Professionals

Guillaume Lavoie Ste-Marie
Associate, Montreal
Barrister and Solicitor,
Trademark Agent

 

CONTACT
Phone: 514.954.1500
Fax: 514.954.1396
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YEAR OF CALL
Quebec Bar 2013
QUALIFICATIONS
  • McGill University BCom (Finance, with Great Distinction) 2009
  • McGill University B.C.L./LL.B 2013
  • Registered Trademark Agent 2014
 

Guillaume Lavoie Ste-Marie’s practice focusses on litigation in the fields of copyright, patents and trademarks. He is involved in various aspects of litigation before the Federal Court, the Federal Court of Appeal and the Superior Court of Québec, including conducting examinations for discovery, cross-examinations, preparing witnesses, assisting experts in preparing reports in complex patent and copyright matters, and preparing submissions for motions, trials and appeals. Guillaume also has experience in managing large-scale multi-party litigation and in seeking and executing complex extraordinary remedies such as Anton Piller orders, interim and interlocutory injunctions, Mareva injunctions and contempt orders before the Federal Court in copyright and patent matters. 

Guillaume’s practice also includes contentious trademark prosecution matters such as trademark oppositions and summary cancellation proceedings, both in first instance before the Trademarks Opposition Board and on appeal. He is also involved in the protection and enforcement of protected geographical indications (Appellations d’Origine Contrôlée) in Canada. 

Guillaume represents local, national and international corporations in a diverse array of industries, including motion picture and other media, broadcasting, retail goods, personal care products, sports equipment, food and beverage, construction equipment and refrigeration.

Since 2012, Guillaume has been a member of the Board of Directors of the Montreal Artists Legal Clinic/Clinique juridique des artistes de Montréal (CJAM). He was also the legal clinic coordinator and a legal research volunteer from 2010 until 2012. CJAM, a charitable non-profit organization, provides free legal information to artists in Montreal through workshops, individual consultations and general information on its website.

Rankings and recognition

  • Recognized as a Next Generation Lawyer by The Legal 500 Canada under Intellectual Property Law 2018
  • Recognized by The Best Lawyers in Canada under Intellectual Property Law 2018
PRACTICE AREAS
Litigation
Trademarks
Patents
Copyright & Media
Software/Information Technologies
Industrial Designs
 
LANGUAGES SPOKEN
English
French
 

Bell Canada v Lackman, 2018 FCA 42 – With François Guay and Mark Biernacki, successfully represented Bell, Rogers and Québecor in obtaining and enforcing an Anton Piller order and interim injunction against the operator of one of the world’s largest online platform for the distribution of add-ons for the Kodi media player, which provided unauthorized access to a vast amount of infringing television content. Guillaume executed the Anton Piller order and interim injunction at the Defendant’s premises and the Federal Court of Appeal confirmed that the execution “was done in conformity with the acknowledged rules of the art.” The Federal Court of Appeal also endorsed an interim injunction that provided for the seizure of the online assets used to operate the online infringing platform and their transfer to the custody of bailiffs, and issued an interlocutory injunction enjoining the Defendant from further operating similar platforms until a final judgment on the merits. 

Ministry of Energy Industry and Tourism of the Republic of Cyprus c. 3878422 Canada et al., 2017 QCCS 3803 — Successfully represented the Ministry of Energy Industry and Tourism of the Republic of Cyprus in defending a motion brought by the defendants, members of the Saputo group, seeking dismissal of the action against them. The underlying action pertains to an alleged contractual breach arising from the defendants’ use of HALOUMI in association with cheese products. 

Vincent Wesley (Mtlfreetv.com) v Bell Canada et al, 2017 FCA 55 – With François Guay and Jean-Sébastien Dupont, successfully represented Bell, Rogers and Québecor in having the Federal Court of Appeal uphold the interlocutory injunction issued as 2016 FC 612 (below).

Bell Canada et al v Vincent Wesley, 2016 CF 1379 - With François Guay, successfully represented Bell, Rogers and Québecor in charging and sentencing for contempt a defendant who had not respected an interlocutory injunction. The Court awarded $10,000 in costs and imposed a $15,000 fine.  

Bauer Hockey Corp v Easton Hockey Canada, Inc., 2016 FC 1373 – With François Guay and Ekaterina Tsimberis, successfully represented Bauer Hockey Corp. in reversing a decision of the Trademark Opposition Board in a section 45 cancellation proceeding, maintaining on the register a trademark consisting of the shape and location of a label used as a background for a word mark.  

Bell Canada et al v 1326030 Ontario Inc. dba ITVBox.net et al, 2016 FC 612 – With François Guay, successfully represented Bell, Rogers and Québecor in obtaining an interlocutory injunction order directed at retailers of set-top boxes that are pre-configured with various applications that provide their users with unauthorized access to copyrighted television content. The interlocutory injunction also includes an extraordinary mechanism allowing the plaintiffs to enjoin additional defendants in the action, to which the interlocutory injunction automatically applies. This decision was awarded the 2017 Milestone Case of the Year by Managing Intellectual Property.

Unilin Beheer B.V. et al v MGA Commodities Inc., Federal Court File No. T-2096-15 – With François Guay and Kevin Graham, successfully obtained and executed an interim injunction and Anton Piller Order against an importer of unlicensed construction products that were subject to patent protection. Guillaume and Kevin Graham (of Smart & Biggar Ottawa office) executed the Anton Piller order at two locations over the course of three days. 

Paramount Pictures Corporation et al v David Lemarier et al, Federal Court File No. T-1679-15 – With François Guay, successfully obtained and executed an interim injunction and Anton Piller Order against the developers and operators of software providing unauthorized access to motion pictures to millions of users worldwide. Guillaume executed the Anton Piller order and interlocutory injunction against one defendant and coordinated the simultaneous execution against two other defendants located across Canada.

Memberships

  • Associate, Intellectual Property Institute of Canada
  • Member, Association du Jeune Barreau de Montréal
  • Member, Canadian Bar Association

Publications

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