Mark Biernacki has helped clients for over a decade with their intellectual property needs, focusing on litigation and trademark prosecution.
Mark’s litigation practice spans all areas of intellectual property, including patents, trademarks, copyrights and industrial designs, in a variety of subject matter. Clients appreciate his considerable experience in pharmaceutical patent litigation, including under the Patented Medicines (Notice of Compliance) Regulations. Both plaintiffs and defendants have been successfully represented by Mark before the Trademarks Opposition Board, Ontario Superior Court of Justice, Federal Court of Canada, and the Federal Court of Appeal. He has also successfully resolved many disputes through mediation and negotiation.
Mark’s trademark clients rely on his expertise in clearing, prosecuting and registering trademarks. Multi-national companies with portfolios of well-known trademarks often look to Mark for strategic advice and for development, implementation and execution of enforcement strategies. In addition, he has experience in trademark opposition and cancellation proceedings before the Trademarks Office.
Mark has worked with companies of all sizes, including multi-national corporations, universities and governmental agencies. In addition, he frequently works with associate firms abroad to procure and enforce intellectual property rights in Canada.
When he isn’t sparring in the courtroom, you can find Mark sparring in a boxing ring, or when he is feeling more serene, tending to his garden.
Rankings and recognition
- Recognized as a ‘Litigation Star’ in Intellectual Property Law in the 2015 edition of Benchmark Canada
- Recognized annually in The Best Lawyers in Canada under Intellectual Property Law since 2015
- Recognized in Euromoney’s Expert Guides: Guide to the World's Leading Trademark Law Practitioners 2014
AstraZeneca Canada Inc et al v Apotex Inc, 2015 FC 322
AstraZeneca Canada Inc et al v Apotex Inc, 2013 FC 926; 2014 FCA 142
Astrazeneca Canada Inc v Apotex Inc, 2011 FC 598; 2012 FCA 68
Astrazeneca Canada Inc v Apotex Inc, 2011 FC 862
Target Brands Inc v Fairweather Ltd, 2011 FC 758
Datatreasury Corporation v Royal Bank of Canada, 2008 FC 955
Aventis Pharma Inc v Apotex Inc, 2009 FC 51
Sanofi-Aventis Canada Inc v Pharmascience Inc, 2007 FC 1057; 2008 FCA 213
AstraZeneca Canada Inc v Apotex Inc, 2008 FC 1301
Sanofi-Aventis Canada Inc v Pharmascience Inc, 2008 FC 782
Hässle v Apotex Inc, 2008 FCA 88
Marvel Characters Inc v Randy River Inc, 2003 FC 986
Rolls Royce v Fitzwilliam, 2003 FCT 348
Contour Optik Inc v Hakim Optical Laboratory Ltd. Date: December 13, 2000
Ciba-Geigy Canada Ltd v Novopharm Ltd. Date: November 10, 2000
- Fellow, Intellectual Property Institute of Canada
- Member, International Trademark Association; member of the U.S. Subcommittee of the Parallel Imports Committee; former member of the Discovery Procedures Sub-committee of the Enforcement Committee (2010-2013); former member of the East Europe Anti-Counterfeiting Committee (2008-2009)
- Associate, American Bar Association; member of the International Copyright Treaties and Laws Section
- "IP: What's in it for you," The International Conference for Upcoming Engineers (ICUE) 2015, Toronto, May 2015
- "An International Comparison of Copyright Issues on the Internet," ABA's 30th Annual Intellectual Property Law Conference, Bethesda, MD, March 2015
- "IP: What's in it for you," CAURA Ontario Conference, Niagara Falls, ON, November 2011
- Panel discussion regarding motions in the Federal Court, Seminar on Federal Court Advocacy and Practice hosted by Justice Hughes, Toronto, November 2011
- "Motions Before the Federal Court — Actions Involving Intellectual Property," The Practical Guide to Federal Court Advocacy and Practice, Osgoode Hall Law School of York University’s Professional Development Centre, Toronto, April 2010
- "Prosecuting Counterfeit Cases," Anti-Counterfeiting & Brand Protection, Federated Press, Toronto, October 2009
- "Introduction to Intellectual Property," Business Enterprise Network, Toronto, June 2006
- Active member of the CIPO/IPIC Bank of Speakers since 2004
- "Intellectual Property Basics," York University, March 2007
- "Federal Court awards legal costs of $6.5 million in patent infringement case," (co-author: Kevin Unrau), IP Update — Canada, January 29, 2016; Lexology, February 05, 2016; Mondaq, February 04, 2016; International Law Office Intellectual Property Newsletter, March 14, 2016
- "AstraZeneca’s LOSEC patent valid and infringed by Apotex," Rx IP Update Special Edition, March 2015; Lexology, March 17, 2015; Mondaq, March 18, 2015; International Law Office Intellectual Property Newsletter, April 20, 2015