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


Phone: 416.593.5514
Fax: 416.591.1690
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Ontario Bar 1999
  • 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

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 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
Copyright & Media
Licensing & IP Transactions
IP Management & Strategic Counselling
Software/Information Technologies
IP Crime
Life Sciences — Regulatory & Compliance
Domain Names & Internet Law
Agricultural Sciences

AstraZeneca v Apotex Inc, 2017 FC 726

Nintendo of America Inc v King et al2017 FC 246

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

Speaking engagements

  • "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


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