Seizure before judgment

Nevica Contracts Ltd. v. Gemini Fashions of Canada Ltd. et al. (12 May 1997, T-899-97 (F.C.T.D.)) — Successfully obtained a detention Order from the Federal Court of Canada under sections 27, 44 and 44.1 of the Copyright Act and seized and detained unauthorized ski jackets made according to the plaintiff's novel design.

Sanrio Company, Ltd. v. Shin Shu Enterprises Co. Ltd. (13 Jan 1997, T-399-97 (F.C.T.D.)) — Successfully obtained a detention Order from the Federal Court of Canada under sections 27, 44 and 44.1 of the Copyright Act and sections 53 and 53.1 of the Trade-marks Act and seized counterfeit HELLO KITTY merchandise; subsequently obtained judgment against the defendants.

Trade-mark expungement

Candrug Health Solutions Inc. v. Thorkelson (2007) F.C.J. No. 586 — Successfully expunged trade-mark registrations for CANADA DRUGS and CANADADRUGS.COM.

Interlocutory injunctions

Thorne Research Inc. et al. v. Thorne Research (Canada) Ltd. et al. (2003) (B.C.S.C.) — Obtained interim and interlocutory injunction in a trade-mark and copyright infringement case for U.S. manufacturer against Canadian distributor.

Summary judgments

Albian Sands Energy Inc. v. Jeff Stibbard et al., 2005 FCA 332 — Successfully had plaintiff's case for passing-off struck on appeal of summary judgment application on the basis that there could be no passing-off or trade-mark infringement without use of the trade-mark in trade in Canada.

Procedural motions

Suafnet Canada Inc. v. Shalid Abid et al. (2004) (B.C.S.C.) — Successfully obtained an order regarding the designation of confidential information and defended a motion to strike out the Statement of Claim in whole or in part.

Gillette Co. v. Dynamic Toy Importers Ltd. (2003) F.C.J. No. 1219 — Successfully obtained particulars regarding the defendant's allegations of invalidity of trade-marks with costs payable forthwith.

Nintendo of America Inc. v. Battery Technologies Inc. (2001) F.C.J. No. 914 —Successfully obtained orders of the Court for the plaintiff to strike allegations of tortuous conduct and negligent misrepresentations from both the counterclaim and subsequent defence of the defendant on the basis that the Federal Court lacks jurisdiction in this regard.

Successfully defended oppositions

LONDON UNDERGROUND (828,071)
@ROAD (1,016,863)

Successful opposition decisions

IRON CHEF (1,303,714)
SUSHIBOY (844,882)
STRAWBERRY TOMATOES (1,214,164)
NETLOCK & N Design (817,848)

Domain name disputes

best-western.ca

dB Special Instruments Inc. v. AIM Technologies Inc., Claim Number: FA1107001397026

Memberships

• Fellow, Intellectual Property Institute of Canada
• Member, International Trademark Association; member of the Academic Committee; project team leader of the Academic Course; member of the Canadian Roundtables project team
• Member, Canadian Bar Association

Speaking engagements

• "Intellectual Property Overview: Trade-marks, Copyrights, Patents, and IP Licensing" (co-presenter: Jeffrey D. Morton), presentation to Edwards, Kenny & Bray LLP, Vancouver, February 9, 2012
• "Patent Disputes," The Continuing Legal Education Society of BC's seminar on "Intellectual Property for Litigators 2011," Vancouver, October 2011
• "Trade-marks," Smart & Biggar's Canadian IP Law Update: Practical Tips and Information for U.S. Attorneys, Palo Alto, CA, November 2010
• "Trade-marks," Smart & Biggar's Canadian IP Law Update: Practical Tips and Information for U.S. Practitioners, San Diego, CA and Los Angeles, CA, April 2010
• Has provided a number of in-house training seminars for clients

Teaching activities

• "Intellectual Property" (with Karen F. MacDonald and J. Christopher Robinson), University of British Columbia Faculty of Law, January to April 2001 through 2006, January to April 2008 through 2010
• "Intellectual Property" (with Michael D. Manson and J. Christopher Robinson), University of British Columbia Faculty of Law, January to April 2000

Publications

• "The effect of innocent misstatements on the validity of trade-marks" (co-author: Bryan F. McLean), Canadian ReMARKS, April 2012
• "Trade-mark examination: approvals issued in special circumstances," Canadian ReMARKS, July/August 2011
• "Trade-mark "use" on samples and in clinical trials," Canadian ReMARKS, May/June 2011
• "An update on counterfeiting and piracy remedies in Canada" (co-author: Michael D. Manson), Canadian ReMARKS, January/February 2011
• "International News Brief: Canada," Managing Intellectual Property – Chinese Edition, March 2008
• "International News Brief: Canada," Managing Intellectual Property – Chinese Edition, June 2008