Canada’s Intellectual Property Firm

Smart & Biggar “revered” for “landmark wins” in patents, trademarks and copyright in 2021 Benchmark Canada Guide

Smart & Biggar is pleased to share that Benchmark Litigation has honoured the firm once again as a leader in Intellectual Property (IP) Litigation, describing Smart & Biggar as “Canada’s deepest and most renowned intellectual property-based legal entity, [who has] etched itself a dominant position in [Canada’s] IP community, most notably in the capacity as true trial lawyers.” As one peer noted “Smart & Biggar has a pretty stellar record of winning at trial.”

In its 2021 Canada Guide, Benchmark recognized 13 Smart & Biggar partners as “Litigation Stars” for their exceptional work and expertise across IP litigation in trademarks, patents, pharmaceutical, industrial designs and copyright and media. Additionally, Benchmark has identified partner Daniel Davies as a ‘Future Star’, listing 14 lawyers in total. In addition, Steven Garland is again honoured by Benchmark Litigation as a Top 50 Trial Lawyer in Canada in 2021.

Benchmark highlighted that Smart & Biggar’s litigation team has grown notably in size. Historically boasting one of the deepest IP benches in Ontario, with practitioners of equal horsepower in its offices in Toronto and Ottawa, the firm has recently provided a substantial boost to its Montréal office, which has grown to nearly double its size of just a few years ago. The guide also noted Smart & Biggar’s “push into the Alberta market”, citing the addition of Calgary partner Evan Nuttall as one of Calgary’s only IP practitioners with a unique focus on patents in the oil-and-gas market.

In its analysis Benchmark describes Smart & Biggar as “revered for its range of experience covering patents, trademarks and copyrights, each being areas in which the firm has secured some landmark wins”. The guide praised our celebrated patent practice [that] leans heavily on the pharmaceutical industry, anchored by litigation stars Sheldon Hamilton, Yoon Kang and Nancy Pei, in addition to “a diverse portfolio of patent victories concerning everything from polymers to hockey helmets”. Further praise was offered for our trademark practice which has attracted a list of clients that reads like a “who’s who” of household names.”

Clients offered their praise describing Smart & Biggar as “gifted advocates, highly technically competent, and provide excellent value especially considering their world-class litigation skills.” Another client elaborates, “We go to this firm with all kinds of intellectual property work, in particular trademark opposition matters and general brand protection work, cease-and-desist letters as well as trademark prosecution work.” and noted “[They deliver] outstanding written work product and oral advocacy, extremely effective cross-examination and responses to questions from the bench. They also have very good client relationship management and a tailor-made approach.”

Benchmark gives special mention to several partners, including:

Toronto Managing Partner Mark Evans, Toronto partner Mark Biernacki and Ottawa Managing Partner Steven Garland, who handled the firm’s largest trademark dispute within the past year. They acted in successfully defending a trademark infringement action brought by Loblaws in relation to Pampered Chef’s use of its “PC” logo. The case wound its way to the Federal Court of Appeal, where Smart & Biggar triumphed in February 2021. Graham Hood, who also acted on this case, is given mention in the guide as a ‘future star’. He is championed by a client as “a fantastic business partner with excellent business acumen, brilliant legal expertise and a pleasure to work with.”

Ottawa partner Jeremy Want is mentioned, alongside Steven Garland, for success at the Federal Court of Appeal when that court affirmed the Federal Court’s decision awarding Dow $650 million in a patent infringement matter brought against Nova Chemical, bringing this long-running matter to a close.

Montreal Managing partner François Guay, who features prominently as the office’s most seasoned IP litigator, scored a victory with partner Jean-Sébastien Dupont for Canadian National Railway (CN) in February 2020, when the Federal Court of Appeal issued its judgment granting CN’s appeal in its lower court win against BNSF Railway Company, reaffirming the long-established practice of granting protective orders to parties involved in IP litigation before the Federal Court in Canada.

François, with partner Ekaterina Tsimberis, also represented Bel and Fromageries Bel Canada in a trademark infringement matter against Agropur Coopérative and Aliments Ultima related to Iögo Nano and Oka L’artisan snack cheeses sold in Canada which have packaging that is confusingly similar to products for which Bel holds several Canadian trademark registrations, including the well-known Mini Babybel cheese snack.

The complete list of Smart & Biggar’s 2021 Benchmark Canada Guide includes: Mark Biernacki, Daniel Davies, Jean- Sébastien Dupont, Mark Evans, Gunars Gaikis, Steven Garland, François Guay, Sheldon Hamilton, Colin Ingram, Yoon Kang, Evan Nuttall, Nancy Pei, Ekaterina Tsimberis and Jeremy Want.

Congratulations to all on this notable recognition!

To view Benchmark’s full review of Smart & Biggar, visit here.

Smart & Biggar is widely recognized as Canada’s leading firm for intellectual property law, with offices in Ottawa, Toronto, Montreal, Vancouver and Calgary. We are leaders in intellectual property and technology law and have been serving clients for over a century.