Barrister and Solicitor,
François Guay is a member of the firm's Executive Committee and has practiced exclusively in intellectual property litigation for close to 30 years. He has in-depth experience in advising clients on IP litigation strategies, conducting discoveries, examinations and cross-examinations, as well as preparing highly persuasive arguments to be presented in court.
François is among the top five most experienced intellectual property litigators in Canada and has appeared before the Courts of Quebec and the Federal Court of Canada. He has argued many cases that have resulted in leading jurisprudence in the fields of patents, trademarks, industrial designs, copyright, unfair competition, trade secrets and computer related technology. More than 100 of the cases he has been involved in thus far have been reported in Canada. He also has a vast amount of experience with extraordinary recourses such as interim or interlocutory injunctions, seizures before judgement, and anti-counterfeiting and anti-piracy matters.
François's client activities involve mid-size to large Canadian and foreign corporations, including:
- Microsoft Corporation
- Bauer Hockey Corp.
- Air Canada
- Canadian National Railway Company (CN)
- Nobel Biocare USA
- Quadco Equipment Inc.
- Sony Computer Entertainment America Inc.
- Cyprus Embassy Trade Center
- Imperial Tobacco Canada Limited
- Activision Blizzard
- Chanel SARL
- The Cheesecake Factory
- Parmalat Canada
- Shell Canada Limited
- Süd-Chemie AG
Rankings and recognition
- Recognized in World Trademark Review 1000 – The World's Leading Trademark Professionals 2016
- Named Canada's Trademark Litigator of the Year for 2013 and 2014 by Benchmark Canada
- Recognized annually since the inaugural edition in 2012 as a 'Local Litigation Star' in Benchmark Canada under Intellectual Property
- Recognized annually as an 'IP Star' since the inaugural edition in 2014 of Managing Intellectual Property’s IP Stars Handbook: Trademark & Copyright
- Recognized in The LEXPERT®/American Lawyer Guide to the Leading 500 Lawyers in Canada under Intellectual Property and Intellectual Property Litigation
- Recognized in each edition of Euromoney's Expert Guides: Guide to the World's Leading Trademark Law Practitioners since 2012
- Recognized annually since the inaugural edition in 2011 of World Trademark Review 1000 – The Definitive Guide to Trademark Legal Services
- Named 2011 Intellectual Property Lawyer of the Year for Montreal by Best Lawyers
- Recognized annually since the inaugural edition in 2006 of The Best Lawyers in Canada under Intellectual Property Law
- Recognized annually since the inaugural edition in 2006 of Chambers Global — The World's Leading Lawyers for Business under Intellectual Property: Litigation
- Recognized annually in Who's Who Legal: Patents since 2009
- Featured in Lexpert's Special Edition on Litigation and The Globe and Mail's Report on Business Magazine as a Leading Canadian Litigator since 2008
- Selected to appear in The Canadian Legal LEXPERT® Directory under Intellectual Property and Litigation — Intellectual Property
- Recognized annually in the LEXPERT® Guide to the Leading US/Canada Cross-Border Litigation Lawyers in Canada under Intellectual Property Litigation since 2007
- Recognized annually since the inaugural edition in 2012 of IAM Patent 1000 - The World's Leading Patent Practitioners under Litigation
- Recognized annually in IAM Patent Litigation 250 — The World's Leading Patent Litigators since the inaugural edition in 2011
- Recognized in each edition of Euromoney's Expert Guides: Patents since 2007
- Martindale-Hubbell, Peer Review Rated, AV® Preeminent™
- Recognized annually in PLC Which Lawyer? under IP: patent litigation since 2007
- Recognized annually since the inaugural edition in 2010 of Who's Who Legal: Canada under Patents
- Recognized in the 2015 edition of Who’s Who Legal 100 under Intellectual Property
Bodum USA Inc and PI Design AG v Trudeau Corporation (1889) Inc, 2012 FC 1128 (Federal Court) — Successfully represented the defendant Trudeau Corporation in an industrial design infringement action where the Court rejected the plaintiffs’ claim of industrial design infringement and declared their industrial design registrations invalid. This was the first industrial design infringement decision on the merits emanating from any level of the Federal Court since a 1993 amendment to the infringement provisions of the Industrial Design Act.
Marlboro Canada Limited v Philip Morris Products SA, 2012 FCA 201 (Federal Court of Appeal) — Successfully represented the plaintiffs by counterclaim Imperial Tobacco Canada Limited and Marlboro Canada Limited in a trademark infringement action of the MARLBORO word mark. The Federal Court of Appeal, overturning the decision of the trial judge, held that Philip Morris and Rothmans, Benson & Hedges, by selling a cigarette package without a brand name but incorporating the well-known design elements of Philip Morris’ international MARLBORO package, had infringed the Imperial Tobacco’s exclusive rights in the MARLBORO word mark in Canada. The Supreme Court of Canada dismissed Philip Morris’ application for leave to appeal of this decision. My colleagues and I recently received the 2012 Canadian Trademark Milestone Case of the Year award from Managing Intellectual Property (U.K.) for our success in this case.
Easton Sports Canada Inc v Bauer Hockey Corp and Nike International Limited, 2011 FCA 83 — François successfully represented Bauer Hockey Corp. and Nike International Limited in this appeal, which confirms the trial decision in 2010 FC 361.
Nike International Limited and Bauer Hockey Corp v Easton Sports Canada Inc, 2010 FC 361 (Federal Court); confirmed on appeal 2011 FCA 83 (Federal Court of Appeal) — Successfully represented Bauer Hockey and Nike International, which had the validity of their patent for a hockey skate confirmed by the Court. The patent was also found to be infringed by more than 30 models of skate sold by the defendant, Easton Sport.
Phostech Lithium Inc v Valence Technology Inc, 2011 FCA 107 — With Jeremy Want and Jean-Sébastien Dupont, successfully represented Phostech Lithium Inc. in having the Federal Court of Appeal stay execution of a Federal Court judgment in a patent infringement case until issuance of the decision on appeal.
Microsoft Corp c 9038-3746 Québec Inc, 2010 FCA 151 — François represented Microsoft, the respondent (plaintiff) in this software counterfeiting case. The appellant (defendant) pleaded guilty to two charges of contempt of court for selling Microsoft counterfeit software against an injunction of the court and was thus ordered to pay a fine of $50,000 for each offence. The defendant had his appeal from that sentence dismissed, the Federal Court of Appeal finding that he had shown total disregard for the law and malicious and selfish contempt for the courts.
Producteurs Laitiers du Canada v Republic of Cyprus (Ministry of Commerce, Industry & Tourism), 2010 FC 719 — François represented the Republic of Cyprus, which appealed from the decision of the Trademarks Opposition Board dismissing its application to register the certification mark HALLOUMI for use in association with a particular cheese produced in Cyprus.
Bauer Hockey Corp v Easton Sports Canada Inc, 2010 FC 361 — François represented Bauer Hockey and Nike International, which had the validity of their patent for a hockey skate confirmed by the Court. The patent was also found to be infringed by more than 30 models of skate sold by the defendant, Easton Sport.
Prenbec Equipment Inc v Timberblade Inc, 2010 FC 23 — François represented Prenbec Equipment, the plaintiff in a saw tooth patent infringement case. In that interlocutory decision, Prenbec Equipment successfully had the Federal Court order the Patent Re-examination Board to stay the re-examination proceedings of the patent that were launched by the defendant. The Court found that the defendant was merely attempting to avoid dealing with the issue of credibility surrounding its alleged prior art.
Air Canada v AIS Infonetics Inc, 2009 FC 668 — François represented Air Canada, the defendant in a patent infringement action. In that interlocutory decision, Air Canada successfully had the plaintiff motion for security for damages dismissed. The Court held that AIS had not met the lower threshold of showing that the claim was even arguable.
Prenbec Equipment Inc v Timberblade Inc, 2009 FC 584 — François represented Prenbec Equipment, the plaintiff in a saw tooth patent infringement case. In this interlocutory decision, the defendant failed to convince the Court that the proceedings had to be stayed pending the re-examination proceedings of the patent.
Shell Canada Ltd v PT Sari Incofood Corp, 2008 FCA 279 —François represented Shell Canada, the opponent against the registration of the trademark JAVACAFE for various foods and beverages. The decisions of the Trademarks Opposition Board and the Federal Court were reversed by the Federal Court of Appeal. The trademark JAVACAFE was found to be descriptive considering that Java is an island well-known for its coffee.
MacLennan v Gilbert Tech Inc, 2008 FCA 35 — François represented Mr. MacLennan and Quadco Equipment in this second appeal to the Federal Court of Appeal in a patent infringement action brought against Gilbert Tech. The Court found that the patent for a saw tooth and tooth holder was infringed by the customers who were replacing the plaintiff's teeth with the defendant's, thus remaking the patented invention and not repairing it. The Court also found that the defendant, by referring to the plaintiff's teeth in its price list, infringed the patent by inducement.
Microsoft Corp v Cerrelli, 2007 FC 1364 — François represented Microsoft, which was awarded half of its costs on an exceptional solicitor/client basis considering that the defendants’ conduct in the software counterfeiting action was tinted with bad faith.
MacLennan v Gilbert Tech Inc, 2006 FCA 204 — François represented Mr. MacLennan and Quadco Equipment in this first appeal to the Federal Court of Appeal in a patent infringement action brought against Gilbert Tech. The Federal Court of Appeal held that the Trial Judge erred in applying the law on infringement by inducement and returned the matter to the Trial Judge.
Bauer Nike Hockey Inc v Tour Hockey, 2003 FCT 451 — François represented Bauer Nike Hockey, the plaintiff in a trademark infringement action. Bauer Nike Hockey was granted a summary judgment by the Court based on a settlement offer accepted by the defendant.
Excelled Sheepskin & Leather Coat Corp v YM Inc (Sales), REJB 2002-27573, J.E. 2002-200 (Que CA) (Nuss J.A.) — François represented YM Inc., which successfully had the Quebec Court of Appeal reverse the permanent injunction granted against them by the Superior Court in a copyright and passing-off action.
Diamant Toys Ltd v Jouets Bo-Jeux Toys Inc, 2002 FCT 384 — François represented Diamant Toys, the plaintiff in a copyright infringement action of drawings and photographs relating to a line of toy products. In this interlocutory decision, the plaintiff was successful in obtaining an order for seizure before judgment of the defendant’s products both in its possession and in the possession of third parties.
Sport Maska inc c Canstar Sports Group Inc, EYB 1994-84516 (Que CS) — François represented Canstar Sports Group, the defendant in an action brought by Sport Maska for passing off of its hockey helmets. Following a very thorough review of the law of passing off by the Quebec Superior Court, the defendant prevailed.
2426-7536 Quebec Inc v Provigo Distribution Inc (1992), 50 CPR (3d) 539 (Que SC) (Jasmin J.) — François represented 2426-7536 Quebec Inc., the plaintiff in this copyright infringement action. The plaintiff was successful in convincing the Quebec Superior Court that copyright subsisted in his pictograms and his plans for the interior and exterior of grocery stores, which were found to have been reproduced without his consent.
Martinray Industries Ltd v Fabricants National Dagendor Manufacturing Ltd (1991), 41 CPR (3d) 1 (FCTD) (Denault J.) — François represented Fabricants National Dagendor, the defendant in this folding doors patent infringement and validity action. The defendant successfully had the plaintiff’s claim of infringement dismissed and, in counterclaim, had the main claims of the patent invalidated for being broader than the disclosure, obviousness and for prior sale.
Giffin v Canstar Sports Group Inc (1990), 29 CPR (3d) 26 (FCTD) (Rouleau J.) — François represented Canstar Sports, the defendant in this skate boots patent infringement action. On a motion for interlocutory injunction, the plaintiff failed to demonstrate that there was a serious issue to be tried.
Marque d'or inc c Clayman, EYB 1988-77910 (Que CS) (Gonthier J.) — François represented the plaintiffs in a complex unfair competition case. Direct solicitation of the employees of the plaintiffs by a former shareholder and director was found to amount to unfair competition.
Positron inc c Desroches, EYB 1988-77722 (CS) — François was involved in this case, which has become a leading authority in the Province of Quebec on the matter of trade secrets.
- Fellow, Intellectual Property Institute of Canada
- Member, International Trademark Association
- Member, International Association for the Protection of Intellectual Property (AIPPI)
- Member, European Communities Trade Mark Association
- Member, International League of Competition Law (LIDC)
- Member, Association des juristes pour le droit de la vigne et du vin
- Member, Canadian Bar Association
- "Les dommages en matière de brevets," Bureaux de l'ABC-Québec, Montreal, May 2012
- "La contrefaçon et ses impacts sur l'économie et les entreprises canadiennes" (co-presenter: Sanjay D. Goorachurn), Congrès annuel du Barreau du Québec, Montreal, May 2009
- "Recent Anti-Piracy Developments in Canada" (panel discussion moderated by Sanro Zlobec), joint Intellectual Property Institute of Canada and the New York State Bar Association summer meeting, Montreal, July 2008
- "Aspects commerciaux et litigieux de la PI reliés aux transactions de fusions et acquisitions et aux licences" (co-presenter: Sanjay D. Goorachurn), Congrès annuel du Barreau du Québec, Mont-Tremblant, QC, June 2007
- "Valoriser et commercialiser les actifs de propriété intellectuelle," Les contrats de cession, Canadian Institute, Montreal, April 2006
- "Aspects of the relationship between employer and employee in copyright : Canada," International Association for the Protection of Intellectual Property (AIPPI) 42nd World Congress, Paris, France, October 2010
- "Mock Trial with Oral Testimony" (workshop participant), The Trademarks Practitioner, IPIC-McGill Advanced Trademarks Course, Montreal, August 2010