Litigation

Canada's "IP Litigation Firm of the Year"
Benchmark Canada Awards, 2017, 2016, 2015

Canada’s “Go-to Firm” for IP Litigation
The Legal 500 Canada, 2015 Edition

Canada's "Trademark Contentious Firm of the Year"
Managing Intellectual Property's North America Awards, 2017, 2016, 2015, 2014

Canadian Trademark Milestone Case of the Year
Managing Intellectual Property's North America Awards, 2017, 2013, 2012 

Smart & Biggar is a dominant force in intellectual property litigation. We know what it takes for our clients to win in high stakes IP litigation. Our clients benefit from a rare combination of successful trial experience and deep sophisticated subject matter expertise and analysis — resulting in victories at all levels, in all areas of IP. And because we know the importance of providing our clients with a competitive advantage, we are able to draw upon these skills and experience to develop and provide our clients with powerful and effective enforcement and litigation strategies.

Recognized as Canada’s leading IP litigation firm, our formidable team of litigators  are efficient and highly effective trial lawyers, and no other Canadian firm can claim a more distinguished and successful record. We routinely handle Canada’s most commercially important and technically complex intellectual property cases. International clients also look to us based on our significant experience in multijurisdictional cases, successfully representing clients in Canadian disputes and actively involved in the coordination of litigation strategies worldwide.

We have represented clients in the Supreme Court of Canada on more than 50 occasions, and many of our victories on behalf of our clients are leading Canadian precedents. Some of our most recent victories on behalf of our clients include:

Largest damages award in Canadian history for patent infringement at $645 million
The Dow Chemical Company et al v Nova Chemicals Corporation

  • In a series of complex patent infringement proceedings, Dow was awarded the largest patent infringement award in Canadian history at over $645 million. 

Abolishing the “Promise Doctrine” for patents, bringing Canada in line with the world
AstraZeneca Canada Inc v Apotex Inc

  • In a landmark victory, the Supreme Court of Canada struck down the “Promise Doctrine” in an important victory for patent holders and innovators involving AstraZeneca’s successful NEXIUM product.

Fiercely defending “trade dress” to block competitors and protect brand value
Diageo Canada Inc v Heaven Hill Distilleries Inc et al

  • The Defendant was permanently enjoined from selling its Admiral Nelson’s rum as it was held to infringe and depreciate the value of the goodwill attaching to the iconic Captain Morgan trade dress. 

Precedent-setting decision on copyright infringement netting damages of $12 million
Nintendo of America Inc v King et al

  • In this precedent-setting decision, the Federal Court awarded Nintendo $12,760,000 in damages for circumvention of technological protection measures (TPMs) and copyright infringement under the Copyright Act.

Extraordinary measures to block unauthorized access to copyrighted media content
Bell Canada et al v 1326030 Ontario Inc dba ITVBox.net et al

  • The Federal Court issued a pre-trial injunction against retailers of set-top boxes “pre-loaded” with various applications that provide users with unauthorized access to copyrighted television content. 

Asserting validity of pharmaceutical patents and litigating infringement by generics
AstraZeneca Canada Inc et al v Apotex Inc

  • The Federal Court of Appeal upheld a trial decision finding that the patent for AstraZeneca’s successful LOSEC product was infringed.

The breadth and depth of our litigation group has been recognized both internationally and within the Canadian legal community, and many of our team members have been honoured by leading industry publications, including:

    Gunars Gaikis 
one of the best patent litigators since the industry began ” and “the first name to spring to mind for robust patent protection in branded pharmaceuticals”. A “seasoned gladiator” praised as a “a skilled fighter and lifecycle strategist for original drugs companies” and a “wonderful litigator”. Named Canadian Patent Litigation Attorney of the Year by LMG Life Sciences.
  

    Francois Guay 
one of the top lawyers in the country and is on the juiciest cases in Canada”, and “a shoo-in for the best litigator in Quebec, if not the whole of Canada”.  A “major practitioner” with a “knack for finding the most efficient route out of trouble”. Named Canada's Trademark Litigator of the Year twice by Benchmark Canada, and recognized on two occasions for Canadian Trademark Milestone Case of the Year award by Managing Intellectual Property (MIP). 


    Steven Garland 
“top of mind for savvy representation”, “very skilled”, “a courtroom ace”, and “among the best” an "exceptional litigator. He really stands out from the crowd due to the high-profile cases he’s had in recent years". “Fantastic lawyer” who competes in a “broad array of contests”. Named Canada's Trademark Litigator of the Year for 2013 by Benchmark Canada, recognized with the Canadian Trademark Milestone Case of the Year award in 2013 by Managing Intellectual Property (MIP), and recognized with the 2012 Canadian Patent Case of the Year by Managing Intellectual Property (MIP).



      Mark Evans 
“terrific courtroom lawyer,” “if I were to think of a pure IP litigator, I would think of him. He is fantastic – really on top of his game”“a formidable opponent with some great high-profile wins under his belt”, “a pre-eminent name for trademark law”, an “enforcement wizard” and “revered for his expertise covering all aspects of trademark law”). Recognized for two consecutive years by Benchmark Canada as Canada’s Trademark Litigator of the Year.


 

  
Sheldon Hamilton 
very successful”, “excellent”, “highly effective” “he can be recommended in a heartbeat”, “a pharma whizz”, and “has prevailed in many tricky courtroom scenarios”.


We litigate across Canada — in both the Common Law and Civil Law Courts, at the highest appellate levels and in both official languages. We represent clients in the Supreme Court of Canada, the Federal Court of Canada, and in the Provincial Courts of Quebec, Ontario, British Columbia, and Alberta.

Our vast experience and success in all areas of IP litigation, including:

• patent litigation

• trademark and trade-dress litigation

• copyright litigation

• industrial design litigation

• false and misleading advertising litigation

• trade secrets litigation

• anti-counterfeiting and IP crime litigation

• domain name disputes and litigation

• alternative dispute resolution

Primary Contacts
Steven Garland
Partner
Ottawa
Barrister and Solicitor, Patent and Trademark Agent

Phone: 613.232.2486
François Guay
Partner
Montreal
Barrister and Solicitor, Trademark Agent

Phone: 514.954.1500
Mark Evans
Partner
Toronto
Barrister and Solicitor, Patent and Trademark Agent

Phone: 416.593.5514
Gunars Gaikis
Partner
Toronto
Barrister and Solicitor, Patent and Trademark Agent

Phone: 416.593.5514
Sheldon Hamilton
Partner
Toronto
Barrister and Solicitor, Patent and Trademark Agent

Phone: 416.593.5514
Yoon Kang
Partner
Toronto
Barrister and Solicitor, Patent and Trademark Agent

Phone: 416.593.5514
Alistair Simpson
Partner
Calgary
Barrister and Solicitor, Patent and Trademark Agent

Phone: 587.887.9997
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