Canada’s Intellectual Property Firm

Mark Biernacki

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Mark Biernacki

Principal
  • Smart & Biggar LLP
Language(s): English

Savvy IP litigator and skilled negotiator

A skilled litigator and negotiator, Mark excels in all areas of IP litigation including patents, trademarks, copyrights and industrial designs. Recognized as an “IP star,” clients rely on Mark’s ability to successfully resolve disputes through negotiation, mediation and litigation, and commend him for his creativity and being "excellent in court.”

Mark is known for his broad IP litigation experience and expertise. He has successfully represented numerous clients before the Ontario Superior Court of Justice, Federal Court of Canada and the Federal Court of Appeal. In addition to successfully enforcing valuable pharmaceutical patents, Mark’s many precedent setting victories include securing a record level damage award for circumvention of technological protection measures under the Copyright Act.

Strategic advisor protecting high value trademarks and copyrights

Mark is equally accomplished in clearing, prosecuting and registering trademarks. Clients with high value trademark and copyright portfolios turn to him for his strategic advice on the development, implementation and execution of enforcement strategies. He also has expertise in trademark opposition and cancellation proceedings before the Trademarks Office.

Broad client network in Canada and internationally

Mark’s clients are diverse and include growing Canadian businesses, multi-national corporations, universities and governmental agencies. In addition, he frequently works with international associate firms to procure and enforce intellectual property rights in Canada.

Qualifications

  • News
  • Speaking
  • Industry Involvement
  • In the Media
  • “ Brands in the Metaverse and NFTs: Protecting Trademarks & Copyrights Online, in Digital Media, and Beyond”,  (with Daniel Anthony),  Smart & Biggar Webinar, September 15, 2022
  • “Bricks to Clicks: Protecting your brand and copyrights online in Canada from trolls to counterfeiters and media pirates”,  (with Daniel Anthony),  Smart & Biggar Webinar, August 19, 2021
  • "Stay ahead of the competition:  Strategies for brand building & advertising compliance in Canada" (with Alice Tseng and Catherine Bate), Smart & Biggar and AdStandards webinar, June 16, 2020
  • "Anti-Counterfeiting: Stopping Counterfeit Goods At The Border" (webinar), Canadian Bar Association, May 5, 2020
  • "Canadian Trademark Reform: A Follow Up" (participant), INTA Roundtable Series, San Francisco, CA, April 3, 2019
  • "Intellectual Property Updates for Technology Practice," (Panel Discussion), 22nd Can-Tech Law Annual Conference, Montreal,October 29, 2018
  • "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, 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

Memberships

  • Fellow, Intellectual Property Institute of Canada
  • Member, International Trademark Association (INTA); member of the Emerging Issues Committee (2024-2025); Chair of the Enforcement Committee (2022-2023); Vice-Chair of the Enforcement Committee (2020-2021); Subcommittee Chair of the General Trademark Enforcement Matters Subcommittee (2018-2019); member of the U.S. Subcommittee of the Parallel Imports Committee (2014-2017); member of the Discovery Procedures Sub-committee of the Enforcement Committee (2010-2013); member of the East Europe Anti-Counterfeiting Committee (2008-2009)
  • Associate, American Bar Association; member of the International Copyright Treaties and Laws Section

Teaching Activities

  • "Intellectual Property Basics," York University, March 2007

Publications