Trade-mark oppositions and appeals

H-D Michigan Inc. v. MPH Group Inc., 2006 FC 538 — 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 and obtained trade-mark registration for Greta Garbo Signature trade-mark on behalf of estate of Greta Garbo.

Trade-mark expungements and cancellations

Bereskin & Parr v. Fairweather, 2007 FCA 376 — 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 FC 1248 — 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.

Pre-trial injunctions and seizure orders

Target Corporation v. Fairweather Ltd (2011), T-1902-10 — Successfully defended interlocutory injunction in Federal Court in passing off case concerning operation of TARGET APPAREL chain of retail stores, with award of costs against the plaintiff.

Memberships

• Fellow, Intellectual Property Institute of Canada; member of the International Trade-mark Issues Committee
• Member, International Trademark Association; member of the Trademark Reporter Committee; former member of the INTA Bulletin Committee and the Meetings Committee
• Member, Canadian Bar Association; member of the Trade-marks Committee of the National Intellectual Property Section

Teaching activities

• Participation in the Mock Cross-Examination as part of the IPIC-McGill summer program Managing Trade-mark Disputes, Montreal, August 2011
• "Comparative Discussion of U.S. and Canadian Trade-mark Prosecution Practice", IPIC-McGill Advanced Trade-marks Course, Montreal, August 2010
• "The Trade-marks Practitioner" (course director), IPIC-McGill Advanced Trade-marks Course, Montreal, August 2010
• "Comparative Discussion of U.S. and Canadian Trade-mark Prosecution Practice", IPIC-McGill Advanced Trade-marks Course, Montreal, August 2009
• "The Trade-marks Practitioner" (assistant course director), IPIC-McGill Advanced Trade-marks Course, Montreal, August 2009
• "The Trade-marks Practitioner" (assistant course director), IPIC-McGill Advanced Trade-marks Course, Montreal, August 2008

Publications

• "Canadian expungement proceedings," Canadian ReMARKS, February 2012
• "Target Brands, Inc. and Target Corporation v. Fairweather Ltd., International Clothiers Inc. and Les Ailes de la Mode Incorporées" case brief in Canadian ReMARKS, September/October 2011
• "Canadian opposition proceedings," Canadian ReMARKS, September/October 2011
• "Important differences between Canadian and U.S. trade-mark application procedures," IP Connections, November/December 2010
• "New Practice in Section 45 Proceedings Soon in Effect," INTA Bulletin, August 15, 2009, Vol. 64 No. 15 
• "Cape Breton distiller wins back the right to use GLEN for whisky," IP Perspectives, Spring 2009; International Law Office Intellectual Property Newsletter, May 5, 2009
• "Misstatement in Declaration of Use Must Be Fraudulent to Invalidate," INTA Bulletin, March 15, 2009, Vol. 64 No. 6,
• "Going global with your brand, part 3: foreign filing strategies and options," IP Connections, November/December 2008
• "Proposed Changes to Practice in Opposition Proceedings," INTA Bulletin, November 1, 2008, Vol. 63 No. 20 
• "Claiming a Statutory Holiday as Date of First Use Can Reverse Onus of Proof in Opposition Proceedings," INTA Bulletin, September 1, 2008, Vol. 63 No. 16
• "Cape Breton distiller loses right to use GLEN for whisky," IP Perspectives, June 2008; International Law Office Intellectual Property Newsletter, August 4, 2008
• "Going global with your brand, part 2: the importance of trade-mark registration," IP Connections, January/February 2008
• "Canadian Trade-marks Office No Longer Requires Disclaimers," INTA Bulletin, October 15, 2007, Vol. 62 No. 19 
• "New Practice Notice Regarding Official Marks," INTA Bulletin, October 1, 2007, Vol. 62 No. 18
• "Supreme Court of Canada chews on the issue of using copyright to prevent grey marketing" (co-author: Mark K. Evans), IP Perspectives, October 2007
• "Copyright Licensing Not the Answer to Grey Marketing" (co-author: Mark K. Evans), Managing Intellectual Property, September 2007
• "Going global with your brand, part 1: lost in translation," IP Connections, September/October 2007
• "Using Copyright to Prevent Parallel Importation in Canada," INTA Bulletin, August 15, 2007, Vol. 62 No. 15 
• "DOUBLE DOUBLE: when two may not be enough," IP Connections, May/June 2007
• "Unregistered Trade-marks Exempt from Charter of the French Language," IP Perspectives, February 2007; International Law Office Intellectual Property Newsletter, April 23, 2007
• "Preventing Importation of Grey Market Goods into Canada: By Copyright or Trade-mark?" (co-author: Brian P. Isaac), IP Perspectives, February 2006; International Law Office Intellectual Property Newsletter, May 30, 2006
• "The Importance of Naming Predecessors in Title in Canadian Trade-mark Applications," IP Perspectives, February 2006; International Law Office Intellectual Property Newsletter, June 12, 2006
• "Reverse Confusion Actionable in Canada," IP Perspectives, June 2005; International Law Office Intellectual Property Newsletter, July 18, 2005