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
 

Mark Evans focusses on providing sophisticated trademark protection, management and counselling services. He represents many of the world's most famous brand owners and personalities, and is recognized as one of Canada's leading trademark lawyers.

Mark 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 CanadaChambers Global, and Best Lawyers.

Mark works with clients in strategically building the value of brands, and has been successful in numerous high-profile, precedent setting cases. Mark’s practice spans the entire branding lifecycle, and has highly significant experience and expertise in all aspects of trademark law  including trademark and trade-dress litigation, brand selection and clearance, trademark oppositions and cancellations, and licensing and merchandising. Mark is also Managing Partner of Smart & Biggar's Toronto office.

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

"The best bar none for trademark law" (The Legal 500 Canada - 2017)

“The ‘go-to’ lawyer for trademark matters” (Who’s Who Legal: Canada – 2015/2016)

“Revered for his expertise covering all aspects of trademark law” (Chambers Guide - 2016)

A pre-eminent name for trademark law” (The Legal 500 Canada - 2016)

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

“Business-focused, strategic and very professional” and an “Enforcement wizard” (WTR 1000 - 2016)

He is a formidable opponent with some great high-profile wins under his belt” (WTR 1000 - 2015)

He is a judicious litigator and a big-picture thinker” (WTR 1000 - 2015)

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 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.

Mark is an editor of IP Update — Canada, the firm's intellectual property law bulletin.


Rankings and recognition

  • Recognized as a World IP Review Leader in 2016 & 2017
  • Recognized annually as a ‘Leading Lawyer’ in Intellectual Property Law in the The Legal 500 Canada since 2015 
  • Recognized in the 2017 edition of Chambers Canada: Canada’s Leading Lawyers for Business under Intellectual Property: Litigation
  • Included in the 11th edition (2017) of The Best Lawyers in Canada, recognized in Intellectual Property Law
  • 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
  • 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
  • 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
PRACTICE AREAS
Trademarks
Copyright & Media
Litigation
IP Management & Strategic Counselling
IP Crime
Licensing & IP Transactions
Domain Names & Internet Law
Marketing & Advertising
 

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.

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

  • “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

  • "Canadian Trademark Law: Prepare for Change," (co-author: Keltie Sim Luft), CCCA Magazine, Winter 2015 
  • Quoted in the article "Client-Centred Law Firm Marketing," which appeared in the April 2015 Issue of Lexpert Magazine
  • "Faster, cheaper trademark litigation," The Trademark Lawyer, Issue 1, 2015
  • "Court reinforces high standard for rejecting marks based on living individual's reputation" (co-author: Graham Hood), World Trademark Review Daily, July 22, 2014
  • "Federal Court: well-known geographic locations are inherently weak," World Trademark Review Daily, April 3, 2014
  • "Harley-Davidson may sell Screamin' Eagle clothing in association with famous house mark" (co-author Graham Hood), World Trademark Review Daily, March 20, 2014
  • "Canadian Council of Professional Engineers fails to prevent registration of 'engineering' mark," World Trademark Review Daily, January 21, 2014
  • Quoted in the article "Marlboro decision defeats marketing tactic of look-alike brand," which appeared in the The Lawyers Weekly on September 13, 2013
  • "SC denies request for leave to appeal decision preventing sale of no-name cigarettes," World Trademark Review Daily, April 23, 2013
  • "Federal Court expands what may constitute 'use' of a 'service,'" World Trademark Review Daily, March 29, 2011
  • "A Global Guide to Protecting Copyright (Canada)," Managing Intellectual Property, November 2009
  • "New court decision on 'use it or lose it' provision," World Trademark Review Daily, January 21, 2008
  • "Copyright Licensing Not the Answer to Grey Marketing" (co-author: Geneviève M. Prévost), Managing Intellectual Property, September 2007
  • "Fairweather achieves aim in TARGET APPAREL appeal," World Trademark Review Daily, November 7, 2006
  • "'Infringing' use wipes registered mark off of the register," World Trademark Review Daily, February 6, 2006
  • "Internal use of mark does not constitute actual use or passing off," World Trademark Review Daily, November 23, 2005
  • "CIPO seeks comments on streamlined opposition procedures," World Trademark Review Daily, November 14, 2005
  • "Supreme WIPO releases overview of key issues in UDRP decisions," World Trademark Review Daily, May 3, 2005
  • "Court to hear Lego appeal," World Trademark Review Daily, June 22, 2004
  • "A sound examination should not include design elements," World Trademark Review Daily, March 24, 2004
  • "Roller Derby iced by Federal Court," World Trademark Review Daily, July 7, 2003
  • "No stopping use of BOSTON MARKET before trial," World Trademark Review Daily, June 2, 2003
  • "American Sporting Goods gets the boot," World Trademark Review Daily, May 28 2003
  • "BOSTON CHICKEN plucked from registry," World Trademark Review Daily, April 11 2003
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