Canada’s go-to firm for brand protection and trademark litigation
In today’s highly competitive business environment, successfully and efficiently enforcing trademark rights and avoiding infringement is critical to protecting a company’s valuable goodwill and reputation.
In high-stakes litigation, we know what it takes to win and are committed to protecting our clients’ brands by vigorously enforcing their trademarks against misuse and infringement. No other firm can claim a more successful track record in trademark litigation than Smart & Biggar, and we have successfully represented our clients in numerous precedent-setting trademark cases in the Supreme Court of Canada, the Federal Court of Appeal, the Federal Court of Canada, and in the Provincial Courts of Quebec, Ontario, British Columbia and Alberta.
We have obtained groundbreaking judgments for our clients covering a vast spectrum of industries and ranging in subject matter from product appearance and trade dress infringement to the protection of pharmaceutical trade rights, from counterfeiting remedies and online trademark use to cross-border trademark rights, from the protection of iconic brand colours to the dilution of famous marks, from innovative pre-trial relief to landmark damage awards.
Our accomplished and formidable team works closely with brand owners to develop sophisticated and strategic brand enforcement programs, which might involve creating online and marketplace monitoring programs, and working with and coordinating survey firms, experts, investigators, and law enforcement and customs officials. Through our many courtroom successes we also have a sharp understanding of when litigation may not be the best option, and when a dispute might be resolved through settlement, mediation or other forms of ADR.
"Smart & Biggar is a major top-tier national firm. This gold-studded outfit is in a premier position to handle absolutely anything related to intellectual property. Make-or-break disputes are the meat and drink [of this] force to be reckoned with..." (World Trademark Review)
Widely recognized internationally and within the Canadian legal community, Smart & Biggar has repeatedly been ranked at the top of the Canadian trademarks field by World Trademark Review, chosen as Canada’s Trademark Contentious Firm of the Year by MIP, and chosen as Canada’s IP Litigation Firm of the Year by Benchmark Litigation. Several of our partners have also been honoured with awards such as Canadian Trademark Litigator of the Year and several of our trademark litigation victories for our clients have received awards for being Milestone Cases by each of these publications.
Key Contacts
Client Success
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Loblaws Inc v Pampered Chef et al
2021 FCA 29Successfully represented Pampered Chef et al before the FCA in having affirmed the trial decision dismissing allegations of trademark infringement brought by Canada’s largest retailer.Read More -
Loblaws Inc v Columbia Insurance Company et al
PC v. PC. Pampered Chef Succeeds in Trademark Infringement Battle
T-548-18Successful trial resulting in Federal Court’s dismissal of infringement and dilution claims brought by Canada’s largest retailer against Berkshire Hathaway’s companies, Pampered Chef...Read More -
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Institut National de l’Origine et de la Qualité, Comité Interprofessionnel du Vin de Champagne and MHCS v Sunwing Travel Group Inc, Sunwing Vacations Inc and Sunwing Airlines Inc
T-532-17Successfully represented the plaintiffs “The Champagne Parties” in obtaining a judgement on consent permanently enjoining the Defendants from using CHAMPAGNE or any variation that is false...Read More -
Badawy v 1038482 Alberta Ltd et al
2018 FC 807Successfully represented the defendant Schneider Electric in having a patent infringement action struck out at the pleadings stageRead More -
Randy River Inc v Mint Accessories Inc
CV-17-579497Successfully represented Plaintiff in action for trademark infringement and breach of contract, resulting in Defendant being permanently enjoined from continuing to infringe Plaintiff’s trademar...Read More -
Randy River Inc v Mint Accessories Inc
CV-17-579497Successfully represented Plaintiff in trademark infringement and breach of contract action, resulting in Defendant being enjoined by issuance of pre-trial interim and interlocutory injunction.Read More -
Ministry of Energy Industry and Tourism of the Republic of Cyprus c 3878422 Canada et al
2017 QCCS 3803Successfully represented the Ministry of Energy Industry and Tourism of the Republic of Cyprus in defending a motion brought by the defendants, members of the Saputo group, seeking dismissal of the ac...Read More
Unparalleled Expertise in Trademark Litigation & Enforcement
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Lexpert®-Ranked
10 lawyers in IP Litigation
2021The Canadian Legal LEXPERT® Directory -
Euromoney LMG
Two Top Lawyers
2021Expert Guides: Best of the Best -
WTR
12 leading trademark practitioners
2021World Trademark Review 1000 – The World’s Leading Trademark Professionals -
WTR
Gold Band Firm
2011-2021World Trademark Review 1000 – The World’s Leading Trademark Professionals -
WTR
Four partners named as Global Leaders
2019 & 2020World Trademark Review -
MIP
Tier One Firm for Trademark Law
2014-2020IP Stars Handbook: Trademark & Copyright -
Lexpert
Five leading litigators
2017-2020LEXPERT® Special Edition - Canada's Leading Litigation Lawyers -
MIP
Canadian Trademark Contentious Firm of the Year
2009, 2011, 2014 - 2017 & 2020Managing IP Americas Awards -
Lexpert®-Ranked
9 lawyers in IP Litigation
2020The Canadian Legal LEXPERT® Directory -
Lexpert®-Ranked
24 Lexpert®-ranked lawyers
2020The Canadian Legal LEXPERT® Directory
Related Publications & Articles
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Costco Wholesale Canada Ltd. v Simms Sigal & Co.: No more excuses for grey marketers that knowingly interfere with exclusive distribution agreements
The recent appeal decision Costco Wholesale Canada Ltd. v Simms Sigal & Co. Ltd. constitutes a win for distributors whose rights under an exclusive distribution agreement are knowingly undermined by t...Read More -
PC v. PC: Pampered Chef Succeeds Once Again in Trademark Infringement Battle: Smart & Biggar prevails in dismissal by Federal Court of Appeal
On February 15, 2021, the Federal Court of Appeal issued its decision dismissing an appeal from the Federal Court’s trial decision in Loblaws Inc v Columbia Insurance Company, 2019 FC 961.Read More -
Trademarks in 2020: A look back at the most notable Canadian trademark cases and developments
There were several notable trademark cases in Canada in 2020, including those addressing comparative advertising, depreciation of goodwill, brand parody, trademark ‘use’ via internet services and pote...Read More -
Global brand expansion: Why Canadian trademark owners should consider whether international registration is right for them
Until last year, most Canadian brand owners doing business abroad had limited options for protecting their trademarks outside of Canada.Read More -
Effectively using experts in IP Litigation – Part 2: Practise
In intellectual property litigation, the outcome of many high stakes cases has turned on expert testimony.Read More -
You’ve received a “cease and desist” letter – now what?
This is the sort of letter that no one wants to receive: one containing the words “cease and desist”. Whether it arrives by post, email or someone showing up at your door with a personal delivery, a c...Read More -
Federal Court of Appeal does not disturb lower court’s finding of 'use' for hotel services
In a highly anticipated decision, the Federal Court of Appeal recently held that a trademark owner could demonstrate “use” of a trademark in Canada in association with “hotel services” in the absence ...Read More -
Not all pun and games: Federal Court not amused with cannabis company’s brand parody
A recent decision of Canada’s Federal Court illustrates the danger of adopting a mark or name “inspired” by a famous or well-known brand, even when confusion is unlikely.Read More
Related News & Media
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Graham Hood discusses the risks of “U.S. centricity” in Canadian trademark practice at IPLSPRING Virtual
Smart & Biggar partner Graham Hood will speak on the panel “The Perils of U.S. Centricity in Trademark Practice: What U.S. Companies and Their Attorneys Assume about Foreign TM Laws at Their Own Risk”...Read More -
Jamie-Lynn Kraft presents on Section 45 in IPIC patent & trademark case law review series
On March 30, 2021, Smart & Biggar senior associate Jamie-Lynn Kraft will present a webinar on ‘Section 45’ as part of the IPIC Patent & Trademark Case Law Review Series.Read More -
Smart & Biggar shortlisted for seven North America awards by Managing Intellectual Property
Smart & Biggar is pleased to share that the firm has been shortlisted for an impressive and industry-leading seven Canadian IP awards at Managing Intellectual Property’s 2021 North America Awards.Read More -
Smart & Biggar lauded by Chambers Global for “bench strength and quality representation” in Intellectual Property and IP Litigation
Smart & Biggar is pleased to share that the firm has once again received top-tier recognition in Intellectual Property in the 2021 edition of Chambers Global – The World’s Leading Lawyers for Business...Read More -
Smart & Biggar again earns highest ranking with 12 lawyers honoured for “success across the brand spectrum” in the 2021 edition WTR 1000
Smart & Biggar is pleased to share our acclaim in the most recent release of the World Trademark Review 1000 (WTR 1000) – The World’s Leading Trademark Professionals.Read More -
5 Smart & Biggar lawyers listed in Lexpert Special Edition Litigation 2020
Smart & Biggar is pleased to share that Mark Evans, Gunars Gaikis, Steven Garland, François Guay and Sheldon Hamilton have been recognized once again in the annual Lexpert Special Edition on Litigatio...Read More -
Smart & Biggar earns Managing Intellectual Property's highest ranking in all practice areas in 2020
Smart & Biggar is proud to share that we are the only exclusively Canadian firm to be recognized as a Tier 1 firm in all practice areas (trademark contentious, trademark prosecution, patent contentiou...Read More -
Smart & Biggar partners hailed as “highly experienced,” “highly respected”, “skilled” and “one of the strongest trademarks experts” by Who’s Who Legal: Trademarks 2020
Smart & Biggar is pleased to share that three partners are listed in the Who’s Who Legal: Trademarks 2020 guide as being among the world’s leading lawyers in trademarks.Read More