Safeguarding your company’s most valuable asset: intellectual property
The effective and coordinated protection of IP rights is vital in the fight against IP crime.
IP crime, including counterfeiting and piracy, is an international problem on a massive and growing scale.
Product counterfeiting and copyright piracy affects virtually all areas of industry involving all types of products. Our highly specialized lawyers are among the most prominent and experienced in fighting IP crime in Canada. From representing world leaders in luxury goods and apparel to motion picture studios and associations, from video games to television broadcasters, from software to pharmaceuticals, we have a deep history in successfully representing clients in anti-counterfeiting matters.
With decades of experience appearing before federal and provincial courts in intellectual property matters, we have developed efficient and unique approaches in the fight against IP crime that are targeted and focused to fit each of our client’s individual needs. We have obtained precedent-setting damages and restitution orders against counterfeiters, and have vast expertise in coordinating wide-ranging search and seizure orders, taking down pirated content, obtaining pre-trial and permanent injunctions and related contempt orders. We have significant experience in lobbying for improvement in Canada’s anti-counterfeiting and anti-piracy laws and policies to help better protect the interests of our clients, and we work in training and coordinating activities with investigators and customs and law enforcement officials.
With our vast network of anti-counterfeiting contacts worldwide and our experience in multijurisdictional cases, we provide skilled and coordinated cross-border and global strategies to fiercely protect our clients’ valuable IP rights theft, piracy and counterfeiting, and we have been recognized by Benchmark Canada for five consecutive years as Canada’s IP Litigation Firm of the Year.
Key Contacts
Client Success
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Microsoft Corp c 9038-3746 Québec Inc
2010 FCA 151Represented 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 s...Read More -
Louis Vuitton Malletier SA v 486353 BC Ltd
2008 BCSC 799Obtained one of Canada's largest monetary judgments against counterfeiters. -
Microsoft Corp v Cerrelli
2007 FC 1364Represented 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 f...Read More
Unparalleled Expertise in IP Crime & Anti-Counterfeiting
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Benchmark Litigation
Ten leading IP litigators
2023Benchmark Canada -
Benchmark Litigation
11 leading IP litigators
2022Benchmark Canada -
Benchmark Litigation
13 leading IP litigators
2020-2021Benchmark Canada -
WTR
Six leading trademark practitioners
2019World Trademark Review 1000 – The World’s Leading Trademark Professionals -
Lexology Index
Four leading trademark practitioners
2019Lexology Index: Trademarks -
WTR
Six Leading Trademark Practitioners
2018World Trademark Review 1000 – The World’s Leading Trademark Professionals -
WTR
Six Leading Trademark Practitioners
2015World Trademark Review 1000 – The World’s Leading Trademark Professionals -
WTR
Six Leading Trademark Practitioners
2014World Trademark Review 1000 – The World’s Leading Trademark Professionals -
WTR
Six Leading Trademark Practitioners
2013World Trademark Review 1000 – The World’s Leading Trademark Professionals -
WTR
Seven Leading Trademark Practitioners
2012World Trademark Review 1000 – The World’s Leading Trademark Professionals
Related Publications & Articles
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No parley for pirates: Federal Court (Canada) grants innovative remedy to combat sports piracy
In Rogers Media Inc et al v John Doe 1 et al, 2024 FC 1082, the Federal Court (Canada) issued the first site-blocking judgment allowing the applicants to simultaneously protect live content in multipl...Read More -
Top ten considerations for creating an effective anti-counterfeiting program
Counterfeiting, a multi-billion-dollar problem, poses a serious threat to all brand owners, irrespective of their industries. Counterfeiters do not discriminate when it comes to manufacturing fake goo...Read More -
Domain name solicitation fraud – brand owners beware
It is a modern reality that with brand ownership comes the risk of trademark and domain name fraud. In this area, there has recently been a rise in email scams targeting brand owners by falsely claimi...Read More -
How to record your brand’s rights and stop counterfeit goods at the Canadian border
As we approach the one-year anniversary of the coming into force of the Canada-United States-Mexico Agreement (CUSMA) on July 1, 2021, we reflect on the changes that the CUSMA brought about for brand ...Read More -
You sunk my pirate ship: Federal Court of Appeal upholds the validity of Canada’s first anti-piracy site-blocking Order
On May 26, 2021, the Federal Court of Appeal issued its decision in Teksavvy Solutions Inc v Bell Media Inc et al, 2021 FCA 100, upholding the Federal Court’s order in Bell Media Inc. et al v Goldtv.b...Read More -
Beware of increasing use of confusing domain names for brand impersonation and fraud
The recent .CA domain name arbitration decision in Fluor Corporation v Fluor Curling highlights the growing problem of confusing domain names being registered and used to send e-mails impersonating bu...Read More -
Yes, CIPO really will be writing to your client instead of to you
If you filed a Madrid application on behalf of your client, and designated Canada, you should have received a “Courtesy Letter” from the Canadian Intellectual Property Office (CIPO).Read More -
Canada introduces Bill C-100: A step towards ratification of “NAFTA 2.0”
In a step towards ratifying the Canada-United States-Mexico Agreement (CUSMA), the Canadian government introduced Bill C-100, entitled “An Act to implement the Agreement between Canada, the United Sta...Read More
Related News & Media
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Smart & Biggar boasts 14 Trademark lawyers recognized as “heavy hitters” in the 2022 edition WTR 1000
Smart & Biggar is proud to announce that 14 lawyers from our Trademark practice have been honoured in the 2022 edition of the World Trademark Review 1000 (WTR 1000) – The World’s Leading Trademark...Read More -
Graham Hood discusses Global Anticounterfeiting Enforcement at the AASA Aftermarket IP Forum
Toronto partner Graham Hood will speak at the Aftermarket IP Forum, presented by the Automotive Aftermarket Suppliers Association (AASA) in partnership with INTA 2020.Read More -
Four Smart & Biggar partners ranked among the best of the best as WTR Global Leaders
Smart & Biggar is pleased to share that four partners have been listed among the world’s most notable trademark practitioners in the second edition of World Trademark Review (WTR) Global Leaders.Read More -
Smart & Biggar, “the leading IP boutique in the trademarks space,” ranks as Gold Tier for Canadian trademarks in WTR 1000
Smart & Biggar comes out on top with a ‘gold tier’ ranking for Canadian trademarks in the 2020 World Trademark Review 1000 (WTR 1000) – The World’s Leading Trademark Professionals.Read More -
Chambers Global recognizes Smart & Biggar for “bench strength and quality representation” with Band 1 rankings in Intellectual Property and Intellectual Property: Litigation
Smart & Biggar is pleased to share that the firm continues to lead the market earning rankings as a Band 1 Intellectual Property law firm in the 2020 edition of Chambers Global – The World’s Leadi...Read More -
Smart & Biggar builds on strength as an IP litigation powerhouse with the additions of Noelle Engle-Hardy and Ryan Evans in Toronto
We are proud to welcome Noelle Engle-Hardy and Ryan Evans as the newest members of Smart & Biggar’s highly skilled IP litigation team.Read More -
Smart & Biggar welcomes three new Partners and a new Counsel for 2020
The partners of Smart & Biggar LLP and Smart & Biggar IP Agency Co. are pleased to welcome Graham Hood, Lei Liu and Patrick Roszell to the partnership of the two firms.Read More -
5 Smart & Biggar lawyers attend IPO Annual Meeting in Washington, D.C.
Smart & Biggar partners, Daphne Lainson, Nancy Pei, Matthew Zischka and Jean-Sébastien Dupont, with associate, Artemis Lai, will travel to Washington, D.C. to attend the 47th Annual Meeting of the...Read More