Professionals

Kevin Graham
Ottawa
Barrister and Solicitor,
Patent and Trademark Agent

 

CONTACT
Phone: 613.232.2486
Fax: 613.232.8440
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YEAR OF CALL
Ontario Bar 1998
QUALIFICATIONS
  • Queen's University B.Sc. Hons. (Engineering Physics)1993; thesis titled Design of ultrasonic collision avoidance system
  • Osgoode Hall Law School of York University LL.B. 1996
  • Registered Trademark Agent 1998
  • Registered Patent Agent 2000
  • Registered to practise before the United States Patent and Trademark Office
 

Kevin Graham has over 20 years of experience in intellectual property law. His practice includes trademark prosecution, trademark oppositions and cancellation proceedings, and related strategic counselling and litigation.

Kevin's practice also spans IP-related contractual and competition law issues. He provides counsel on IP litigation strategies, negotiating settlements, conducting discoveries, evidence preparation, cross-examinations and preparing persuasive written and oral arguments before trial and appellate courts. Additionally, Kevin has experience in arbitration proceedings and other forms of alternative dispute resolution processes.

He advises small and large clients, including local, national and multinational corporations in a variety of industries and government agencies, on intellectual property procurement, management, licensing and enforcement issues.

Kevin has successfully represented clients as counsel before the Patent Appeal Board, Trademarks Opposition Board, Federal Court, Federal Court of Appeal, Ontario Court of Appeal, Ontario Superior Court of Justice, Nova Scotia Supreme Court, Nova Scotia Court of Appeal and Supreme Court of Newfoundland and Labrador.

PRACTICE AREAS
Trademarks
Litigation
IP Management & Strategic Counselling
Licensing & IP Transactions
Patents
Industrial Designs
 

The Dow Chemical Company v NOVA Chemicals Corporation, 2017 FC 350 and 2017 FC 637 - Successfully represented Plaintiff in an accounting of profits reference resulting in highest reported Canadian patent infringement award.

Manufacturers Life Insurance Company v British American Tobacco (Brands) Limited, 2017 FC 436 - Successfully defended a judicial review of a decision of Trademarks Opposition Board striking portions of Statement of Opposition.

Qualcomm Incorporated v Canada (Commissioner of Patents), 2016 FC 1092 and Qualcomm Incorporated v Canada (Commissioner of Patents), 2016 FC 499 - Successfully represented Applicant in proceedings to correct inventorship of issued patents.

Dow Chemical Company v NOVA Chemical Corporation, 2016 FC 91 – Successful in defending an appeal of a costs award from the liability phase of a patent infringement action between the Dow Chemical Company and NOVA Chemicals Corporation.

Re Patent Application No. 2491151, Commissioner's Decision #1377 (February 25, 2015) - Successfully overturned patent examiner’s rejection of an application relating to a novel security screening method on the basis of obviousness. 

Yahoo! Inc v Alpha Base Inc, 2014 TMOB 132 - Successful in an opposition to an application for the trademark YAHMOBILE, including a finding that the trademark YAHOO! is entitled to the status of a famous mark. 

Abercrombie & Fitch Co v Giant Tiger Stores Limited, 2009 FC 492 - Successfully defended an appeal of a decision refusing a motion for particulars in trademark infringement and passing off action relating to the sale of counterfeit clothing products. 

Uview Ultraviolet Systems Inc v Brasscorp Ltd, 2009 FC 58 - Represented a successful plaintiff in patent infringement action relating to an apparatus and method of charging a pressurized air-conditioning system with a secondary fluid. 

j2 Global Communications Inc v Protus IP Solutions Inc, 2008 FC 759, 2008 FC 760, 2009 FCA 41, 2009 FCA 42 - Successfully represented defendant on procedural motions and related appeals in patent infringement action (which included an anti-competition counterclaim) relating to fax over the Internet technology. 

Smart & Biggar v Marty Sanders (2008), 70 CPR (4th) 477 (TMOB) - Successfully expunged trademark registration for non-use pursuant to section 45 of the Trademarks Act.  

Koninklijke Phillips Electronics NV v Maple Technologies Ltd, 2007 FC 773 - Obtained an order requiring disclosure of information regarding equipment and inventory purchased out of the bankruptcy of a patent infringement action defendant. 

CertainTeed Corp v Canada (Attorney General), 2006 FC 436 - Successful on an appeal overturning a decision of the patent appeal board rejecting a patent application relating to a novel asphalt roofing shingle on the basis of obviousness.

Sleeman Brewing & Malting Co Ltd v Anchor Brewing Co, 2005 FCA 170 - Successfully defended an appeal of the dismissal of motion for summary judgment in trademark infringement and passing off action. 

Sim & McBurney v Anchor Brewing Co, 2005 FCA 171 - Successfully defended an appeal of a decision not to expunge a trademark registration for non-use pursuant to section 45 of the Trademarks Act

Anchor Brewing Co v Sleeman Brewing & Malting Co, 2005 FCA 170 - Successfully defended an appeal of a decision refusing a summary judgment motion in trademark infringement action. 

Allerex Laboratory Ltd. v. Dey Laboratories L.P., 2004 CanLII 33008 (ON CA), 2003 CanLII 7571 (ON SC) - Motion for summary judgment and appeal in breach of contract action. 

Oakley Inc v Shoppers Drug Mart Inc, 2004 FCA 404 - Successfully defended an appeal of a decision refusing a summary judgment motion in copyright/trademark infringement action. 

Molson Canada v Oland Breweries Ltd/Brasseries Oland Ltée2002 CanLII 44947 (On. C.A.), aff'g 2001 CanLII 28238 (On. S.C.) – Successfully defended a passing-off action, including precedent setting decision by Ontario Court of Appeal that a trademark registration provides a defence to a passing-off action. 

Andrés Wines Ltd v Vina Concha Y Toro SA, 2001 FCT 575 - Successfully defended an application to expunge a trademark registration. 

Memberships

  • Fellow, Intellectual Property Institute of Canada; member and past-chair of the Litigation Committee; past member of the Competition Law Committee
  • Member, Ontario Bar Association
  • Member, Canadian Bar Association 


Teaching activities

  • "Intellectual Property Law for Engineers" (with Philip Lapin and Christine N. Genge), University of Ottawa, Faculty of Law, 2009 winter term

Publications

  • “The Patent Litigation Law Review: Canada” (co-author: Steven Garland), The Patent Litigation Law Review, Law Business Research Ltd., December 2017
  • "Case Summary: Sleep Country Canada Inc v Sears Canada Inc, 2017 FC 148," IPIC Bulletin, Vol 344, July/August 2017
  • "Federal Court of Appeal affirms award of legal costs of $6.5 million in patent infringement case," IP Update — Canada, February 7, 2017; International Law Office Intellectual Property Newsletter, March 13, 2017
  • “Global Patent Law Litigation: Canada” (co-author: Steven Garland), Global Patent Litigation: Strategy and Practice, Wolters Kluwer Law, August 2016
  • "Protection of functional features through industrial designs," IP Update — Canada, November 4, 2015;  Lexology, November 4, 2015; Mondaq, November 11, 2015; International Law Office Intellectual Property Newsletter, November 23, 2015
  • "Amendments to Canada’s IP System outlined in the Federal Budget are one step closer to implementation," IP Update — Canada, May 8, 2015; Lexology, May 8, 2015; Mondaq, May 9, 2015;  International Law Office Intellectual Property Newsltter, May 25, 2015
  • "Patentable subject matter" (co-author: Steven Garland), Canadian Patent Law Benchbook, 2014
  • "Patentable subject matter" (co-authors: Steven Garland and Daphne Lainson), Canadian Patent Law Benchbook, 2012
  • "From iTunes to the classroom — The Supreme Court of Canada cements fair dealing as a 'user's right'" (co-author: Erin Creber), IP Perspectives, Autumn 2012
  • "Supreme Court provides guidance on application of 'fair dealing' test" (co-author: Daniel Davies), International Law Office Intellectual Property Newsletter, August 6 2012
  • "Alberta (Education) v Canadian Copyright Licensing Agency (Access Copyright)" (co-author: Daniel Davies), IP Perspectives, Summer 2012 Special Edition
  • Chapter Update – "Global Patent Litigation: Canada" (co-author: Steven Garland), Global Patent Litigation: Strategy and Practice, Wolters Kluwer Law, 2011
  • "To Disclaim or Not to Disclaim, That is the Question"(co-author: Brandon Reinhart), International Law Office, September 28 2009
  • "Copyright — Supreme Court has the Last Word", IP Perspectives, October 2006; International Law Office, November 13, 2006
  • "Global Patent Litigation: Canada" (co-author: Steven Garland), Global Patent Litigation: Strategy and Practice, Wolters Kluwer Law, June 2006
  • "Court of Appeal Finds Copyright Not Applicable to Collective Works," IP Perspectives, February 2005; International Law Office, March 21 2005
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