R. Scott MacKendrick

Partner

Toronto, 416.957.1675

Practice Group(s)

Patents
Chemical
Mechanical & Industrial Processes
Medical Devices
Industrial Designs
Trademarks
Litigation
Regulatory, Advertising & Marketing
Copyright & Digital Media

Education

B.A.Sc. (Chem. Eng.), University of Toronto, 1982
LL.B., Queen's University, 1985

Qualifications

Admitted to the Ontario Bar, 1987
Registered Canadian Trademark Agent, 1987

Professional Memberships

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

R. Scott MacKendrick

B.A.Sc. (Chem. Eng.), LL.B.

Scott MacKendrick is a partner with Bereskin & Parr LLP and member of the Litigation practice group.

Scott practices in all areas of intellectual property law, with a focus on litigation. He has been involved in patent litigation across a broad range of technologies, including pharmaceutical, chemical and mechanical technologies, and has been involved in trademark, copyright, industrial design, trade secret litigation, and in domain name dispute resolution. He has an active practice before the Canadian Trade-marks Opposition Board. Scott also advises clients on intellectual property portfolio strategies, with a particular emphasis on trade-mark portfolio management.

Scott is currently the Chair of the Intellectual Property Institute of Canada's (IPIC) Educational Foundation, and is the co-Chair of the International Trademark Association’s (INTA) Course on International Trademark Law and Practice. He is currently, and also has been, an active committee member for a number of IP organizations, including the Canadian Bar Association (CBA), the American Bar Association's Section of Intellectual Property Law (ABA-IPL), and the American Intellectual Property Law Association (AIPLA).

Scott is a passionate supporter of the University of Toronto. He is an Adjunct Professor of Patent and Trade Secret law at the University’s law school, the President of the University of Toronto Alumni Association, the past Chair of the University's College of Electors, and a past board member of the University of Toronto Engineering Alumni Association Executive. Scott is also a recipient of the University of Toronto Arbor Award.

Scott has also taught at Osgoode Hall Law School at York University and at the University of Victoria, and was repeatedly an instructor at the McGill University-IPIC Trade-mark Practitioner Advanced Course.

Scott speaks frequently on a wide variety of intellectual property topics. He is also the author of numerous intellectual property publications and is on the panel of contributors to the World Trademark Review Daily.

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R. Scott MacKendrick

R. Scott MacKendrick

B.A.Sc. (Chem. Eng.), LL.B.

Partner
Toronto      Ph: 416.957.1675

Practice Group(s)
Patents
Chemical
Mechanical & Industrial Processes
Medical Devices
Industrial Designs
Trademarks
Litigation
Regulatory, Advertising & Marketing
Copyright & Digital Media

Education
B.A.Sc. (Chem. Eng.), University of Toronto, 1982
LL.B., Queen's University, 1985

Qualifications

Admitted to the Ontario Bar, 1987
Registered Canadian Trademark Agent, 1987

Scott MacKendrick is a partner with Bereskin & Parr LLP and member of the Litigation practice group.

Scott practices in all areas of intellectual property law, with a focus on litigation. He has been involved in patent litigation across a broad range of technologies, including pharmaceutical, chemical and mechanical technologies, and has been involved in trademark, copyright, industrial design, trade secret litigation, and in domain name dispute resolution. He has an active practice before the Canadian Trade-marks Opposition Board. Scott also advises clients on intellectual property portfolio strategies, with a particular emphasis on trade-mark portfolio management.

Scott is currently the Chair of the Intellectual Property Institute of Canada's (IPIC) Educational Foundation, and is the co-Chair of the International Trademark Association’s (INTA) Course on International Trademark Law and Practice. He is currently, and also has been, an active committee member for a number of IP organizations, including the Canadian Bar Association (CBA), the American Bar Association's Section of Intellectual Property Law (ABA-IPL), and the American Intellectual Property Law Association (AIPLA).

Scott is a passionate supporter of the University of Toronto. He is an Adjunct Professor of Patent and Trade Secret law at the University’s law school, the President of the University of Toronto Alumni Association, the past Chair of the University's College of Electors, and a past board member of the University of Toronto Engineering Alumni Association Executive. Scott is also a recipient of the University of Toronto Arbor Award.

Scott has also taught at Osgoode Hall Law School at York University and at the University of Victoria, and was repeatedly an instructor at the McGill University-IPIC Trade-mark Practitioner Advanced Course.

Scott speaks frequently on a wide variety of intellectual property topics. He is also the author of numerous intellectual property publications and is on the panel of contributors to the World Trademark Review Daily.

Articles

The Requirement of Causation in an Accounting of Profits – Federal Court of Appeal rules on Availability of Non-Infringing Alternatives and Apportionment of Non-Infringing Services
Scott MacKendrick and Anastassia Trifonova
March 16, 2017
Download PDF
Canadian Trademark Cases 2016 – And the awards go to…
Mark Robbins and Susan Keri and Cynthia Rowden and Scott MacKendrick
February 24, 2017
Download PDF
Is Use of a Mark for Services Also Use on Goods Sold?
Cynthia Rowden and Scott MacKendrick
November 29, 2016
Download PDF
7 Things Brand Owners Should Know About CETA and Bill C-30
Cynthia Rowden and Scott MacKendrick and Laura MacDonald
November 7, 2016
Download PDF
Bereskin & Parr’s Trademark Litigators in the Courts
October 12, 2016
Download PDF
“But for”, “Could” and “Would”: The Patent Damages Approach to Non-infringing Alternatives
Scott MacKendrick and Melanie Szweras
August 5, 2016
Download PDF
Privilege for Patent and Trademark Agents now in effect for Canada
Stephen Beney and Scott MacKendrick
June 24, 2016
Download PDF
Temporarily Confused: Exploring Initial Interest Confusion
Scott MacKendrick and Anastassia Trifonova
June 9, 2016
Download PDF
Utility - The Heightened Disclosure Pendulum Swings Again
Melanie Szweras and Scott MacKendrick
March 14, 2016
Download PDF
Top Trademark Cases from the Canadian Courts in 2015
January 19, 2016
Download PDF
With Longstanding and Extensive Use, Is Evidence of Actual Confusion Needed to Prove a "Likelihood" of Confusion?
Scott MacKendrick and Jerry Chen and Nathan Haldane
January 13, 2016
Download PDF
CBSA Releases Update of D Memorandum on Copyright and Trademarks
Cynthia Rowden and Scott MacKendrick and Tamara Céline Winegust
December 10, 2015
Download PDF
“Can a misstatement in my trademark application come back to haunt my trademark registration?”
Scott MacKendrick and Mina Chana and Tamara Céline Winegust
December 2, 2015
Download PDF
Supreme Court Update – Ephemeral Copies, Technological Neutrality and the Copyright Act
Scott MacKendrick and Tamara Céline Winegust and Anastassia Trifonova
November 27, 2015
Download PDF
TPP IP Chapter Summary Released – Are More IP Changes Coming?
Scott MacKendrick and Melanie Szweras and Amrita V. Singh
October 6, 2015
Download PDF
The Latest Take on Canadian Trademark Ownership Issues
Scott MacKendrick and Noelle Engle-Hardy
October 5, 2015
Download PDF
More Changes to Come for Canada’s Intellectual Property Laws
Scott MacKendrick and Tamara Céline Winegust
April 23, 2015
Download PDF
Federal Court Judge Sees Red: Rare Interlocutory Injunction Granted
Scott MacKendrick and Amrita V. Singh
April 6, 2015
Download PDF
Tag, You’re It! … Or Not
Scott MacKendrick and Tamara Céline Winegust
March 10, 2015
Download PDF
Federal Court Declines to Take a Full Bite Out of Trademark Infringer
Scott MacKendrick and Wynnie Chan
March 5, 2015
Download PDF
Canada Takes the Battle on Counterfeits to its Borders
Scott MacKendrick and Tamara Céline Winegust
January 5, 2015
Download PDF
Flashing Lights: Rare Interlocutory Injunction Granted
Scott MacKendrick and Amrita V. Singh
December 19, 2014
Download PDF
The Customs Request for Assistance Regime for Counterfeit Goods May Be in Force in Early 2015
Scott MacKendrick and Tamara Céline Winegust
December 10, 2014
Download PDF
Canada's Combating Counterfeit Products Legislation Nears Passage
Scott MacKendrick and Tamara Céline Winegust
October 2, 2014
Download PDF
Canadian Businesses: On your Mark! What You Need to Know Now About the Amendments to the Trademarks Act
Cynthia Rowden and Scott MacKendrick
July 31, 2014
Download PDF
Amendments to the Canadian Trademarks Act – 20 Points You Need to Know (The Bill is Just too Big for a Top 10 List!)
Dan Bereskin, Q.C. and Cynthia Rowden and Scott MacKendrick
June 19, 2014
Download PDF
Is Change Coming to Canada’s Official Marks Regime? Possibly
Scott MacKendrick
June 12, 2014
Download PDF
Canada’s New Trademark Regime – Impact on Renewals, Allowance and Classification
Dan Bereskin, Q.C. and Cynthia Rowden and Scott MacKendrick
May 21, 2014
Download PDF
Big Trademark Changes Taking Place in Canada and Asia
Scott MacKendrick
May 20, 2014
Download PDF
Where Does Canada Stand on Fame?
Scott MacKendrick and Amrita V. Singh
May 5, 2014
Download PDF
Bill C-31: What are the Practical Issues of Trademark Rights in a Non-Use Regime?
Dan Bereskin, Q.C. and Cynthia Rowden and Scott MacKendrick
April 9, 2014
Download PDF
Sweeping Changes to Canadian Trade-marks Act: At What Cost to Trademark Owners?
Dan Bereskin, Q.C. and Cynthia Rowden and Scott MacKendrick
April 1, 2014
Download PDF
Significant Changes to the Trade-marks Act an Omnibus Budget Implementation Bill Tabled in Parliament – Simplification or Complication?
Cynthia Rowden and Scott MacKendrick
March 28, 2014
Download PDF
Federal Court Balances Copyright Enforcement and Internet Privacy
Scott MacKendrick and Jerry Chen and Tamara Céline Winegust
February 28, 2014
Download PDF
CETA Summary Tabled in House of Commons
Scott MacKendrick and Tamara Céline Winegust
October 30, 2013
Download PDF
Federal Court of Appeal Upholds Mechanical Sound Prediction and Punitive Damages Decision
Scott MacKendrick and Jerry Chen
October 9, 2013
Download PDF
Canada: Five Proposals to Watch in Anticounterfeiting Legislation
Cynthia Rowden and Scott MacKendrick
June 17, 2013
Download PDF
Getting your handle on Twitter, channelling YouTube, and what about Facebook?
Scott MacKendrick and Catherine Lovrics
January 14, 2013
Download PDF
Reacting to change
Scott MacKendrick and Catherine Lovrics
May 15, 2012
Download PDF
Data Protection in Canada
Scott MacKendrick and Christina Capone Settimi
March 10, 2009
Download PDF
Current Issues in Canadian Trademark and Copyright Law
Scott MacKendrick and Christina Capone Settimi
September 26, 2007
Download PDF

Speaking Engagements

139th Annual Meeting

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

Scott MacKendrick will be speaking at the 139th INTA Annual Meeting's course on International Trademark Law and Practice as part of the North American panel.

For more information about meeting, please click here.

Federal Court Advocacy and Practice

Osgoode Hall Law School
Toronto, ON
March 23, 2017

Scott MacKendrick will be speaking at the Federal Court Advocacy and Practice taking place on March 23, 2017.

Scott will be addressing situations that raise ethical and professional dilemmas for counsel.

For more information on this program, please click here.

Fifth Annual University of Toronto Patent Colloquium

University of Toronto, Faculty of Law
Toronto, ON
November 4, 2016

Scott MacKendrick will be speaking at the Fifth Annual University of Toronto Patent Colloquium as part of a panel discussion entitled: Early Stage Claim Construction: Should it be Implemented in Canada?

The panel will be held from 9:15 - 10:30 am.

For more information, please click here.

Temporarily Confused: Exploring Initial Interest Confusion

Ontario Bar Association (OBA)
Toronto, ON
June 9, 2016

Join Scott MacKendrick on June 9th for the panel discussion Temporarily Confused: Exploring Initial Interest Confusion, part of the Ontario Bar Association’s professional development course on Intellectual Property and the Internet. The course will cover recent developments in IP law and what may constitute trademark infringement in the digital age.

For more information, please visit oba.org.

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?

Licensing Webinar

Intellectual Property Institute of Canada
Webinar
May 17, 2016

Scott MacKendrick will be speaking at the upcoming IPIC webinar “Licensing” on May 17th. The presentation is part of the 15 webinar series “Patent & Trademark Case Law Review” hosted by IPIC.

For more information, please click here.

Fourth Annual Patent Colloquium

University of Toronto - Faculty of Law
Toronto, ON
November 20, 2015

Scott MacKendrick and Don Cameron will be speaking at the Fourth Annual University of Toronto Patent Colloquium on November 20, as part of the Sound Prediction and the Promise of a Patent panel.

For more information, please click here.

Cincinnati Bar Association, Cleveland IP Law Assocation

The 5th All Ohio Annual Institute on IP
Cincinnati, OH and Cleveland, OH
October 7 - 8, 2015
Download PDF

Scott MacKendrick is speaking at 3:00 PM on Canadian Trademark Law Developments, as part of the Soft IP and Advertising Breakout Session.

 

Cincinatti:

Wednesday, October 7, 2015
Sharonville Convention Center
11355 CHester Rd.
Cincinnati, OH 45246


Cleveland:
Thursday, October 8, 2015
Marriott Downtown Key Center
127 Public Square
Cleveland, OH 44114

 

For information on registration contact:
Lori Krafte, (513) 242-2324,
Tara Kastelic, (216) 622-8329,

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.

Toronto Intellectual Property Group (TIPG)

Bill C-43: Understanding changes to the Patent Act and your practice
Toronto, ON
March 24, 2015

On Tuesday, March 24th Scott MacKendrick and fellow Toronto IP professional Matt Zischka will review the upcoming changes to Canada’s Patent Act, the motivations behind these changes, and the impact they are expected to have on patent practice.

TIPG is a non-profit organization comprised of lawyers, patent agents, trade-mark agents, students and trainees in the Greater Toronto Area with an interest in intellectual property law and related litigation.

The event will be held at the Rosewater Supper Club at 5:30PM – 9:00PM. For further information, please click here.

AIPPI Canada

AGM Lunch & Learn
Ottawa, ON
November 20, 2014

Cynthia Rowden and Scott MacKendrick will be covering the new trademark regulations at AIPPI Canada’s AGM Lunch and Learn on November 20th from 11:30 a.m. to 2:00 p.m. Philip Mendes da Costa, Don MacOdrum and Kevin Shipley will be attending.

AIPPI is a non-profit international organization which unites practitioners, academics and the owners of intellectual property.

INTA

“The Times They Are a Changing”: A Discussion of Changes to Canadian Trade-mark Practice
November 4, 2014

Bereskin & Parr will be hosting an INTA roundtable event, entitled “The Times They Are a Changing: A Discussion of Changes to Canadian Trade-mark Practice” on Tuesday, November 4th from 12:00 p.m. to 2:00 p.m.

Through video conference, Cynthia Rowden and Scott MacKendrick will be speaking about the recent proposed changes to Canadian trademark law. The federal government has introduced sweeping changes to Canadian trademark legislation and has recently released a consultation paper on the proposed Trademark Regulations. The consultation period ends November 30, 2014. The proposed changes will dramatically impact Canadian trademark practice and represent a fundamental shift to our law. Attendees will have the opportunity to discuss the amendments and what they mean to brand owners, and the Canadian trademark professionals who represent them.

Bereskin & Parr LLP

Webinar: Canada’s New Trademark Regime
July 10, 2014

Cynthia Rowden and Scott MacKendrick will be discussing Canada’s new trademark laws and how it will affect businesses and its clients on Thursday, July 10th at 4 p.m. EDT. 

Moderated by Don Cameron, the hour-long webinar will give participants the opportunity to understand the approved amendments to the Trademarks Act, and how it will fundamentally change the process of acquiring and enforcing trademark rights in Canada. Suggestions for steps trademark owners can take now, and how they can prepare for the amendments will be discussed. 

Interested participants are encouraged to RSVP for this session at their earliest convenience by contacting

 

INTA

Academic Course on International Trademark Law and Practice
Hong Kong
May 10 - 12, 2014

Scott MacKendrick will be speaking on the Canadian component of "Trademark Law Comparison" at International Trademark Association (INTA) Hong Kong’s Academic Course on International Trademark Law and Practice on May 10, 2014 from 11:15 a.m. – 12:15 p.m.

Scott will emphasize on the instances in which a country follows a typical pattern and instances in which it is unusual; focus on how to best obtain protection in these jurisdictions for a trademark; discuss practices of the trademark offices of the U.S. and Canada; and discuss administrative actions and litigation procedures in these jurisdictions.

Held during the Annual Meeting, INTA’s Academics Course on International Trademark Law is taught by professors and practitioners from around the world and examines an international trademark topic from historical, philosophical, legal, and practical considerations.

The Law Society of Upper Canada (LSUC)

3rd Annual In-House Counsel Summit
Toronto, ON
February 25, 2013

Scott MacKendrick will be speaking at this event on Best Approaches to Protecting IP Within Your Organization at 11:10 a.m. 

For more information go to: http://ecom.lsuc.on.ca/cpd/product.jsp?id=CLE13-0020501

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, Catherine Lovrics and Mark Robbins will be attending the 139th INTA Annual Meeting.

For more information about meeting, please click here.

Mental Health in the Workplace: Stigma, Reality and Hope

LFDIN/LLD
Toronto, ON
November 22, 2016

Micheline Gravelle, Scott MacKendrick, Isi Caulder, Amrita Singh and Margaret Seko will be Law Firm Diversity and Inclusion Network (LFDIN) and Legal Leaders for Diversity (LLD) event Mental Health in the Workplace: Stigma, Reality and Hope on Tuesday, November 22nd.

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.

2016 IPO Annual Meeting

Intellectual Property Owners Association
New York, NY
September 11 - 13, 2016

Scott MacKendrick, Bhupinder Randhawa, James Raakman, Ainslie Parsons and Wynnie Chan will be attending the 2016 IPO Annual Meeting.

This conference will take place from September 11 - 13 in New York and bring together experts in the fields of patent, trademark and copyright.

For more information on this conference, please 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.

Ontario Bar Association

Institute 2015
Toronto, ON
February 4 - 7, 2015

On Tuesday, February 4th Catherine Lovrics will be speaking on “Your 2015 Entertainment, Media and Communications Law Review: Recent Developments and Practice Updates”. R. Scott MacKendrick and Jill Tonus will be speaking on “Managing Your Client’s Online and Mobile Presence: Information Technology Issues and Intellectual Property Update” on Wednesday, February 5th.

The CPD credited event is the largest Canadian legal professional development conference, attracting 1700 attendees from the legal profession. It provides Ontario lawyers with a unique opportunity to enhance their skills and knowledge in the law, while participating in a variety of social and professional events.

For further information, please click here.

International Trademark Association (INTA)

135th Annual Meeting
Dallas, TX
May 4 - 8, 2013

Dan Bereskin, Lloyd Sarginson, Cynthia Rowden, Robert Storey, Susan Keri, Scott MacKendrick, Terry Edwards, Jonathan Colombo, Jennifer McKenzie, Victor Krichker, Janice Bereskin, Brigitte Chan, François Larose, Mina ChanaSharyn Costin, Meghan Dillon, and Jonathan Burkinshaw are scheduled to attend.  

For more information go to: www.inta.org

Accolades

  • World IP Review: Leaders 2017
  • Benchmark Litigation Canada 2017
  • Who’s Who Legal Patents 2017
  • World Trademark Review 1000 2017
  • Best Lawyers in Canada 2017
  • 2016 Canadian Legal Lexpert Directory
  • IAM Patent 1000 2016
  • Who’s Who Legal: Trademarks 2016
  • Expert Guides: Trade Mark 2016
  • Who’s Who Legal: Patents 2016
  • Benchmark Litigation Canada 2016
  • World Trademark Review 1000 - The World's Leading Trademark Professionals 2016
  • Who's Who Legal Canada 2015
  • Best Lawyers in Canada 2016
  • Managing Intellectual Property IP Stars Handbook 2015: Patents
  • 2015 Canadian Legal Lexpert Directory
  • Who's Who Legal: Trademarks 2015
  • IAM Patent 1000 2015
  • Managing Intellectual Property’s 2015 IP Stars Handbook: Trade mark and Copyright
  • Expert Guides: Guide to the World's Leading Patent Law Practitioners 2015
  • Benchmark Litigation Canada 2015
  • World Trademark Review 1000 – The World’s Leading Trademark Professionals 2015
  • Best Lawyers in Canada 2015
  • Managing Intellectual Property’s 2014 IP Stars Handbook: Patent
  • The International Who’s Who of Trademark Lawyers 2014
  • Expert Guides: Guide to the World’s Leading Trade Mark Law Practitioners 2014
  • The 2014 Canadian Legal Lexpert Directory
  • IAM Patent 1000 2014
  • 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
  • Who's Who Legal: Canada 2013
  • The International Who’s Who of Trademark Lawyers 2013
  • The Canadian Legal Lexpert Directory 2013
  • IAM Patent 1000 – The World’s Leading Patent Practitioners 2013
  • Expert Guides: Guide to the World’s Leading Patent Law Practitioners 2013
  • World Trademark Review 1000: The World's Leading Trademark Professionals 2013
  • The International Who’s Who of Trademark Lawyers 2012
  • The Canadian Legal Lexpert Directory 2012
  • IAM Patent 1000 – The World’s Leading Patent Practitioners 2012
  • Expert Guides: Guide to the World's Leading Trade Mark Law Practitioners 2012
  • World Trademark Review 1000: The World's Leading Trademark Professionals 2012
  • Who’s Who Legal: Canada 2011
  • IAM Patent Litigation 250 – The World’s Leading Patent Litigators 2011

Professional Memberships

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

News

  • Don Cameron Serves as Editor for Carswell’s Newly Released Second Edition of the Canadian Trade-Mark Law Benchbook
  • Scott MacKendrick and Amrita V. Singh Speak on Bill C-43 before the House of Commons’ INDU Committee
  • Canadian Government Reintroduces Combating Counterfeit Products Act
  • Scott MacKendrick Receives University of Toronto Arbor Award 2012
  • Canadian Trade-mark Law Benchbook Released With Five Bereskin & Parr Contributors

Media Coverage

  • Scott MacKendrick quoted in the National Post article “Eli Lilly loses NAFTA challenge brought against Canada”
  • Scott MacKendrick Quoted by Law Times in Response to B.C. Ruling on Search Engine
  • Legal Post asks Scott MacKendrick about the Combating Counterfeit Products Act
  • Scott MacKendrick’s Tweet Gets Referenced by Managing IP
  • Law Times Quotes Scott MacKendrick and Cynthia Rowden
  • Scott MacKendrick’s View on Official Marks
  • Scott MacKendrick and Cynthia Rowden Share Their Thoughts on Canada’s Trade Deals
  • Don MacOdrum, Philip Mendes da Costa, Don Cameron, and Scott MacKendrick were quoted in the article “IP heavyweights join Bereskin & Parr” which appeared in the January 16, 2012, edition of the Law Times.

Litigation Cases

002152706 Ontario Limited and 1521167 Ontario Limited v. Changer & Dresser Inc.
Representing the plaintiff 002152706 Ontario Limited and 1521167 Ontario Limited in a patent infringement action relating to spot welding cap changers and spot welding cap magazines.
Counsel: R. Scott MacKendrick and Jason Hynes
(2016), (T-1202-16)
Caesarstone Sdot-Yam Ltd. v Ceramiche Caesar S.P.A
Successfully represented Caesarstone in an appeal of a trademark opposition decision. On appeal, the Federal Court allowed the appeal in part and referred the matter back “to a different member” of the Opposition Board, holding that the original Opposition Board decision reached an “unreasonable conclusion” on the likelihood of confusion.
Counsel: Scott MacKendrick
(Reported decision: 2016 FC 895)
(2016)
Ontario Die International Inc. v Diamex Inc.
Representing Ontario Die International Inc. in a patent infringement action relating to an apparatus and method for detachably mounting cutting knives.
Counsel: R. Scott MacKendrick and Jason Hynes
(2016), (T-784-16)
Homeserve plc v. Martino Contractors Ltd.,
Successfully represented Homeserve in trademark opposition proceedings relating to the mark MARTINO HOMESERV.
Counsel: Scott MacKendrick
(Reported decision: 2015 TMOB 119)
(2015)
Petroleos Mexicanos v. Intermix S.A.
Successfully represented Pemex in trademark expungement proceedings relating to Intermix’s PEMEX registration.
Counsel: Scott MacKendrick
(Reported decision: 2013 FC)
(2013)
Rapid Aid Ltd. v. TheraPearl, LLC et al
Successfully represented Caesarstone in an appeal of a trademark opposition decision. On appeal, the Federal Court allowed the appeal in part and referred the matter back “to a different member” of the Opposition Board, holding that the original Opposition Board decision reached an “unreasonable conclusion” on the likelihood of confusion.
Counsel: Scott MacKendrick
(Reported decision: 2013 F.C.)
(2013)
Bellagio Limousines v. Mirage Resorts, Incorporated
Successfully maintained one of two Mirage Resorts trademark registrations for BELLAGIO in cancellation proceedings.
Counsel: Scott MacKendrick
(Reported decision: 2012 TMOB 220)
(2012)
News Holdings Limited v. Lorenzo Salvalaggio
Successfully represented News in domain name proceedings related to the newscorp.ca domain name.
Counsel: Scott MacKendrick
(Reported decision: 2007, DCA 1013-CIRA (C.I.R.A.))
(2007)
Pfizer Canada Inc. et al. v. Lilly ICOS LLC et al.
Represented Pfizer in patent infringement proceedings in which a patent for Pfizer’s drug VIAGRA was asserted against Eli Lilly’s drug CIALIS, a competing drug for the treatment of erectile dysfunction. The action settled before trial.
Counsel: Robert MacFarlane, Andrew McIntosh and Mike Charles
Don Cameron and Scott MacKendrick represented Eli Lilly in the action. They joined Bereskin & Parr LLP in 2012.
(Reported decisions: 2003 FC 1278, 2004 FC 223)
(2003), (T-1721-03)
Biogen, Inc. v. Xcalibur Communications
Successfully represented Biogen in domain name proceedings related to the biogen.ca domain name.
Counsel: Scott MacKendrick
(Reported decision: (2002), 22 C.P.R. (4th) 239 (C.I.R.A.))
(2002)
Pfizer Canada Inc. et al. ats. Lilly ICOS LLC et al.
Represented Pfizer in a patent impeachment action relating to one of Pfizer’s patents for the drug VIAGRA brought by Eli Lilly. The action settled before trial.
Counsel: Robert MacFarlane, Andrew McIntosh and Mike Charles
Don Cameron and Scott MacKendrick represented Eli Lilly in the action. They joined Bereskin & Parr LLP in 2012.
(Reported decisions: 2006 FC 1465, 2006 FC 1500, 2006 FC 1501)
(2002), (T-341-02)
 

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