Tel: 613-232-2486
Fax: 613-232-8440
Email: ottawa@smart-biggar.ca
Website: www.smart-biggar.ca
Number of partners: 30
Number of attorneys: 72
Key Litigation Contacts
Ottawa - Steven Garland sbgarland@smart-biggar.ca
Toronto - Mark Evans mkevans@smart-biggar.ca & Gunars Gaikis ggaikis@smart-biggar.ca
Montreal - François Guay fguay@smart-biggar.ca
Vancouver & Calgary - Alistair Simpson agsimpson@smart-biggar.ca
Smart & Biggar is Canada’s largest firm practising exclusively in intellectual property and technology law. We work directly with global and domestic organizations, and seamlessly as one team with associate firms, to help our clients secure, protect and maximize the value of their inventions and intellectual property investments in Canada.
From five offices across Canada, we offer the full complement of intellectual property services including strategic IP counseling, IP litigation, IP transactions support, licensing, and patent and trademark agency services. We serve many of the world’s leading organizations representing the broad spectrum of industries.
Intellectual Property Litigation
Smart & Biggar is a dominant force in intellectual property litigation. We 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. Many of our victories on behalf of our clients are leading Canadian precedents, and we have represented clients in the Supreme Court of Canada on more than 50 occasions.
Our formidable team of litigators provides clients with the unparalleled protection they need. 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 Federal Court of Canada, and in the Provincial Courts of Quebec, Ontario, British Columbia, and Alberta. We also have significant experience in multijurisdictional cases, successfully representing clients in Canadian disputes and actively involved in the coordination of litigation strategies worldwide.
We know what it takes for our clients to win in high stakes IP litigation. We provide clients with a rare combination of successful trial experience and deep and sophisticated subject matter expertise and analysis — resulting in victories for clients 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 effective enforcement and litigation strategies. Smart & Biggar’s Litigation Practice Group has 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
Rankings & Recognition
Smart & Biggar is recognized as Canada’s leading IP litigation firm. 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:
- Canada’s “IP Litigation Firm of the Year” – Benchmark Canada Awards 2018, 2017, 2016, 2015
- Canada’s “Go-to firm for IP litigation” – The Legal 500 Canada 2017 Edition
- Five leading lawyers recognized across he areas of intellectual property, intellectual property litigation and Biotechnology – The Lexpert®/American Lawyer Guide to the Leading 500 Lawyers in Canada 2017 Edition
- Canadian Trademark Contentious Firm of the Year and recipient of Milestone Case of the Year for North America. – Managing Intellectual Property’s North America Awards 2017
- Achieved the highest ranking as a Canadian Trademark Contentious Firm of the Year and awarded Milestone Case of the Year for North America. – Managing Intellectual Property’s 2017 World IP Survey
- Achieved the highest ranking as a Band 1 firm in Canadian intellectual property law firm – Chambers Canada Awards 2018, 2017, 2016, 2015
Other offices
Toronto
Box 111 Suite 1500
438 University Avenue
Toronto ON M5G 2K8
Canada
Phone: 416.593.5514
Fax: 416.591.1690
toronto@smart-biggar.ca
Montreal
Suite 3300
1000 De La Gauchetière Street West
Montreal QC H3B 4W5
Canada
Phone: 514.954.1500
Fax: 514.954.1396
montreal@smart-biggar.ca
Vancouver
2300-1055 West Georgia Street
PO Box 11115
VancouverBC V6E 3P3
Canada
Phone: 604.682.7780
Fax: 604.682.0274
vancouver@smart-biggar.ca
Calgary
BurnsBuilding
301-237 8th Avenue SE
CalgaryAB T2G 5C3
Canada
Phone: 587.887.9997
Fax: 587.887.9998
calgary@smart-biggar.ca
Last updated March 6th 2018
Smart & Biggar/Fetherstonhaugh
A collaboration operating in union for a century on average, Smart & Biggar/Fetherstonhaugh is Canada's largest intellectual property firm and the only one to grow to national levels solely on the strength of this exclusive practice focus. One peer testifies, "Pound for pound, they are on the highest end of competency, and I'm always happy to see them on a file because there's less artificial positioning and more cut-to-the-chase action. And look at the diversity there! It's not just all pharma work for one client, like [it is for] certain other shops." A client remarks, "What many IP 'litigators' often forget is that, no matter how well you know this stuff, you have to translate it in a way that actually wins cases. You never have to worry about that with Smart & Biggar – their litigators never forget that trial skills are just as important a piece in the IP puzzle as the scientific minutiae." The firm attends to all manner of IP disputes regarding trademarks, patents, copyrights, designs, licenses, and general media issues. Smart & Biggar arguably sees its greatest strength and depth in Ontario, where it maintains an office in the commercial epicenter of Toronto as well as one in the capital city of Ottawa, a locale which is not only very attractive to IP litigators due to its proximity to the Federal Court but also due it to its status as a rapidly developing hotbed for the technology sector. Perhaps the firm's most visible appointment of late is its acting as co-counsel for Dow Chemical in its hard-fought infringement battle with Nova. Ottawa's Steven Garland triumphed for Dow when the client was awarded approximately $650 million dollars (CAD) in July 2017 as a result of the infringement. Although the matter is presently under appeal, Garland's victory is roundly recognized as a substantial one. "This is one of the biggest patent cases in Canada at the moment, and Steven and his team knocked it out of the park," chirps a peer. Smart & Biggar lays claim to another major recent patent win, this one on behalf of AstraZeneca in a landmark pharmaceutical patent case in which the Supreme Court of Canada in June 2017 struck down the utility "promise doctrine" and upheld AstraZeneca's NEXIUM patent as useful. Toronto's Gunars Gaikis, acknowledged by peers as "a pillar of the IP community, a true patent guru," led the team for AstraZeneca. Mark Biernacki is lead counsel for Nintendo in an application brought by the client against respondents for copyright infringement and circumvention of technological protection measures The case was heard in the fall of 2016, and in 2017 the Federal Court found for Nintendo and awarded $12.76 million in damages, including $1 million in punitive damages. Mark Evans remains busy with trademark work, including a 2016 injunction case concerning two law firms, and an upcoming trial for Diageo concerning alleged infringement of its Captain Morgan brand. He is also engaged in a pending action for copyright infringement relating to photographs by famed photographer Vivian Maier.
Smart & Biggar/Fetherstonhaugh
A collaboration operating in union for a century on average, Smart & Biggar/Fetherstonhaugh is Canada's largest intellectual property firm and the only one to grow to national levels solely on the strength of this exclusive practice focus. Peers confirm, "Smart & Biggar is the biggest and the deepest IP shop in Canada." The firm estimates that it devotes 25% of its overall practice to contentious issues, and it has been observed that it "seems to be growing its litigation practice." The firm attends to all manner of IP disputes regarding trademarks, patents, copyrights, designs, licenses, and general media issues. The firm is still relatively new to Québec, having opened an office in Montréal in 1990, but has quickly ascended to a comfortable position amongst the province's premier players in IP. In Montréal, the firm's "leading light" is considered to be François Guay, who maintains a varied practice, roughly 65% of which finds him acting for plaintiffs who have had their intellectual property infringed. "I actually think of him as more of a litigator and less as just an IP guy," endorses a peer. Guay, fresh off of a trademark infringement win on behalf of Imperial Tobacco in a February 2016 Court of Appeal ruling, was at it again in June of that year when the Federal Court issued an interlocutory injunction against retailers of set-top boxes that are configured, or "pre-loaded", with various applications that provide their users with unauthorized access to copyrighted television content. The claim is based on allegations of direct and secondary copyright infringement, and on a cause of action under the Radiocommunication Act.
Ontario
Benchmark Rankings
NEW 2018 RANKINGS
Québec
Benchmark Rankings
NEW 2018 RANKINGS
Highly Recommended |
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Blake Cassels & Graydon |
Borden Ladner Gervais |
Davies Ward Phillips & Vineberg |
Fasken |
IMK |
McCarthy Tétrault |
Norton Rose Fulbright-Canada |
Stikeman Elliott |
Woods |
Recommended |
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Belleau Lapointe |
Dentons |
Gowling WLG |
Langlois Lawyers |
Lavery |
LCM Attorneys |
Osler Hoskin & Harcourt |
Renno Vathilakis |
Smart & Biggar/Fetherstonhaugh |
Torys |
Attorney | Ranking | Practice Area |
---|---|---|
Biernacki, Mark | Litigation Star | Intellectual Property |
Evans, Mark | Litigation Star | Intellectual Property |
Gaikis, Gunars | Litigation Star | Intellectual Property |
Garland, Steven | Litigation Star | Intellectual Property |
Guay, François | Litigation Star | Intellectual Property |
Hamilton, J. Sheldon | Litigation Star | Intellectual Property |
Ingram, Colin | Litigation Star | Intellectual Property |
Kang, Yoon | Litigation Star | Intellectual Property |
Lo, Timothy | Intellectual Property | |
Manson, Michael | Antitrust, Energy and Natural Resources, FCPA and Enforcement, Intellectual Property | |
Pei, Nancy | Litigation Star | Intellectual Property |
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