Cases
Experience: Diageo Canada v. Heaven Hill Distilleries et al, 2017 FC 571 - Successfully represented Plaintiff in protecting
enforcing CAPTAIN MORGAN trade dress. Defendant was held liable for trademark infringement, passing off
depreciation of goodwill,
required to destroy or deliver up infringing ADMIRAL NELSON'S product,
compensate Plaintiff for legal fees
damages or profits.
Bodum USA Inc
PI Design AG v Trudeau Corporation (1889) Inc, 2012 FC 1128 (Federal Court) - Successfully represented the defendant Trudeau Corporation in an industrial design infringement action where the Court rejected the plaintiffs' claim of industrial design infringement
declared their industrial design registrations invalid. This was the first industrial design infringement decision on the merits emanating from any level of the Federal Court since a 1993 amendment to the infringement provisions of the Industrial Design Act .
Marlboro Canada Limited v Philip Morris Products SA, 2012 FCA 201 (Federal Court of Appeal) - Successfully represented the plaintiffs by counterclaim Imperial Tobacco Canada Limited
Marlboro Canada Limited in a trademark infringement action of the MARLBORO word mark. The Federal Court of Appeal, overturning the decision of the trial judge, held that Philip Morris
Rothmans, Benson & Hedges, by selling a cigarette package without a br
name but incorporating the well-known design elements of Philip Morris' international MARLBORO package, had infringed the Imperial Tobacco's exclusive rights in the MARLBORO word mark in Canada. The Supreme Court of Canada dismissed Philip Morris' application for leave to appeal of this decision. My colleagues
I recently received the
2012 Canadian Trademark Milestone Case of the Year
award from Managing Intellectual Property (U.K.) for our success in this case.
Easton Sports Canada Inc v Bauer Hockey Corp
Nike International Limited, 2011 FCA 83 - Francois successfully represented Bauer Hockey Corp.
Nike International Limited in this appeal, which confirms the trial decision in 2010 FC 361 .
Nike International Limited
Bauer Hockey Corp v Easton Sports Canada Inc, 2010 FC 361 (Federal Court)
confirmed on appeal 2011 FCA 83 (Federal Court of Appeal) - Successfully represented Bauer Hockey
Nike International, which had the validity of their patent for a hockey skate confirmed by the Court. The patent was also found to be infringed by more than 30 models of skate sold by the defendant, Easton Sport.
Phostech Lithium Inc v Valence Technology Inc, 2011 FCA 107 - With Jeremy Want
Jean-Sebastien Dupont, successfully represented Phostech Lithium Inc. in having the Federal Court of Appeal stay execution of a Federal Court judgment in a patent infringement case until issuance of the decision on appeal.
Microsoft Corp c 9038-3746 Quebec Inc, 2010 FCA 151 - Francois represented Microsoft, the respondent (plaintiff) in this software counterfeiting case. The appellant (defendant) pleaded guilty to two charges of contempt of court for selling Microsoft counterfeit software against an injunction of the court
was thus ordered to pay a fine of $50,000 for each offence. The defendant had his appeal from that sentence dismissed, the Federal Court of Appeal finding that he had shown total disregard for the law
malicious
selfish contempt for the courts.
Producteurs Laitiers du Canada v Republic of Cyprus (Ministry of Commerce, Industry & Tourism), 2010 FC 719 - Francois represented the Republic of Cyprus, which appealed from the decision of the Trademarks Opposition Board dismissing its application to register the certification mark HALLOUMI for use in association with a particular cheese produced in Cyprus.
Bauer Hockey Corp v Easton Sports Canada Inc, 2010 FC 361 - Francois represented Bauer Hockey
Nike International, which had the validity of their patent for a hockey skate confirmed by the Court. The patent was also found to be infringed by more than 30 models of skate sold by the defendant, Easton Sport.
Prenbec Equipment Inc v Timberblade Inc, 2010 FC 23 - Francois represented Prenbec Equipment, the plaintiff in a saw tooth patent infringement case. In that interlocutory decision, Prenbec Equipment successfully had the Federal Court order the Patent Re-examination Board to stay the re-examination proceedings of the patent that were launched by the defendant. The Court found that the defendant was merely attempting to avoid dealing with the issue of credibility surrounding its alleged prior art.
Air Canada v AIS Infonetics Inc, 2009 FC 668 - Francois represented Air Canada, the defendant in a patent infringement action. In that interlocutory decision, Air Canada successfully had the plaintiff motion for security for damages dismissed. The Court held that AIS had not met the lower threshold of showing that the claim was even arguable.
Prenbec Equipment Inc v Timberblade Inc, 2009 FC 584 - Francois represented Prenbec Equipment, the plaintiff in a saw tooth patent infringement case. In this interlocutory decision, the defendant failed to convince the Court that the proceedings had to be stayed pending the re-examination proceedings of the patent.
Shell Canada Ltd v PT Sari Incofood Corp, 2008 FCA 279 -Francois represented Shell Canada, the opponent against the registration of the trademark JAVACAFE for various foods
beverages. The decisions of the Trademarks Opposition Board
the Federal Court were reversed by the Federal Court of Appeal. The trademark JAVACAFE was found to be descriptive considering that Java is an isl
well-known for its coffee.
MacLennan v Gilbert Tech Inc, 2008 FCA 35 - Francois represented Mr. MacLennan
Quadco Equipment in this second appeal to the Federal Court of Appeal in a patent infringement action brought against Gilbert Tech. The Court found that the patent for a saw tooth
tooth holder was infringed by the customers who were replacing the plaintiff's teeth with the defendant's, thus remaking the patented invention
not repairing it. The Court also found that the defendant, by referring to the plaintiff's teeth in its price list, infringed the patent by inducement.
Microsoft Corp v Cerrelli, 2007 FC 1364 - Francois represented Microsoft, which was awarded half of its costs on an exceptional solicitor/client basis considering that the defendants' conduct in the software counterfeiting action was tinted with bad faith.
MacLennan v Gilbert Tech Inc, 2006 FCA 204 - Francois represented Mr. MacLennan
Quadco Equipment in this first appeal to the Federal Court of Appeal in a patent infringement action brought against Gilbert Tech. The Federal Court of Appeal held that the Trial Judge erred in applying the law on infringement by inducement
returned the matter to the Trial Judge.
Bauer Nike Hockey Inc v Tour Hockey, 2003 FCT 451 - Francois represented Bauer Nike Hockey, the plaintiff in a trademark infringement action. Bauer Nike Hockey was granted a summary judgment by the Court based on a settlement offer accepted by the defendant.
Excelled Sheepskin & Leather Coat Corp v YM Inc (Sales), REJB 2002-27573, J.E. 2002-200 (Que CA) (Nuss J.A.) - Francois represented YM Inc., which successfully had the Quebec Court of Appeal reverse the permanent injunction granted against them by the Superior Court in a copyright
passing-off action.
Diamant Toys Ltd v Jouets Bo-Jeux Toys Inc, 2002 FCT 384 - Francois represented Diamant Toys, the plaintiff in a copyright infringement action of drawings
photographs relating to a line of toy products. In this interlocutory decision, the plaintiff was successful in obtaining an order for seizure before judgment of the defendant's products both in its possession
in the possession of third parties.
Sport Maska inc c Canstar Sports Group Inc, EYB 1994-84516 (Que CS) - Francois represented Canstar Sports Group, the defendant in an action brought by Sport Maska for passing off of its hockey helmets. Following a very thorough review of the law of passing off by the Quebec Superior Court, the defendant prevailed.
2426-7536 Quebec Inc v Provigo Distribution Inc (1992), 50 CPR (3d) 539 (Que SC) (Jasmin J.) - Francois represented 2426-7536 Quebec Inc., the plaintiff in this copyright infringement action. The plaintiff was successful in convincing the Quebec Superior Court that copyright subsisted in his pictograms
his plans for the interior
exterior of grocery stores, which were found to have been reproduced without his consent.
Martinray Industries Ltd v Fabricants National Dagendor Manufacturing Ltd (1991), 41 CPR (3d) 1 (FCTD) (Denault J.) - Francois represented Fabricants National Dagendor, the defendant in this folding doors patent infringement
validity action. The defendant successfully had the plaintiff's claim of infringement dismissed
, in counterclaim, had the main claims of the patent invalidated for being broader than the disclosure, obviousness
for prior sale.
Giffin v Canstar Sports Group Inc (1990), 29 CPR (3d) 26 (FCTD) (Rouleau J.) - Francois represented Canstar Sports, the defendant in this skate boots patent infringement action. On a motion for interlocutory injunction, the plaintiff failed to demonstrate that there was a serious issue to be tried.
Marque d'or inc c Clayman, EYB 1988-77910 (Que CS) (Gonthier J.) - Francois represented the plaintiffs in a complex unfair competition case. Direct solicitation of the employees of the plaintiffs by a former shareholder
director was found to amount to unfair competition.
Positron inc c Desroches, EYB 1988-77722 (CS) - Francois was involved in this case, which has become a leading authority in the Province of Quebec on the matter of trade secrets.
