Professionals

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

 

CONTACT
Phone: 416.593.5514
Fax: 416.591.1690
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YEAR OF CALL
Ontario Bar 1986
QUALIFICATIONS
  • University of Toronto B.Sc. (magna cum laude) 1980
  • Queen's University LL.B. 1983
  • Registered Trademark Agent 1986
  • Registered Patent Agent 1991
 

Helping market leaders remain at the forefront of trademark and brand strategy, protection and enforcement

Representing many of the world's most famous brand owners and personalities, Mark is widely recognized as one of Canada’s leading trademark lawyers. Clients seek him out for his sophisticated expertise in trademark protection, management, and counselling services to help them strategically build and protect the value of their brands.

A seasoned trademark lawyer and highly respected litigator, Mark has significant experience in all aspects of trademark law including trademark and trade-dress litigation, brand selection and clearance, trademark prosecution, oppositions and cancellations, and licensing and merchandising.

With more than 30 years of experience and an impressive record of success in numerous high-profile, precedent-setting cases, Mark is known for being extremely thorough yet efficient. He takes great interest in his clients and invests wholly in helping them realize their maximum brand potential while recognizing and mitigating unforeseen risks.

Mark is also a leader in the firm as Managing Partner of Smart & Biggar's Toronto office.

An IP career defined by experience, results, and hard-earned recognition

Mark’s practice spans the entire branding lifecycle. He has been honoured as Canada's "Trademark Litigator of the Year" in 2014 and 2015 by Benchmark Canada, and was one of Managing Intellectual Property’s six nominees as Canada’s “Outstanding IP Practitioner” for 2015. The World Trade Mark Review 1000 has repeatedly selected Mark as the only Canadian for their gold or silver bands of all areas of trademark law and practice: prosecution and strategy; enforcement and litigation; and anti-counterfeiting. He has also been consistently honoured by a wide range of leading Canadian and international publications, including the Lexpert/American Lawyer Guide to the Leading 500 Lawyers in Canada, Chambers Global, and Best Lawyers. He has also been recognized by senior in-house counsel as a stand-out lawyer in Acritas Stars 2018.

In various independent surveys and publications, clients and colleagues have said:

"The best bar none for trademark law"

“The ‘go-to’ lawyer for trademark matters”

“Revered for his expertise covering all aspects of trademark law”

“pre-eminent name for trademark law”

If I were to think of a pure IP litigator, I would think of him. He is fantastic – really on top of his game"

“Business-focused, strategic and very professional” and an “Enforcement wizard”

He is a formidable opponent with some great high-profile wins under his belt

He is a judicious litigator and a big-picture thinker”

Intelligent and business-minded

Terrific litigator; he has an impeccable knowledge of the law

Highly esteemed for his track record in trade mark litigation and prosecution

Knowledgeable and responsive

Incredibly bright

Well prepared and has an imaginative presentation style with which to win the confidence of the court

Mark has written extensively within the field of intellectual property law, including within international publications such as Trademark World, Managing Intellectual Property, National Law Journal and the World Trademark Law Report. He has also co-authored the Trademark Litigation: Remedies and Procedures chapter of the IP Benchbook, which is an electronic textbook for the Canadian judiciary, published jointly by the National Judicial Institute and the Law Society of Upper Canada. Mark was also a joint winner of the Marketing Research and Intelligence Association’s “Best Multi-Stakeholder Research Initiative” for consumer survey research conducted in Diageo Canada v Heaven Hill Distilleries et al, 2017 FC 571.

Mark is a frequent panellist on intellectual property subjects and has spoken to various organizations, including the International Trademark Association, the Intellectual Property Institute of Canada, the Canadian Corporate Counsel Association, the Law Society of Upper Canada, the New York State Bar Association, the Michigan State Bar Association, the Chicago Bar Association, the Intellectual Property Law Association of Chicago and the Oklahoma State Bar Association. Mark also taught trademark law at Osgoode Hall Law School for several years, has lectured at the Oxford Intellectual Property Research Centre and has spoken frequently at the McGill/IPIC Intensive Copyright course.

During his academic career, Mark was awarded the prize for the highest grade in Intellectual Property Law in the Bar Admission course for Ontario.

Rankings and recognition

  • Recognized as a World IP Review Leader since the inaugural edition in 2016
  • Recognized annually in the Lexpert® Guide to the Leading US/Canada Cross-Border Litigation Lawyers in Canada under Intellectual Property Litigation since 2016
  • Recognized annually as a ‘Leading Lawyer’ in Intellectual Property Law in the The Legal 500 Canada since 2015 
  • Named Canada's Trademark Litigator of the Year for 2014 and 2015 by Benchmark Canada
  • Recognized in the World Trademark Review as an "Experts’ expert" in Canadian trademark law
  • Recognized annually as an 'IP Star' since the inaugural edition in 2014 of Managing Intellectual Property’s IP Stars Handbook: Trademark & Copyright
  • Recognized annually by World Trademark Review 1000 – The Definitive Guide to Trademark Legal Services for enforcement and litigation, prosecution and strategy, and anti-counterfeiting since the inaugural edition in 2011
  • Selected repeatedly by The Lexpert/American Lawyer Guide to the Leading 500 Lawyers in Canada under Intellectual Property
  • Selected repeatedly in The Canadian Legal LEXPERT® Directory under Intellectual Property
  • Recognized in each edition of Euromoney's Expert Guides: Guide to the World's Leading Trademark Law Practitioners since 2004
  • Recognized as a 'Local Litigation Star' in Intellectual Property since 2013 in Benchmark Canada
  • Recognized annually in The Best Lawyers in Canada under Intellectual Property Law since 2008
  • Recognized annually since the inaugural edition in 2006 of Chambers Global – The World’s Leading Lawyers for Business under Intellectual Property: Litigation
  • Recognized annually since the inaugural edition in 2016 of Chambers Canada as a leading lawyer under Intellectual Property
  • Recognized annually in Who's Who Legal: Canada under Trademarks since 2012
  • Recognized annually in PLC Which Lawyer? under IP: non-patent litigation since 2007
  • Recognized annually in Who's Who Legal: Trademarks since 2012
  • Recognized in the 2015 edition of Who’s Who Legal 100 under Intellectual Property
  • Nominated as a stand-out lawyer by senior in-house counsel in Acritas Stars 2018
PRACTICE AREAS
Trademarks
Copyright & Media
Litigation
IP Management & Strategic Counselling
IP Crime
Licensing & IP Transactions
Domain Names & Internet Law
Marketing & Advertising
 

Randy River Inc v Mint Accessories Inc, CV-17-579497, January 22, 2018 — Successfully represented Plaintiff in action for trademark infringement and breach of contract, resulting in Defendant being permanently enjoined from continuing to infringe Plaintiff’s trademark rights. The Plaintiff was also awarded over $70,000 in compensatory damages, $50,000 in punitive damages and $60,000 in legal fees, on a substantial indemnity scale.

Randy River Inc v Mint Accessories Inc, CV-17-579497, October 30, 2017 — Successfully represented Plaintiff in trademark infringement and breach of contract action, resulting in Defendant being enjoined by issuance of pre-trial interim and interlocutory injunction. The Plaintiff was also awarded $10,000 in legal fees.

Diageo Canada v Heaven Hill Distilleries et al, 2017 FC 571 — Successfully represented Plaintiff in protecting and enforcing CAPTAIN MORGAN trade dress. Defendant was held liable for trademark infringement, passing off and depreciation of goodwill, and required to destroy or deliver up infringing ADMIRAL NELSON’S product, and compensate Plaintiff for legal fees and damages or profits.

Sim & McBurney v Aird & McBurney et al, 2016 ONSC 4063  Successfully represented Defendants in litigation alleging trademark infringement, passing off, breach of fiduciary obligations and breach of contract. Litigation was successfully resolved with dismissal of action, thereby permitting Defendant to continue use of its name.

Jack Black LLC v The Attorney General of Canada, 2014 FC 664 — Successful appeal to the Federal Court of an application to register the trademark JACK BLACK for men's skincare products, thereby overturning the Examiner's objection that the mark would be likely to be mistaken for the actor, Jack Black.

H-D USA LLC v Berrada, 2014 FC 207 — Successful trial resulting in dismissal of infringement claims against Harley-Davidson, thereby allowing Harley-Davidson to sell its SCREAMIN' EAGLE clothing in Canada notwithstanding Berrada's common law use of SCREAMING EAGLE for clothing and trademark registration for the operation of a clothing store. Berrada was also ordered to pay more than $500,000 in costs to Harley-Davidson.

Adidas AG v Bata Brands et al (2014) — Successfully represented Bata Brands in defending Federal Court trademark infringement litigation relating to Bata’s use of two stripes on its running shoes, resulting in dismissal of the action.

Royal Bank of Canada v The Royal Bank of Scotland et al (2014) — Successfully represented The Royal Bank of Scotland in defending Federal Court trademark infringement litigation, resulting in discontinuance of the action.

London Drugs Limited v International Clothiers Inc, 2014 FC 223 — Successfully resisted opposition appeal in the Federal Court of Canada, thereby permitting registration of the mark SMITH & BARNES LONDON.

International Clothiers Inc v Dorna Sports, 2013 FC 285 — Successful appeal to the Federal Court, thereby reversing Opposition Board decision and preventing registration of the trademark MOTO in relation to wearing apparel.

Hawke & Company Outfitters LLC v Retail Royalty Company, 2012 FC 1539 — Successfully resisted opposition appeal in the Federal Court of Canada, on behalf of American Eagle Outfitters, thereby preventing registration of HAWKE & CO OUTFITTER logo.

Target Corporation v Fairweather Ltd (2011), 2011 FC 758 — Successfully defended interlocutory injunction in Federal Court in passing off case concerning operation of TARGET APPAREL chain of retail stores, with award of costs against the plaintiff.

TSA Stores Inc v Registrar of Trademarks, 2011 FC 273 — Successful Federal Court appeal, thereby maintaining series of registrations for SPORTS AUTHORITY trademark for sporting goods store services. Federal Court held that the trademarks were in use in Canada, notwithstanding the absence of any bricks and mortar stores or sales in Canada, by means of information provided on a U.S.-based website.

Procter & Gamble Inc v Colgate-Palmolive Canada Inc, 2010 FC 231 — Successfully resisted opposition appeal in the Federal Court of Canada, on behalf of Colgate-Palmolive, thereby permitting registration of a non-traditional trademark for coloured stripes applied to toothpaste.

Bereskin & Parr v Fairweather Ltd, 2007 FCA 376 — Successfully resisted appeal in the Federal Court of Appeal, and maintained registration of the trademark TARGET APPAREL with award of costs in favour of client.

Fairweather Ltd v Registrar of Trademarks, 2006 FC 1248 Successful appeal in the Federal Court of Canada with award of costs in favour of client. Federal Court maintained registration of the trademark TARGET APPAREL for wearing apparel even though commercial use of mark had not yet recommenced in the marketplace.

H-D Michigan Inc v MPH Group Inc, 2006 FC 538 — Successful Federal Court appeal of Opposition Board decision, on behalf of Harley-Davidson, thereby blocking registration of the trademark HARLEYWOOD.

Inhesion Industrial Co v Anglo Canadian Mercantile Co (2000), 6 CPR (4) 362, (FCTD) — Successfully resisted summary judgment motion in Federal Court of Canada in copyright case concerning tableware.

Contour Optik v Hakim Optical Ltd (2000), T-1880-00 — Successfully rescinded Anton Piller Order and issuance of interim injunction in Federal Court of Canada in patent case concerning eyeglasses.

Salton Appliances (1985) Corp v Salton Inc (2000), 4 CPR (4) 491, (FCTD) — Successfully defended interlocutory injunction in Federal Court of Canada in trademark case on behalf of manufacturer of George Foreman Grill.

Garbo Group Inc v Harriet Brown & Co (1999), 3 CPR (4) 224, (FCTD) — Successfully resisted opposition appeal in the Federal Court of Canada thereby permitting the registration of the Greta Garbo Signature trademark on behalf of estate of Greta Garbo.

Maison des Pates Pasta Bella Inc v Olivieri Foods Ltd (1998), 80 CPR (3d) 234 — Successfully resisted expungement in Federal Court of Canada of trademark registration concerning food products, with award of solicitor-and-client costs against applicant.

Walkabout v Icon Distribution Systems (1998), T-1732-98 — Successfully rescinded Anton Piller Order and issuance of interim injunction in Federal Court of Canada in trademark case concerning clothing.

Castlemore Marketing Inc v International Trade & Finance Corp (1996), 65 CPR (3d) 334, (FCTD) — Successfully defended interlocutory injunction in Federal Court of Canada in trademark case concerning toiletries.

Excelled Sheepskin & Leather Coat Corp v Y.M. Inc (Sales) (1995), T-1217-95 — Successfully rescinded
Anton Piller Order and issuance of interim injunction in Federal Court of Canada in trademark case concerning clothing; successfully resolved action with award of solicitor-and-client costs against plaintiff.

Productions and Distributions Videodrome Inc v Cavis Productions Inc (1994), 56 CPR (3d) 449, (FCTD) — Successfully struck out action in Federal Court of Canada as no genuine issue for trial in trademark case concerning videos.

Cornerstone Securities v Registrar of Trademarks (1994), 56 CPR (3d) 209 — Successfully resisted appeal in Federal Court of Canada, thereby obtaining cancellation of trademark registration for financial services.

Alphanet Telecom Inc v MCI Communications Corp (1994), B44/94 — Successful in avoiding issuance of interlocutory injunction in Ontario Court in trade secret case concerning telecommunications.

Macdan Inc v International Clothiers Inc (1991), 37 CPR (3d) 530, (FCTD) — Successfully defended interlocutory injunction in Federal Court of Canada in copyright and trademark case concerning clothing.

Coscelebre Inc v Registrar of Trademarks (1991), 35 CPR (3d) 74, (FCTD) — Successfully resisted appeal in trademark cancellation proceeding in Federal Court of Canada, thereby maintaining trademark registration for cosmetics with award of solicitor-and-client costs against respondent.

Rogers, Bereskin & Parr v Registrar of Trademarks (1987), 17 CPR (3d) 397, (FCTD) — Successfully resisted appeal in trademark cancellation proceeding in Federal Court of Canada, thereby maintaining trademark registration for clothing.

Memberships

  • Fellow, Intellectual Property Institute of Canada
  • Member, International Trademark Association; Member of the Legal Practice Resources Committee; Former Member and Team Leader of the Law Firm Committee; Former Member of the Canada Subcommittee of the Anticounterfeiting Committee; Former Chair of the Trademark Use Subcommittee of the Internet Committee, Former Sub-Chair of the Internet Committee

Speaking engagements

  • "Brand Owners and Counsel: Strategies for Navigating Canada's Trademark Changes" (with Keltie Sim Luft, Philip Lapin and Andrea Kroetch), Webinar Series, October 25, 2018
  • "Use of Marks on the Internet," IPIC Case Law Webinar Series, May 30, 2018
  • “What US Brand Owners Need to Know about Canada’s Trademark Changes – Legislation and Enforcement” (with Philip Lapin), Managing Intellectual Property – Global Trademark Roadshow in Palo Alto, California on June 21, 2017 and New York City on June 23, 2017
  • "Canada: upcoming legislative changes, and effective litigation enforcement," Managing IP Trademark Road Show, June 2017
  • "Use of Marks on the Internet," IPIC Case Law Webinar Series, June 14, 2017
  • "Remedies – Quick Results in Trademark Cases: Myth or Reality?" panel discussion at IPIC’s 90th Annual Meeting, September 2016
  • "Passing Off," webinar hosted by the Intellectual Property Institute of Canada, May 2016
  • “Trademarks: What are they and how you need to protect yourself,” CPDonline’s inaugural Business Law and Legal Issues Facing Finance Professionals conference, May 2016 
  • "Use of Marks on the Internet," webinar hosted by the Intellectual Property Institute of Canada, May 2016
  • “Trade-Mark Infringement:  Where are the Courts Going with the “Use” Requirement?," panel discussion at the Law Society of Upper Canada’s 20th Annual Intellectual Property Law: The Year in Review, January 2015
  • “Canada's Significantly Amended Trademark Laws: What Canadian Brand Owners and In-House Counsel Need to Do Right Now”, webinar for the Canadian Corporate Counsel Association, November 2015
  • “Canada’s Significant Trademark Law Changes,” presented to the Chicago Intellectual Property Law Association, October 2014
  • "European-Canadian Trademark Protection and Related Ethics," webinar hosted by the Intellectual Property Institute of Canada, June 2012
  • "IP Goes Digital (What This Means to Solicitors)," panel discussion at the Law Society of Upper Canada's 16th Annual Intellectual Property Law: The Year in Review, January 12, 2012
  • "Canadian Trademark Law--Important Developments for U.S. Brand Owners and Practitioners", Michigan State Bar Association's Intellectual Property Law Summer Institute, Mackinac Island, Michigan, July 2011
  • "Business and legal issues in intellectual property licensing," panel discussion at the International Trademark Association's annual meeting, San Francisco, May 2011
  • "Effective Intellectual Property Management for the Non-IP Specialist," panel discussion/webinar, Canadian Corporate Counsel Association, February 2011
  • "How the Bill Will Affect the Availability of Statutory Damages," Understanding Bill C-32: Copyright Modernization Act seminar, Osgoode Hall Law School of York University, Toronto, November 2010  
  • Presentation on Canadian Opposition proceedings, Intellectual Property Institute of Canada's 82nd Annual Meeting, Toronto, October 2008
  • "Trademark Litigation Remedies and Procedures" (co-author: Michael D. Manson), presented to the Law Society of Upper Canada, Toronto, June 2008
  • "IP Rights Enforcement: Protecting Product Configuration in Europe and Beyond" (moderator), panel discussion at the International Trademark Association’s forum, Rome, Italy, December 2006
  • "Defining the Critical Elements of IP Licensing: Rights and Grants of Rights," The Canadian Institute's IP Licensing Conference, Toronto, November 2006
  • "Protecting Intellectual Property in the Distribution Channel," Product Distribution Marketing, Federated Press, Toronto, September 2006

 

Teaching activities

  • "Enforcement," IPIC/McGill Business of Copyright course, Montreal, August 2008
  • "Enforcement," IPIC/McGill Business of Copyright course, Montreal, August 2007
  • "Enforcement," IPIC/McGill Business of Copyright course, Montreal, August 2006
  • "Enforcement," IPIC/McGill Business of Copyright course, Montreal, August 2005
  •  Former Adjunct Professor in Trademark Law, Osgoode Hall Law School

Publications

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