Smart & Biggar

Global

Review

Canada

Dispute resolution

Canada’s deepest and most renowned intellectual property-based legal entity, Smart & Biggar, has etched itself a dominant position in the country’s IP community, most notably in the capacity as true trial lawyers. One peer notes, “More often than not, these cases actually go to court! And Smart & Biggar has a pretty stellar record of winning at trial.” Another sums up the firm’s ethos with the declaration, “There are IP lawyers and there are IP litigators. Smart definitely qualifies for the latter designation.” 

      The firm is revered for its range of experience covering patents, trademarks and copyrights, each being areas in which the firm has secured some landmark wins. Its celebrated patent practice leans heavily on the pharmaceutical industry, but is far from limited to this area, with a diverse portfolio of patent victories concerning everything from polymers to hockey helmets. Its trademark practice, meanwhile, has attracted a list of clients that reads like a “Who’s who” of household names. Historically boasting its deepest bench 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 the size of just a few years ago. The firm has also made a noted push into the Alberta market, luring one of Calgary’s only IP practitioners, Evan Nuttall, to its bench. Nuttall brings a unique focus on patents in the oil and gas market, although his practice is not limited to this area. In what is arguably the biggest trademark dispute handled by the firm of late, Toronto’s Mark Evans, Mark Biernacki  and Ottawa’s  Steve Garland  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. This case scored Smart & Biggar a prestigious “impact case” accolade during Benchmark’s 2021 award ceremony, one of only six cases to do so, and the only IP-related case to claim this honor. Also acting on this case is future star Graham Hood, who is championed by a client as, “a fantastic business partner with excellent business acumen, brilliant legal expertise and a pleasure to work with.” Garland and fellow Ottawa partner Jeremy Wantalso scored 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. 

      The firm’s Québec pillar has been equally active, with  François Guayfeaturing prominently as the most seasoned IP litigator. Guay is known for “putting trial skills paramount, even before IP lawyering,” an approach that has paid dividends over the years in advancing his agenda in several key wins. Guay represented several media entities, including Vidéotron, Bell Media, Groupe TVA, and Rogers Media, against three retailers of “pre-loaded” set-top boxes and unauthorized internet protocol television services that were configured to provide users with unauthorized access to copyrighted television content. In August 2021, the Federal Court issued a judgment that awarded nearly $30 million in statutory and punitive damages for copyright infringement, in addition to declaratory and injunctive relief. In another media-related matter, and one that illustrates the firm’s strategic ability to work across jurisdictions, Guay and Nuttall successfully represented members of the Motion Picture Association of America, Bell Media, Amazon and Netflix in an interim and interlocutory injunction matter and show cause contempt proceedings against the operators of the Beast IPTV service, an unauthorized online subscription service that provided access to a vast amount of illegal television content.Guay andEkaterina Tsimberis  represented Bel and Fromageries Bel Canada in a trademark infringement matter against Agropur Coopérative and Aliments Ultima as their new for Iögo Nano and Oka L’artisan snack cheeses sold in Canada have packaging that is confusingly similar to the Mini Babybel cheese packaging, for which Bel holds several Canadian trademark registrations. The matter settled before trial. Guay also acted with Jean-Sébastien Dupont and Want for Tekna Plasma Systems, a manufacturer of atomized metal powders that are used for additive manufacturing applications, especially in the aerospace industry. Tekna is the plaintiff in these two related cases: the first one is an action for impeachment and declaration of non-infringement of patents owned by a competitor that were threatening Tekna’s continued operations in Canada. In the second case, Tekna asserts that this same competitor infringes one of its patents. The trial of both cases is scheduled for March-April of 2022.