Practice Areas

Trade-marks, Copyright & Media, Litigation

Qualifications

Ontario Bar 1986.
University of Toronto B.Sc. (magna cum laude) 1980.
Queen's University LL.B. 1983.
Registered Trade-mark Agent 1986.
Registered Patent Agent 1991.

Biography

Mark Evans is the Managing Partner of our Toronto office. Mr. Evans's intellectual property practice focuses on the domestic and international acquisition, clearance, prosecution, litigation and licensing of trade-marks. Mr. Evans has significant experience in counterfeiting issues, including the issuance of pre-trial injunctions and seizure orders. He also has expertise in the management of international trade-mark portfolios and in due diligence matters. Mr. Evans also advises clients on marketing law issues, including packaging and labelling and advertising requirements.  He represents a wide variety of clients, including consumer goods and apparel manufacturers, food and beverage companies, pharmaceutical companies, software developers, as well as handling considerable agency work for other law firms around the world.

Mr. Evans has written extensively within the field of intellectual property law, including articles in international publications such as Trademark World, Managing Intellectual Property, National Law Journal and the World Trademark Law Report. He has also co-authored, with Michael Manson of our Vancouver Office, the Trade-mark Litigation: Remedies and Procedures chapter of the IP Benchbook, which is an electronic textbook for the Canadian judiciary, published jointly by the National Judicial Institute and the Law Society of Upper Canada. Mr. Evans is a frequent panelist on intellectual property subjects and has spoken to various organizations, including the Intellectual Property Institute of Canada, the Canadian Corporate Counsel Association and the International Trademark Association. Mr. Evans also taught trade-mark law at Osgoode Hall Law School for several years, has lectured at the Oxford Intellectual Property Research Centre and has spoken at the McGill / IPIC Intensive Copyright course. During his academic career, Mr. Evans was awarded the prize for the highest grade in Intellectual Property Law in the Bar Admission course for Ontario.

Mr. Evans has been chosen repeatedly as one of "the world's leading trade-mark law experts" in an international survey conducted by Managing Intellectual Property magazine. He has been consistently recognized in the Canadian Legal LEXPERT Directory as a leading intellectual property lawyer, in Euromoney's Guide to the World's Leading Trade Mark Law Practitioners, in PLC Which Lawyer?, in the World Trade-mark Review, and has been selected to be included in the 2010 Best Lawyers in Canada and Chambers Global – The World's Leading Lawyers for Business. Mr. Evans has also been chosen by the World Trademark Review as one of Canada's "Experts' Experts" in trade-mark law.

Professional Involvement

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

Representative Cases

Trade-mark Oppositions and Appeals

Procter & Gamble Inc. v. Colgate-Palmolive Canada Inc. (2010 FC 231) -- Successfully resisted appeal of Opposition Board decision on behalf of Colgate-Palmolive, thereby permitting registration of a non-traditional mark for striped toothpaste.

H-D Michigan Inc. v MPH Group Inc. ((2006), 49 C.P.R. (4th) 435) -- Successful Federal Court appeal of Opposition Board decision, on behalf of Harley-Davidson, thereby blocking registration of trade-mark HARLEYWOOD. Harley-Davidson was represented before the Opposition Board by different counsel.

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

Interim/Interlocutory Injunctions and Seizure Orders

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

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

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

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

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

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

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

Summary Judgments

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

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

Trade-mark Expungements and Cancellations

Bereskin & Parr v. Fairweather (November 26, 2007) -- Federal Court of Appeal -- Successfully resisted appeal, and maintained registration of mark TARGET APPAREL, with award of costs in favour of client.

Fairweather Ltd. v. Registrar of Trade-Marks ((2006), 58 C.P.R. (4th) 50) -- Successful appeal, with award of costs in favour of client. Federal Court maintained registration of mark TARGET APPAREL for wearing apparel even though commercial use of mark had not yet recommenced in the marketplace.

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

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

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

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