intellectual Property Institute of Canada
Webinar
April 26, 2016

Mark Robbins will be speaking at the upcoming IPIC webinar “Official Marks” on April 26th. The presentation is part of the 15 webinar series “Patent & Trademark Case Law Review” hosted by IPIC.

For more information, please click here.

Event Attendance

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.

31st Annual Intellectual Property Law Conference

American Bar Association (ABA)
Bethesda, MD
April 6 - 8, 2016

Mark Robbins, Andrew McIntosh and Adam Bobker will be attending the 31st Annual Intellectual Property Law Conference in Bethesda, MD.

This conference from the American Bar Association Section of Intellectual Property Law is recognized as the world's premier IP conference.

These three packed days of learning enable you to earn a year's worth of CLE credit from expert sessions presented by the leaders in every area of the profession.

For more information and to register for the event click here.

International Trademark Association

2015 Leadership Meeting
Panama City, Panama
November 17 - 20, 2015

Dan Bereskin, Cynthia Rowden, Susan Keri, Scott MacKendrick, Mark Robbins, Janice Bereskin and François Larose will be attending the 2015 Leadership Meeting.

To learn more about the event, please click here.

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.

American Bar Association

30th Annual Intellectual Property Law Conference
Betheda, MD
March 25 - 27, 2015

Cynthia Rowden will be speaking at the 30th Annual Intellectual Property Law Conference on March 25th from 10:30 a.m. to 12:00 p.m.

Robert Storey, Mark Robbins and Adam Bobker will be attending the conference.

Attendees will have the opportunity to gain knowledge on latest industry information through dynamic CLE programming and innovative networking events. They will also be able to obtain insight and ideas from IP experts and practitioners from around the world who will share and discuss the most critical issues in IP law.

The American Bar Association is committed to serving its members, improving the legal profession, eliminating bias and enhancing diversity, and advancing the rule of law throughout the United States and around the world.

For further information, please click here.

Accolades

  • World Trademark Review 1000 2017
  • 2016 Canadian Legal Lexpert Directory
  • Who’s Who Legal: Trademarks 2016
  • Expert Guides: Trade Mark 2016
  • World Trademark Review 1000 - The World's Leading Trademark Professionals 2016
  • Managing Intellectual Property’s 2015 IP Stars Handbook: Trade mark and Copyright
  • World Trademark Review 1000 – The World’s Leading Trademark Professionals 2015
  • Expert Guides: Guide to the World’s Leading Trade Mark Law Practitioners 2014
  • Managing Intellectual Property’s IP Stars Handbook 2014: Trade mark and Copyright
  • World Trademark Review 1000: The World's Leading Trademark Professionals 2014
  • World Trademark Review 1000: The World's Leading Trademark Professionals 2013
  • World Trademark Review 1000: The World's Leading Trademark Professionals 2012

Professional Memberships

American Bar Association (ABA)
Intellectual Property Institute of Canada (IPIC), Fellow
International Trademark Association (INTA)
Toronto Intellectual Property Group (TIPG)

Litigation Cases

Anheuser-Busch, LLC v Coors Brewing Company
Successfully represented Anheuser-Busch in trademark opposition proceedings. A-B successfully opposed a Coors application to register the trademark STONES for brewed alcoholic beverages.
Counsel: Mark L. Robbins
(Reported decision: 2016 TMOB 85)
(2016)
L'Oreal v. Cosmetica Cabinas, S.L.,
Successfully represented Cosmética Cabinas in trademark opposition proceedings. Cosmética Cabinas successfully opposed L'Oréal’s application to register the trademark INOA for hair care products, and the Federal Court of Canada dismissed an appeal.
Counsel: Mark L. Robbins
(Reported decision: 2016 FC 680)
(2016)
Richtree Market Restaurants Inc. v. Movenpick Holding AG
Successfully represented Mövenpick in trademark opposition proceedings. The TMOB rejected an opposition by Richtree Market Restaurants to Mövenpick’s application to register a MARCHE & Design trademark for restaurant services, and the Federal Court of Canada dismissed an appeal.
Counsel: Mark L. Robbins
(Reported decision: 2016 FC 1046)
(2016)
Anheuser-Busch, LLC and Labatt Breweries of Canada LP/La Brasserie Labatt du Canada S.C.S. v. Mark Anthony Properties Lt
Representing Anheuser-Busch and Labatt Breweries in a trademark infringement action relating to LIME-A-RITA and STRAW-BER-RITA trade marks of Anheuser-Busch.
Counsel: Mark Robbins
(2013), (T-1583-13)
Anheuser-Busch, LLC ats Coors Brewing Company and Molson Canada 2005
Represented Anheuser-Busch in response to Coors/Molson application to strike Anheuser-Busch’s GRAB SOME BUDS trademark registration. The Federal Court rejected the Coors/Molson argument that the decision in The Thymes, LLC v. Reitmans, 2013 FC 127 meant that Anheuser-Busch’s registration was invalid. Following a relatively common practice, the trademark application had been amended to replace “proposed use” with “use and application/registration in the US” as the basis of registration in Canada. The Court accepted Anheuser-Busch’s arguments that grounds to invalidate are more limited than grounds of opposition, and that the application never contained a misstatement.
Counsel: Mark Robbins
(Reported decision: 2014 FC 716)
(2013), (T-1416-13)
Pandora’s Makeup Box Inc. ats Pandora Jewelry, LLC
Represented Pandora’s Makeup Box in an application by Pandora Jewelry appealing a decision by the Registrar of Trade-marks not to expunge the PANDORA’S trademark.
Counsel: Mark Robbins and Jonathan Burkinshaw
(2013), (T-492-13)
Sanofi-Aventis Canada Inc. and AgaMatrix Inc. ats Tremblay Harrison, Inc.
Representing Sanofi-Aventis and AgaMatrix in a trademark infringement and passing off action relating to Tremblay Harrison’s HAPPY FACE DESIGN trademark and a counterclaim by Sanofi-Aventis and AgaMatrix expunging the HAPPY FACE DESIGN trademark.
Counsel: Mark Robbins
(2013), (T-264-13)
Anheuser-Busch, LLC et al. ats. Molson Canada 2005
Defended Anheuser-Busch in a trademark infringement and passing off action relating to Anheuser-Busch’s BUSCH ICE beer and Moslon’s BLACK ICE trade mark.
Counsel: Mark Robbins
(2012), (T-719-12)
Masterpiece Inc. v. Alavida Lifestyles Inc.
Appeared on behalf of the International Trademark Association as intervener at the Supreme Court of Canada in an expungement proceeding relating to the trade mark MASTERPIECE LIVING for retirement residences.
Counsel: Dan Bereskin and Mark Robbins
(Reported decisions: 2011 SCC 27)
(2011), (SCC No. 33459)
Gallup, Inc. et al. v. Leger Marketing Inc.
Representing the Gallup polling company in an action for trademark infringement and passing off relating to the use of the GALLUP trade mark by Léger Marketing.
Counsel: Mark Robbins
(2011), (CV-11-429708)
Ontario Dental Assistants Association v. Canadian Dental Association
Represented the Ontario Dental Assistants Association in opposition proceedings relating to the CDA [Certified Dental Assistants] certification mark.
Counsel: Mark Robbins and Elizabeth Afolabi
(Reported decisions: 2011 TMOB 125, 2013 FC 266, 2013 FCA 279, 117 CPR (4th) 249 (FCA))
(2011), (T-1600-11; A-132-13)
Target Corporation et al. v. Fairweather Ltd.
Represented Target Corporation in a passing off action to restrain the defendants’ use of the TARGET APPAREL trademark and bulls eye device in association with retail department stores in Canada, in anticipation of the 2013 launch of TARGET stores in Canada.
Counsel: Robert MacFarlane , Mark Robbins and Megan Langley Grainger
(Reported decisions: 2011 FC 758)
(2010), (T-1902-10)
Molson Canada 2005 v. Anheuser-Busch Inc.
Represented Anheuser-Busch in opposition proceedings relating to the BUDWEISER trade mark.
Counsel: Mark Robbins
(Reported decisions: 2010 FC 283)
(2009), (T-127-09)
TSC Stores L.P. ats. Tractor Supply Co. of Texas
Defended TSC Stores’ long standing use of the trademark TSC STORES for retail store services in a trademark infringement and passing off action brought by a former related company.
Counsel: Shawn Jacka and Mark Robbins
(Reported decisions: 2009 FC 154, 2010 FC 883, 2009 FCA 352, 2011 FCA 46)
(2007), (T-1804-07, A-89-09, A-331-10)
Thorkelson ats. Candrug Health Solutions Inc.
Acted for the owner of registrations for the trademarks CANADA DRUGS and CANADADRUGS.COM for an online pharmacy in infringement and expungement proceedings.
Counsel: Mark Robbins
(Reported decisions: 2007 FC 411)
(2006), (T-318-06, T-532-06. T-417-06)
Bereskin & Parr v. Fairweather Ltd.
Acted in cancellation proceedings relating to a registration for the trademark TARGET APPAREL for men’s clothing.
Counsel: Mark Robbins
(Reported decisions: 2006 FC 1248, 2007 FCA 376)
(2005), (T-713-05; A-514-06)
China Brands Food Products Inc. ats. Wing Wah Food Manufactory Products Inc.
Acted for China Brands to defend its PEONY BRAND & Design trademark registration for food colour solutions.
Counsel: Mark Robbins
(Reported decisions: 2005 FC 1611)
(2005), (T-262-05)
Hayden ats. Smith
Defended the artist Michael Hayden in a copyright infringement action in which it was alleged that the artist’s work entitled All Things Being Equal was an infringement of the plaintiff’s copyright in a sketch of a similar concept. The action was dismissed at trial and the trial judgment was upheld on appeal.
Counsel: Mark Robbins
(Reported decisions: 2008 CanLII 64395 (ON SC), 2009 CanLII 9394 (ON SC))
(2003), (C-1410/03)
Target Corporation et al. ats Target Convenience Stores Limited
Defended Target Corporation in a quia timet trademark infringement and passing off action brought by an Ontario convenience store and gas bar that owned several Canadian trademark registrations for TARGET and related marks. The plaintiff was seeking an order effectively prohibiting Target Corporation from using its TARGET brand in Canada. The case was settled after mediation.
Counsel: Robert MacFarlane and Mark Robbins
(2003), (T-220-03)
College of Chiropodists of Ontario v. Canadian Podiatric Medical Association
Sought judicial review of the publication of PODIATRIST as an official mark of the Canadian Podiatric Medical Association, on behalf of the College of Chiropodists of Ontario. The decision of the Registrar to publish the mark was quashed.
Counsel: Mark Robbins
(Reported decisions: 2004 FC 1774)
(2002), (T-1230-02)
Weight Watchers International v. Vale Printing Ltd. et al.
Represented Weight Watchers in a passing off action relating to the use of the WEIGHT WATCHERS and WW trademarks on internet websites. An interlocutory injunction was granted restraining the transfer or assignment of the internet websites pending trial.
Counsel: Robert MacFarlane and Mark Robbins
(Reported decisions: 2000 CanLII 15164 (FC), 2000 CanLII 15617 (FC), 2001 FCT 578)
(2000), (T-238-00)
1227624 Ontario Ltd. (The Muskoka Fine Watercraft and Supply Company) ats. Ivy Lea Shirt Co.
Defended Muskoka Fine Watercraft in an appeal to the Federal Court from a trademark opposition board decision. The TMOB decision had allowed Muskoka Fine Watercraft’s application to register the trademark CHESTNUT CANOE CO for canoe paddles. The appeal was dismissed.
Counsel: Mark Robbins
(Reported decisions: 2001 FCT 252)
(1999), (T-1983-99)
Anheuser-Busch, Inc. v. Moosehead Breweries Ltd.
Acted for Anheuser-Busch in an appeal to the Federal Court from an opposition decision relating to the trademark Moosehead & Design filed by Moosehead Breweries.
Counsel: Mark Robbins
(1999), (T-1269-99)
Piscitelli v. Ontario (Liquor Control Board)
Acted for the owner of the registered trademark MILLENNIUM for alcoholic beverages in a judicial review proceeding to challenge the publication of MILLENIUM as an official mark of the LCBO. After the publication of the LCBO’s official mark was declared “ineffective”, an Ontario Court action was brought against the LCBO for trademark infringement.
Counsel: Mark Robbins
(Reported decisions: 2001 FCT 868)
(1999), (T-107-99)
Manufacturer’s Life Insurance Co. ats. London Life Insurance Co.
Assisted Manulife to overcome oppositions by London Life to Manulife’s applications to register the trademarks NEW FREEDOM TO PLAN YOUR FUTURE and LA LIBERTE DE PLANIFIER VOTRE AVENIR for use in association with life insurance services. The oppositions were based on London Life’s FREEDOM 55/LIBERTÉ 55 and related trademarks. The Registrar’s decisions to reject London Life’s oppositions were upheld by the Federal Court.
Counsel: Mike Charles and Mark Robbins
(Reported decisions: 1999 CanLII 7775 (FC), 1999 CanLII 7781 (FC))
(1996), (T-1109-96; T-1284-97)
Enterprise Rent-A-Car et al. v. Singer et al.
Represented Enterprise Rent-A-Car in passing off actions against a Canadian company that had misappropriated the goodwill in Canada attached to the ENTERPRISE trade name and trademark. The trial judge’s decision to enjoin the defendant was upheld on appeal by the Federal Court of Appeal.
Counsel: Dan Bereskin, Mike Charles, and Mark Robbins
(Reported decisions: 1998 CanLII 7405 (FCA))
(1993), (T-1078-93, T-397-93;)
 

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