Professionals

Mark Biernacki
Partner, Toronto
Barrister and Solicitor,
Patent and Trademark Agent

 

CONTACT
Phone: 416.593.5514
Fax: 416.591.1690
Download V-Card
LinkedIn
YEAR OF CALL
Ontario Bar 1999
QUALIFICATIONS
  • University of Toronto B.A.Sc. (Mechanical Engineering) 1995; thesis titled Survey of intellectual property policies at Canadian universities
  • Osgoode Hall Law School of York University LL.B. 1997
  • Registered Trademark Agent 2000
  • Registered Patent Agent 2003
 

Savvy IP litigator and skilled negotiator

A skilled litigator and negotiator, Mark excels in all areas of IP litigation including patents, trademarks, copyrights and industrial designs. Recognized as an “IP star,” clients rely on Mark’s ability to successfully resolve disputes through negotiation, mediation or litigation, and commend him for his creativity and being "excellent in court.”

Mark is known for his broad IP litigation experience and expertise. He has successfully represented numerous clients before the Ontario Superior Court of Justice, Federal Court of Canada and the Federal Court of Appeal. In addition to successfully enforcing valuable pharmaceutical patents, Mark’s many precedent setting victories include securing a record level damage award for circumvention of technological protection measures under the Copyright Act.

Strategic advisor protecting high value trademarks and copyrights

Mark is equally accomplished in clearing, prosecuting and registering trademarks. Clients with high value trademark and copyright portfolios turn to him for his strategic advice on the development, implementation and execution of enforcement strategies. He also has expertise in trademark opposition and cancellation proceedings before the Trademarks Office.

Broad client network in Canada and internationally

Mark’s clients are diverse and include growing Canadian businesses, multi-national corporations, universities and governmental agencies. In addition, he frequently works with international associate firms to procure and enforce intellectual property rights in Canada.

Rankings and recognition

  • Recognized as a ‘Next Generation Lawyer’ in Intellectual Property Law in the The Legal 500 Canada in 2019
  • Recognized as an 'IP Star' in the 2018 edition of Managing Intellectual Property’s IP Stars Handbook: Trademark & Copyright
  • Recognized annually in The Canadian Legal LEXPERT® Directory under Intellectual Property since 2016
  • Recognized as a 'Local Litigation Star' in Intellectual Property since 2015 in 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 since 2014
PRACTICE AREAS
Litigation
Trademarks
Pharmaceutical
Patents
Copyright & Media
Licensing & IP Transactions
IP Management & Strategic Counselling
Industrial/Mechanical
Software/Information Technologies
Electrical/Electronics
IP Crime
Life Sciences — Regulatory & Compliance
Cleantech
Domain Names & Internet Law
Agricultural Sciences
 

AstraZeneca v Apotex Inc, 2017 FC 726– Successfully represented AstraZeneca in a reference on an accounting of profits following a patent infringement trial in which Apotex was found to infringe a formulation patent covering AstraZeneca’s blockbuster drug LOSEC. In the reference, the Federal Court rejected a non-infringing alternative defence, finding that AstraZeneca was entitled to recover all of Apotex’s profits during the period of infringement.  

Nintendo of America Inc v King et al, 2017 FC 246 – Successfully represented Nintendo in an application for trademark infringement, copyright infringement and circumvention of technological protection measures (TPMs).  This case was the first time that any court had considered and applied the anti-circumvention provisions of the Copyright Act.  Apart from broadly interpreting the prohibitions against circumvention, the Federal Court awarded Nintendo a precedent setting $11,700,000 in damages for copyright infringement and circumvention of TPMs, as well as $1,000,000 in punitive damages.   

AstraZeneca Canada Inc et al v Apotex Inc2015 FC 322 – Successfully represented AstraZeneca in a lengthy patent infringement trial in which AstraZeneca’s patent covering an omeprazole formulation was found to be valid and infringed. In so finding, the Federal Court accepted AstraZeneca’s claim construction that “an inert subcoating” is not limited to any particular process and need not be devoid of imperfections.  The Federal Court also rejected Apotex’s defences of obviousness, overbreadth, inutility and ambiguity.  

Mark’s other representative cases include:

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

Memberships

  • Fellow, Intellectual Property Institute of Canada
  • Member, International Trademark Association; Subcommittee chair of the General Trademark Enforcement Matters Subcommittee (2018-2019); former member of the U.S. Subcommittee of the Parallel Imports Committee (2014-2017); 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

Speaking engagements

  • "Intellectual Property Updates for Technology Practice," panel discussion at the 22nd Can-Tech Law Annual Conference, Montreal, October 29, 2018
  • "Copyright: Fair Dealing and Technological Protection Measures," Intellectual Property Institute of Canada 91st Annual Meeting, Niagara Falls, October 2017
  • "Digital Locks and Video Games: Nintendo v. King,” OBA Entertainment, Media & Communications Law / Information Technology & Intellectual Property Law program, Toronto,  June 2017 
  • "Technological Protection Measures - they are no Game : Nintendo of America Inc. v King et al," ALAI Canada, Toronto, May 2017
  • "Effective Written and Oral Advocacy in Federal Court," The Practical Guide to Federal Court Advocacy and Practice, Osgoode Hall Law School of York University’s Professional Development Centre, Toronto, March 2017
  • "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

Teaching activities

  • "Intellectual Property Basics," York University, March 2007

Publications

web design toronto Rebel Trail