Mark Evans

Practice Details

• Firm Information
  Position

  Partner, Toronto; Barrister and Solicitor; Patent and Trademark Agent

  Firm Name

  Smart & Biggar
• Representative Cases & Transactions
  Cases

  Representative Cases: R
  y River Inc v Mint Accessories Inc, CV-17-579497, October 30, 2017 - Successfully represented Plaintiff in trademark infringement
  breach of contract action, resulting in Defendant being enjoined by issuance of pre-trial interim
  interlocutory injunction. The Plaintiff was also awarded $10,000 in legal fees.
  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.
  Sim & McBurney v Aird & McBurney et al, 2016 ONSC 4063 - Successfully represented Defendants in litigation alleging trademark infringement, passing off, breach of fiduciary obligations
  breach of contract. Litigation was successfully resolved with dismissal of action, thereby permitting Defendant to continue use of its name.
  Jack Black LLC v The Attorney General of Canada, 2014 FC 664 - Successful appeal to the Federal Court of an application to register the trademark JACK BLACK for men's skincare products, thereby overturning the Examiner's objection that the mark would be likely to be mistaken for the actor, Jack Black.
  H-D USA LLC v Berrada, 2014 FC 207 - Successful trial resulting in dismissal of infringement claims against Harley-Davidson, thereby allowing Harley-Davidson to sell its SCREAMIN' EAGLE clothing in Canada notwithst
  ing Berrada's common law use of SCREAMING EAGLE for clothing
  trademark registration for the operation of a clothing store. Berrada was also ordered to pay more than $500,000 in costs to Harley-Davidson.
  London Drugs Limited v International Clothiers Inc, 2014 FC 223 - Successfully resisted opposition appeal in the Federal Court of Canada, thereby permitting registration of the mark SMITH & BARNES LONDON.
  International Clothiers Inc v Dorna Sports, 2013 FC 285 - Successful appeal to the Federal Court, thereby reversing Opposition Board decision
  preventing registration of the trademark MOTO in relation to wearing apparel.
  Hawke & Company Outfitters LLC v Retail Royalty Company, 2012 FC 1539 - Successfully resisted opposition appeal in the Federal Court of Canada, on behalf of American Eagle Outfitters, thereby preventing registration of HAWKE & CO OUTFITTER logo.
  Target Corporation v Fairweather Ltd (2011), 2011 FC 758 - Successfully defended interlocutory injunction in Federal Court in passing off case concerning operation of TARGET APPAREL chain of retail stores, with award of costs against the plaintiff.
  TSA Stores Inc v Registrar of Trademarks, 2011 FC 273 - Successful Federal Court appeal, thereby maintaining series of registrations for SPORTS AUTHORITY trademark for sporting goods store services. Federal Court held that the trademarks were in use in Canada, notwithst
  ing the absence of any bricks
  mortar stores or sales in Canada, by means of information provided on a U.S.-based website.
  Procter & Gamble Inc v Colgate-Palmolive Canada Inc, 2010 FC 231 - Successfully resisted opposition appeal in the Federal Court of Canada, on behalf of Colgate-Palmolive, thereby permitting registration of a non-traditional trademark for coloured stripes applied to toothpaste.
  Bereskin & Parr v Fairweather Ltd, 2007 FCA 376 - Successfully resisted appeal in the Federal Court of Appeal,
  maintained registration of the trademark TARGET APPAREL with award of costs in favour of client.
  Fairweather Ltd v Registrar of Trademarks, 2006 FC 1248 -Successful appeal in the Federal Court of Canada with award of costs in favour of client. Federal Court maintained registration of the trademark TARGET APPAREL for wearing apparel even though commercial use of mark had not yet recommenced in the marketplace.
  H-D Michigan Inc v MPH Group Inc, 2006 FC 538 - Successful Federal Court appeal of Opposition Board decision, on behalf of Harley-Davidson, thereby blocking registration of the trademark HARLEYWOOD.
  Inhesion Industrial Co v Anglo Canadian Mercantile Co (2000), 6 CPR (4) 362, (FCTD) - Successfully resisted summary judgment motion in Federal Court of Canada in copyright case concerning tableware.
  Contour Optik v Hakim Optical Ltd (2000), T-1880-00 - Successfully rescinded Anton Piller Order
  issuance of interim injunction in Federal Court of Canada in patent case concerning eyeglasses.
  Salton Appliances (1985) Corp v Salton Inc (2000), 4 CPR (4) 491, (FCTD) - Successfully defended interlocutory injunction in Federal Court of Canada in trademark case on behalf of manufacturer of George Foreman Grill.
  Garbo Group Inc v Harriet Brown & Co (1999), 3 CPR (4) 224, (FCTD) - Successfully resisted opposition appeal in the Federal Court of Canada thereby permitting the registration of the Greta Garbo Signature trademark on behalf of estate of Greta Garbo.
  Maison des Pates Pasta Bella Inc v Olivieri Foods Ltd (1998), 80 CPR (3d) 234 - Successfully resisted expungement in Federal Court of Canada of trademark registration concerning food products, with award of solicitor-
  -client costs against applicant.
  Walkabout v Icon Distribution Systems (1998), T-1732-98 - Successfully rescinded Anton Piller Order
  issuance of interim injunction in Federal Court of Canada in trademark case concerning clothing.
  Castlemore Marketing Inc v International Trade & Finance Corp (1996), 65 CPR (3d) 334, (FCTD) - Successfully defended interlocutory injunction in Federal Court of Canada in trademark case concerning toiletries.
  Excelled Sheepskin & Leather Coat Corp v Y.M. Inc (Sales) (1995), T-1217-95 - Successfully rescinded
  Anton Piller Order
  issuance of interim injunction in Federal Court of Canada in trademark case concerning clothing
  successfully resolved action with award of solicitor-
  -client costs against plaintiff.
  Productions
  Distributions Videodrome Inc v Cavis Productions Inc (1994), 56 CPR (3d) 449, (FCTD) - Successfully struck out action in Federal Court of Canada as no genuine issue for trial in trademark case concerning videos.
  Cornerstone Securities v Registrar of Trademarks (1994), 56 CPR (3d) 209 - Successfully resisted appeal in Federal Court of Canada, thereby obtaining cancellation of trademark registration for financial services.
  Alphanet Telecom Inc v MCI Communications Corp (1994), B44/94 - Successful in avoiding issuance of interlocutory injunction in Ontario Court in trade secret case concerning telecommunications.
  Macdan Inc v International Clothiers Inc (1991), 37 CPR (3d) 530, (FCTD) - Successfully defended interlocutory injunction in Federal Court of Canada in copyright
  trademark case concerning clothing.
  Coscelebre Inc v Registrar of Trademarks (1991), 35 CPR (3d) 74, (FCTD) - Successfully resisted appeal in trademark cancellation proceeding in Federal Court of Canada, thereby maintaining trademark registration for cosmetics with award of solicitor-
  -client costs against respondent.
  Rogers, Bereskin & Parr v Registrar of Trademarks (1987), 17 CPR (3d) 397, (FCTD) - Successfully resisted appeal in trademark cancellation proceeding in Federal Court of Canada, thereby maintaining trademark registration for clothing.