Jean-Sébastien Dupont's practice focusses on intellectual property litigation in the areas of trademarks, patents and copyright. He is involved in different aspects of litigation before the Quebec Superior Court and the Federal Court, including witness preparation for examination, cross-examinations, finding and working with technical and financial experts, preparing and arguing various motions, preparing evidence and submissions for trial and working with foreign associates in the context of multi jurisdictional cases in countries such as the United States and the United Kingdom. He also has significant experience in the preparation of submissions to the Federal Court of Appeal.
Jean-Sébastien's client activities involve small to large Canadian and foreign corporations in different fields of activities such as dental prosthetics (Nobel Biocare), tobacco (Imperial Tobacco Canada), hockey equipment and apparel (Bauer Hockey), transport (Camso), steel (Lainco), etc.
Jean-Sébastien's technical background is in computer science. He completed a three-year CEGEP program as first in his class and subsequently worked as a quality assurance analyst in a software engineering firm before pursuing legal studies.
In 2008, Jean-Sébastien completed introductory courses in Chinese law at the China University of Political Science and Law in Beijing. He received numerous awards and accolades from the Université de Montréal during the course of his legal studies. In his final year of law school, Jean-Sébastien acted as a research assistant to a Justice of the Quebec Court of Appeal.
Jean-Sébastien was awarded a First Class grade from the University of Cambridge for his Master of Law thesis, which focussed on the notion of trademark use and addressed the issue of invisible use of trademarks in meta tags and keyword advertising, as well as the subliminal use of trademarks in new marketing techniques.
Jean-Sébastien is an editor of IP Update — Canada, the firm's intellectual property law bulletin, as well as a member of the firm's Social Media Business Development Committee.
Emerson Electric Co v Canadian Tire Corporation Limited, 2016 FC 308 - Successfully represented Emerson Electric Co. and Emerson Electric Canada Limited (Emerson) in defending a motion brought by Canadian Tire to strike out Emerson's open-ended allegations of patent infringement. The motion was dismissed by the Federal Court and costs awarded to Emerson.
Bauer Hockey Corp v Easton Sports Canada Inc, 2014 FC 594 confirmed on appeal to the Federal Court (2014 FC 853) and Federal Court of Appeal (2016 FCA 44) – With François Guay and Ekaterina Tsimberis, successfully represented Bauer Hockey Corp. in having the Federal Court and Federal Court of Appeal dismiss a motion brought by Bauer’s competitor, Reebok-CCM, to intervene in this appeal initiated by Bauer from a decision of the Registrar of Trademarks following the issuance of a Section 45 Trademarks Act notice at the request of another of Bauer’s competitors, Easton Sports.
Philip Morris Products SA v Marlboro Canada Limited, 2015 FC 364 confirmed on appeal 2016 FCA 55 — With François Guay, successfully represented the plaintiffs by counterclaim Imperial Tobacco Canada Limited and Marlboro Canada Limited in this precedent-setting decision whereby the Court confirmed that Imperial Tobacco and Marlboro Canada are entitled to elect an accounting of the defendants’ (Philip Morris and Rothmans, Benson & Hedges) profits resulting from the infringement of their rights in the MARLBORO trademark in Canada.
Philip Morris Products SA v Marlboro Canada Limited, 2014 FC 2 confirmed on appeal 2015 FCA 9 — With François Guay, successfully represented the plaintiffs by counterclaim Imperial Tobacco Canada Limited and Marlboro Canada Limited in recovering an important portion of the legal costs and disbursements incurred for the trial of this trademark infringement action for a total award exceeding 1 million dollars.
Bauer Hockey Corp v Sport Maska Inc, 2014 FCA 158 — With François Guay, successfully represented Bauer Hockey Corp. in having the Federal Court of Appeal overturn an interlocutory decision of the Federal Court which had refused that Bauer Hockey amend its Statement of Claim in this trademark infringement and passing off action to claim punitive damages.
Magasins Best Buy ltée c Québec (Procureur général), 2014 QCCS 142 confirmed on appeal 2015 QCCA 747 — With François Guay and Christian Bolduc, successfully represented the International Trademark Association (INTA) as an intervener in this proceeding. The Court confirmed, in line with the plaintiffs’ and INTA’s arguments, that businesses can continue using their registered trademarks on public signs outside their premises in the Province of Québec without the need to add French generic language. My colleagues and I recently received the 2015 Canadian Trademark Milestone Case of the Year award from Managing Intellectual Property (U.K.) for our success in this case.
Phostech Lithium Inc v Valence Technology Inc, 2011 FCA 107 — With François Guay and Jeremy Want, 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.
UGroupMedia Inc v Bell Canada Inc, Quebec Superior Court 500-17-062683-100 — With Daniel Drapeau, successfully represented Bell Canada in opposing motions for an interim injunction and safeguard measures seeking to prevent Bell from offering its free Magic Santa interactive Christmas cards for kids based on copyright infringement allegations.
- Associate, Intellectual Property Institute of Canada
- Member, Canadian Bar Association
- Member, Association du jeune Barreau de Montréal
- “Contrefaçon de marques de commerce et recouvrement de dommages-intérêts ou de profits : à qui le choix?," Regroupement des Praticiens du droit des Marques de commerce (RPM), Montreal, March 25, 2015
- "Internet : les marques de commerce sans frontières," Développements récents de propriété intellectuelle, Barreau du Québec, Montreal, November 14, 2014
- Guest lecturer at the Université de Montréal for the Torts graduate course (DRT-6567) re: passing-off, November 2014; October 2015
- "Precedent-setting Marlboro decision provides guidance on entitlement to claim profits in trademark infringement cases," IP Update — Canada, March 24, 2015; Lexology, March 24, 2015; Mondaq, March 25, 2015; CCCA Members Knowledge Centre, March 2015; quoted in the Financial Post, March 25, 2015; World Trademark Review Daily, March 31, 2015; International Law Office Intellectual Property Newsletter, May 5, 2015
- "Do you actually own the IP generated by your Canadian employees?" (co-author: Guillaume Lavoie Ste-Marie), June 16, 2014; Lexology, June 16, 2014; Mondaq, June 18, 2014; CCCA Members Knowledge Centre, June 2014; International Law Office Intellectual Property Newsletter, July 7, 2014; Commerical Times, July 2014, No. 564, pp. 1-3
- "Québec appeals the French Charter decision on public display of trademarks," IP Update — Canada, May 13, 2014; Lexology, May 13, 2014; Mondaq, May 14, 2014; World Trademark Review Daily, May 20, 2014; CCCA Members Knowledge Centre, May 2014; International Law Office Intellectual Property Newsletter, June 2, 2014
- "Retailers and the International Trademark Association prevail in Québec’s French Charter proceeding," IP Update — Canada, April 10, 2014; Lexology, April 10, 2014; Mondaq, April 12, 2014; INTA Bulletin, May 1, 2014, Vol. 69, No. 9, pp. 1, 3; International Law Office Intellectual Property Newsletter, May 5, 2014
- "Product placement as evidence of a trademark’s fame," IP Update — Canada, November 19, 2013; Lexology, November 19, 2013; Mondaq, November 19, 2013; CCCA Members Knowledge Centre, November 2013; International Law Office Intellectual Property Newsletter, December 16, 2013
- "The International Trademark Association is granted leave to intervene in Quebec proceedings pertaining to the interpretation of Quebec's French Charter" (co-author: Philip Lapin), IP Update — Canada, October 3, 2013; Lexology, October 3, 2013; Mondaq, October 5, 2013; International Law Office Intellectual Property Newsletter, October 21, 2013
- "Uncharted territories of trade mark use", I.P.Q. 2013, 2, 139-165
- "Surveys: a useful tool to gauge consumers' perception" (co-author: Ekaterina K. Tsimberis), IP Connections, September/October 2011
- "Republic of Cyprus (Commerce and Industry) v. International Cheese Council of Canada" (co-author: Daniel S. Drapeau), Canadian ReMARKS, July/August 2011
- "Chaussures Régence Inc. v. Naturmania Inc." Case Brief in Canadian ReMARKS, May/June 2011
- "Ontario Teachers' Pension Plan Board v. Canada (A.G.)" Case Brief in Canadian ReMARKS, March/April 2011