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Trademark

Arnold Palmer Enterprises, Inc. v. 9015-6803 Quebec Inc. (One World Golf) et al.

Successfully represented Arnold Palmer Enterprises in enforcement proceedings relating to ARNOLD PALMER trademarks and copyright. Arnold Palmer Enterprises obtained judgment on consent granting a permanent injunction and $73,000 in damages.
Counsel: François Larose
(2017), (T-713-12)

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)

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)

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)

Heather Ruth McDowell v The Body Shop International plc

Successfully represented The Body Shop in trademark opposition against The Body Shop’s application to register the trademark HONEYMANIA for various cosmetics/skincare products.
Counsel: Cynthia Rowden and Meghan Dillon
(Reported decision: 2016 TMOB 150) (2016)
(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)

Marciano v Revlon et all

Successfully represented Revlon in a complex multi-party dispute in the Québec Superior Court involving licensed trademark rights. Georges Marciano, claiming rights in the GEORGES MARCIANO mark, noted goods bearing GEORGES MARCIANO sold on several websites, and sued three companies, including Revlon, who had, decades ago, been licensees of the GEORGES MARCIANO mark, as well as several other parties allegedly involved with the online sales. Revlon and several defendants disputed everything from the jurisdiction of Québec courts and statute limitations on the action, to the ownership of the GEORGES MARCIANO mark, whether or not the online goods were licensed, responsibility for supervising alleged counterfeits, and extent and scope of damage. Relying heavily on the evidence filed by Revlon the Québec Superior Court granted the defendants’ motion and declined jurisdiction, and dismissed, outright, Mr. Marciano’s claims against all defendants-petitioners.
Counsel: François Larose
(Quebec S.C. 2016)
(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)

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
Jonathan Colombo and Amrita V. Singh

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)

McDowell v Automatic Princess Holdings, LLC.

Successfully represented Automatic Princess Holding, LLC, owned by Mariah Carey, as respondent in an application for judicial review of a decision of the Registrar of Trademarks refusing the applicant’s request for leave to amend the statement of opposition. The application for judicial review was refused, with costs awarded to the respondent. Appeal heard by the Federal Court of Appeal, decision pending.
Counsel: Noelle Engle-Hardy and Jennifer McKenzie
(Reported decision: 2015 FC 980)
(2015), T-2094-14 and A-422-15

Bridgestone Corporation v. Campagnolo S.R.L., 2014 FC 37

Successfully represented Campagnolo S.r.L. in an appeal to the Federal Court by Bridgestone Corporation from an opposition decision in respect of Campagnolo’s application for the POTENZA trade mark. The TMOB rejected the grounds of opposition advanced by Bridgestone and the Federal Court dismissed Bridgestone’s appeal.
Counsel: Donald M. Cameron
(Reported decisions: 2014 FC 37)
(2014), (T-2242-12)

Good-O Beverage Company v I-D Foods Corporation and Merchant Adventurers Tea and Spice Company Ltd.

Representing Good-O Beverage Company in a trademark and copyright infringement action of OLD TYME JAMAICAN trademarks and copyrighted works.
Counsel: Adam Bobker
(2014), (T-2264-14)

Allergan Holdings France SAS and Allergan Inc. v. ATA Medical International Inc. and Bornagan Laboratories Ltd.

Represented and obtained successful settlement after discovery for Allergan in a trademark infringement action relating to the JUVÉDERM trademarks.
Counsel: Adam Bobker and Jennifer McKenzie
(2013), (T-1110-13)

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 and Labatt Breweries of Canada v. Molson Canada 2005 and Coors Brewing Company

Representing Anheuser-Busch and Labatt Breweries in an action relating to trademark infringement and passing off of Anheuser-Busch’s GRAB SOME BUDS trademark by Molson and Coors use of WHY NOT GRAB SOME STONES and GRAB SOME STONES.
Counsel: Mark Robbins
(2013), (CV-13-00482257)

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)

Arrow Electronics Inc. v. Arrowsoft Solutions Inc. (Canada) et al.

Represented and obtained successful settlement after discovery and mediation for Arrow Electronics in an action for trademark infringement and passing off.
Counsel: Adam Bobker and Michael Burgess
(2013), (T-560-13)

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)

Cofely Services S.A. v. Asima Realty Ltd.

Represented Cofely Services in an appeal of a decision of the Registrar of Trade-marks expunging AXIMA and AXIMA & Design trademarks.
Counsel: Brigitte Chan
(2013), (T-1149-13)

First Service Brokers Ltd. ats Firstservice Corporation

Representing First Service Brokers in a trademark infringement and passing off action relating to various FIRSTSERVICE trademarks.
Counsel: Don Cameron
(2013), (T-1009-13)

Groupe Vitroplus Inc. ats Uni-Select Inc.

Represented Groupe Vitroplus in an application commenced by Uni-Select to expunge the UNIPRO design trademark.
Counsel: Adam Bobker
(2013), (T-920-13)

Imperial Tobacco Canada Limited ats Philip Morris Products S.A.

Representing Imperial Tobacco in an appeal to the Federal Court by Philip Morris from an opposition decision in respect of Philip Morris’ application for the FLIP-TOP trademark.
Counsel: Brigitte Chan
(2013), (T-2066-13)

Jeremy Diamond Professional Corporation v. Mazin & Associates Professional Corporation

Representing Jeremy Diamond in a trademark passing off action relating to personal injury legal services and the 1-800-567-HURT telephone number.
Counsel: Adam Bobker
(2013), (CV-13-483786)

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)

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)

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)

Starwood Group Inc. v. Soho House Limited

Successfully represented Soho House Limited in an opposition by Starwood Group Inc. to the trademark SOHO HOUSE. Starwood Group Inc. relied on its SOHO family of trademarks. The Hearing Officer rejected all the grounds of opposition put forth by Starwood Group Inc.
Counsel: Cynthia Rowden and Jonathan Burkinshaw (Reported decision: 2013 TMOB 70)
(2013), (TMOB 70)

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)

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)

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)

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)

Coty Germany GmbH ats. London Drugs Limited

Represented the cosmetics company Coty in successful opposition and appeal of opposition relating to the registration of Coty’s GET THE LONDON LOOK trade mark. Case settled, and trademark is registered.
Counsel: Cynthia Rowden
(2012), (T-2291-12)

Dreamworks Animation LLC ats. Entechnevision Inc.

Acted for Dreamworks in a trademark infringement and passing off action brought against it relating to the trademark DREAMWORKS PUSS IN BOOTS. Case settled and trademark is registered.
Counsel: Cynthia Rowden
(2012), (T-321-12)

GlobeScan Inc. v. Globescan Investment Inc. et al.

Successfully obtained judgment for the survey company, GlobeScan, in an action for trademark infringement against an investment business using the same mark.
Counsel: Adam Bobker and Jean-Pierre Bouchard
(2012), (T-717-12)

Interactive Life Forms, LLC et al. v. Various

Represented Interactive Life Forms in actions for trademark infringement, passing off, and copyright infringement. The actions were brought against Canadian companies alleged to have sold counterfeit versions of Interactive Life Forms’ FLESHLIGHT products.
Counsel: Adam Bobker, Robert Storey, and François Larose
(2012)

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)

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)

Sprinkles Cupcakes, Inc. v. Dlish Cupcakes Inc. et al.

Represented Sprinkles Cupcakes in a passing off action relating to the get-up of its SPRINKLES stores.
Counsel: Adam Bobker
(Reported decisions: 2013 ONSC 866)
(2011), (CV-11-419490)

4358376 Canada Inc. (iTravel 2000) ats. 411 Travel Buys Limited

Defended iTravel 2000 in an action for passing off with respect to the 411 TRAVEL BUYS trade mark.
Counsel: Adam Bobker
(2010), (CV-10-410412)

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)

Human Resource Certification Institute v. Human Resources Professionals Association of Ontario

Represented the Human Resource Certification Institute in an action for passing off relating to the SPHR (Senior Professional Human Resources) trade mark and certification mark.
Counsel: Adam Bobker and Megan Langley Grainger
(2010), (T-513-10)

Indigo Books & Music, Inc. v. Transitional Media Inc. et al.

Represented Indigo in a trademark infringement action relating to the defendant’s use of the CHAPTERS, INDIGO, and CHAPTERS.INDIGO.CA trademarks.
Counsel: Jennifer McKenzie
(2010), (T-700-10)

Marriott International, Inc. ats. 1420291 Alberta Ltd. (PARK ‘N FLY)

Represented Marriott International, Inc. in a trademark infringement action in respect of the PARK ‘N FLY trademark.
Counsel: Cynthia Rowden
(2010), (T-770-10)

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)

Roofmart (Canada) Ltd. v. Roofsmart Systems Inc

Represented Roofmart in an action for trade mark infringement based on the defendant’s use of ROOFSMART. Claim was settled favourably at an early stage.
Counsel: Adam Bobker
(2009), (T-1945-09)

The Sherwin-Williams Company v. ICI Canada Inc.

Represented Sherwin-Williams in an action for passing off relating to the COLOR TO GO trade mark.
Counsel: Christine Pallotta
(2009), (T-1178-09)

Ferring B.V. and Ferring Inc. v. Odan Laboratories Ltd.

Represented the drug company Ferring in an action for passing off and copyright infringement relating to Ferring’s PICO-SALAX products and Odan’s PICO-DAN products.
Counsel: Adam Bobker
(2008), (T-866-08)

Polaris Industries Inc. v. PowerMax Motorsports Corp.

Represented Polaris in a trademark infringement action relating to its Star Logo, OUTLAW, and TRAIL BOSS trademarks.
Counsel: Christine Pallotta and Megan Langley Grainger
(2008), (T-1711-08)

4358376 Canada Inc. (iTravel 2000) v. Acquaviva et al.

Represented iTravel 2000 in an action for passing off.
Counsel: Adam Bobker
(2007), (07-CV-327816PD3)

Heys International Ltd. v. Malhotra et al.

Represented luggage company Heys in an action for passing off relating to the unauthorized use of the getup of HEYS ATHENA luggage.
Counsel: Adam Bobker
(2007), (07-CV-329002PD3)

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)

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)

Parfums de Coeur, Ltd. v. Asta

Application to expunge a trademark registration for BOD MAN.
Counsel: Megan Langley Grainger
(Reported decisions: 2009 FC 21)
(2007), (T-1612-07)

Sports Network Inc. et al. v. Jean Gagne et al.

Prosecuted a French language action for infringement of the trademark RDS for the production, broadcasting and distribution of television programs by a sports bar operating under the name RDS ZONE without the permission of the Sports Network.
Counsel: Adam Bobker and Brigitte Chan
(Reported decisions: 2009 CF 308)
(2007), (T-527-07)

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)

Formula One Licensing BV v. Formule 1 Emporium Inc.

Opposed an application to register F1EMPORIUM on behalf of Formula One Licensing.
Counsel: Megan Langley Grainger
(Reported decisions: 2011 TMOB 124)
(2006), (Application No. 1,200,074)

Laboratoires Quinton Internationale S.L. v. Biss

Acting for Laboratoires Quinton, a European manufacturer of QUINTON therapeutic marine plasma, in a French language action to expunge a Canadian trademark registration for QUINTON held by a former Canadian distributor of QUINTON products. The trial of this action is scheduled for April 2016.
Counsel: Adam Bobker, Brigitte Chan and François Larose
(Reported decisions: 2010 FC 358)
(2006), (T-1554-06)

Motorola Canada Ltd. v. Or

Represented Motorola in an action for trademark and copyright infringement and passing off based on the unauthorized sale of MOTOROLA radios and software.
Counsel: Adam Bobker and Josh Spicer
(Reported decisions: 2010 ONSC 487, 2010 ONSC 1787)
(2006), (06CV-308646-PD3)

Sun Life Co. of Canada v. Royal Bank of Canada

Opposed an application by the Royal Bank to register the trademark ÉTABLISSEMENT STANDARD GARANTI for insurance services, on behalf of Sun Life.
Counsel: Megan Langley Grainger
(Reported decisions: 2011 TMOB 173)
(2006), (Application No. 1,265,002)

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)

Heys International Ltd. v. Bentley Leathers Inc.

Represented luggage maker Heys in an action for passing off and infringement with respect to the design of the plaintiff’s XCASE luggage. Settled after discovery.
Counsel: Adam Bobker
(2005), (05-CV-297820PD2)

Heys International Ltd. v. Harveen International Luggage

Represented luggage manufacturer Heys in an action for passing off relating to the getup of its HEYS ATHENA luggage.
Counsel: Adam Bobker
(2005), (05-CV-299831PD1)

Krav Maga Enterprises, LLC v. Edge Combat Fitness Inc.

Acted for Krav Maga Enterprises in trademark infringement proceedings relating to the defendant’s use of the trademark KRAV MAGA.
Counsel: Adam Bobker
(Reported decisions: 2006 FC 112)
(2005), (T-1506-05)

Lending Tree Corp. ats. Lending Tree, LLC

Acted for Lending Tree Corp. in a judicial review proceeding launched during opposition proceedings relating to the trademark LENDING TREE.
Counsel: Adam Bobker
(Reported decisions: 2006 FC 373, 2007 FCA 70)
(2005), (T-588-05; A-172-06)

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)

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)

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)

Burberry Ltd. v. Howard Colton et al.

Represented Burberry Ltd. in an action for trademark infringement and passing off relating to the BURBERRY and BURBERRY CHECK trademarks.
Counsel: Robert Storey, Adam Bobker and Mike Charles
(Reported decisions: 2003 FCT 107)
(2002), (T-415-02)

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)

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)

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)

C.E.O. International Holdings Inc. ats. Natural Waters of Viti Ltd.

Defended C.E.O. International Holdings in an action for passing off and copyright infringement relating to FIJI bottled water.
Counsel: Mike Charles
(Reported decisions: 2000 CanLII 15141 (FC))
(1999), (T-1335-99)

Imax Corporation v. Showmax, Inc. et al.

Represented Imax Corporation in an action for infringement of its registered trademark IMAX by use of the mark SHOMAX for a new large format movie theatre. After the Federal Court granted Imax an interlocutory injunction, the action was settled.
Counsel: Robert MacFarlane
(Reported decisions: 1999 CanLII 8639 (FC), 2000 CanLII 14748 (FC))
(1999), (T-592-99)

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)

Robert Mondavi Winery v. Spagnol’s Wine & Beer Making Supplies Ltd.

Acted for Mondavi Winery in expungement proceedings related to the trademark registration WOODBRIDGE ESTATES FROM OUR VINEYARD TO YOUR HOME for wine-making kits based on Mondavi’s prior use of WOODBRIDGE for wine. The proceeding settled and the registration was assigned to Mondavi.
Counsel: Robert MacFarlane
(Reported decisions: 2001 CanLII 22119 (FC), 2001 FCT 794, 2001 FCT 1005)
(1999), (T-1294-99)

First Base Inc. v. Riverside Paper Corp.

Represented Canadian paper company First Base in a trademark dispute with a US competitor. The dispute was with respect to First Base’s registered trademarks MARBLE BOND and GRANITE BOND for paper products. Interim and interlocutory injunctions were obtained in an Ontario Court trademark infringement and passing off action. Even though the registrations were expunged in a Federal Court proceeding, the dispute was settled favourably during the trial of the passing off action.
Counsel: Robert MacFarlane and Mike Charles
(Reported decisions: 1999 CanLII 8530 (FC))
(1998), (98-CV-145861CM; T-1112-98)

Sta-Rite Industries Inc. v. GSW Inc.

Represented Sta-Rite Industries in trademark opposition proceedings against its competitor GSW. GSW was attempting to register the trademark STA-DRY for use in association with submersible and utility pumps. The Registrar’s decision to deny the application was upheld on appeal to the Federal Court and the Federal Court of Appeal.
Counsel: Mike Charles
(Reported decisions: 1999 CanLII 8381 (FC), 2001 FCA 89)
(1998), (T-1652-98, A-568-99)

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)

Baylor University v. Hudson’s Bay Co.

Acted for Baylor University in proceedings to overcome an opposition by the Hudson’s Bay Co. to the registration of BAYLOR as a trademark for collegiate merchandise. The opposing board and trial judge both ruled in favour of Hudson’s Bay Co., but the Federal Court of Appeal overturned the trial judge and allowed the registration.
Counsel: Robert MacFarlane and Robert Storey
(Reported decisions: 1998 CanLII 8903 (FC), 2000 CanLII 15626 (FCA))
(1997), (T-2590-97; A-35-99)

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)

Warner Lambert Canada Inc. and Warner Lambert Export Limited ats Fournier Phama Inc. and Fournier Industrie et Sante S.A

Defended Warner Lambert in a trademark and expungement action relating to the LIPITOR trademark.
Counsel: Michael E. Charles and Andrew McIntosh
(Reported decisions: (1998), 82 CPR (3d) 493 (FCTD) and (1997), 77 CPR (3d) 417 (FCTD))
(1997), (T-2000-97)

Kirkbi AG et al. v. Ritvik Holdings Inc. et al.

Represented Lego in a passing off action against Mega Bloks based on the confusion caused in the marketplace by Mega Bloks having copied the stud pattern on LEGO bricks.
Counsel: Robert MacFarlane, Mike Charles, Christine Pallotta and Adam Bobker
(Reported decisions: 1998 CanLII 7434 (FC), 1998 CanLII 8100 (FC), 2000 CanLII 15333 (FC), 2000 CanLII 16454 (FC), 2001 FCT 850, 2002 FCT 585, 2002 FCT 1109, 2003 FCA 297, 2005 SCC 65)
(1996), (T-2799-96; A-395-02;)

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)

Sprint Communications Co. L.P. et al. v. Merlin International Communications

Represented the US telecommunications company, Sprint Communications, in a trademark infringement and passing off action against a Canadian company that was using the trade name SPRINT CANADA in association with a marketing, advertising and public relations business. The action was tried and the defendant company was enjoined.
Counsel: Robert MacFarlane and Mike Charles
(Reported decisions: 2000 CanLII 16461 (FC), 2001 FCT 358)
(1994), (T-2814-94)

Techniquip Ltd. v. Canadian Olympic Association

Successfully overcame a trademark opposition by the Canadian Olympic Association to the registration of a stick figure trademark based on the COA’s official marks comprising stick figures. An initial opposition board decision was overturned on appeal to the Federal Court, and that decision was upheld on appeal to the Federal Court of Appeal.
Counsel: Mike Charles
(Reported decisions: 1998 CanLII 7573 (FC), 1999 CanLII 8993 (FCA))
(1994), (T-1532-94; A-266-98)

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;)

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)

Unitel Communications Inc. v. Bell Canada

Co-counsel for Unitel Communications in a trademark expungement proceeding resulting in various trademarks owned by Bell Canada being expunged from the Trade-marks Register.
Co-Counsel: Cynthia Rowden
(Reported decisions: (1995), 61 CPR (3d) 12 (FCTD) and (1994), 57 CPR (3d) 99 (FCTD))
(1991), (T-718-91, A-309-95)
 

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