Mark Davis is an accomplished intellectual property litigator. He is certified as a specialist in intellectual property (patents/trade-marks/copyright) by the Law Society of Upper Canada. Mark has significant experience in trade-mark and patent litigation, including proceedings under the Patented Medicines (Notice of Compliance) Regulations, as well as in anti-counterfeiting, trade secret and breach of confidence, copyright and industrial design disputes. Mark has successfully argued numerous precedent-setting intellectual property cases at trial and on appeal.
Described as a “gifted appellate and trial lawyer” who “inspires confidence” and provides “smart and practical” advice, Mark is consistently recognized by clients and peers for both this trade-mark and patent litigation skills in publications such as LEXPERT, Best Lawyers in Canada, IAM Patent 1000, WTR Trademark 1000, IP Stars and Benchmark Litigation.
Mark is a prolific writer and popular speaker. He has taken active leadership roles in many important professional associations for intellectual property law in Canada and the United States.
Prior to practicing law, Mark taught elementary school at The Children’s Storefront, a not-for-profit, tuition-free school in Harlem, New York.
LL.B., University of Victoria, 1999
B.A. (Hons.), University of Western Ontario, 1993
- Bayer Inc. v. Fresenius Kabi Canada Ltd., 2016 FC 581 and 2016 FC 970 – obtained an order under the Patented Medicines (Notice of Compliance) Regulations preventing approval of generic equivalent to Bayer’s AVELOX I.V. product – this decision is significant because it is one of the rare times that a prohibition order was granted on the basis that the Notice of Allegation was insufficient
- Lorama Group Inc. v. Lenz et al., 2015 ONSC 5915 – successfully opposed summary judgment motion in breach of confidence action
- Eli Lilly Canada Inc. ats. Sanofi-Aventis Canada Inc., Court File No. T-2247-14 – acted for Eli Lilly in a novel case under the Patented Medicines (Notice of Compliance) Regulations involving two innovator companies relating to a subsequent-entry biologic
- Provincial Boat and Marine Ltd. ats Vilco Ltd., Federal Court File No. T-1338-14 – acted for Provincial Boat and Marine Ltd. in defence of an industrial design infringement action by Vilco relating to the design of home heating oil tanks
- Canadian Urban Transit Association v. Dovden Investments Ltd. Federal Court File No. T-1337-13 - precedent-setting case – successfully argued that the Canadian Urban Transit Association, an industry association, had standing to bring a patent impeachment proceeding in a representative capacity on behalf of its members against the defendant, Dovden, a non-practicing entity [patent troll]
- Denturist Group of Ontario v. Denturist Association of Canada, 2014 FC 989 – successful application to expunge certain trade-mark and copyright registrations that were being asserted by the Denturist Association of Canada and the Denturist Association of Ontario against members of a rival professional organization
- Meyer Housewares Canada Inc. ats. Bodum USA, Inc., 2012 FC 1450; affirmed 2013 FCA 240 – successfully argued eight-day trade-mark infringement, passing off and depreciation of goodwill case – counterclaim successfully resulted in FRENCH PRESS trade-mark being declared invalid – marshalled overwhelming fact and expert evidence showing that French Press did not function as a trade-mark
- Michael Kors, LLC v. Beyond the Rack Enterprises Inc., 2012 FC 1355; affirmed Beyond the Rack Enterprises Inc v. Kors, 2013 FCA 107 – trade-mark infringement, passing off, depreciation of goodwill, unfair competition and copyright action on behalf of Michael Kors against unauthorized Internet reseller – precedent setting Federal Court of Appeal case established that “…as a practical matter BTR may well be unable to defeat MK’s claims by simply asserting that it acquired the goods from an authorized distributor, without producing any supporting evidence…”
- Timbercon, Inc. ats Oz Optics Limited, 2011 ONCA 714– appeal from successful trial judgment (2010 ONSC 310) in defence of breach of confidence action – the Ontario Court of Appeal reversed the trial judge on the limited issue of negligent misrepresentation
- Canada (trade-marks) 2003
- Ontario 2001
Rankings and recognitions
- LEXPERT® Magazine - 2016 – Repeatedly Recommended for Intellectual Property and Litigation - Intellectual Property
- Best Lawyers in Canada - 2014 - 2018 – Intellectual Property Law
- IAM Patent 1000: The World's Leading Patent Professionals – 2013 - 2017
- WTR 1000 – Guide to the World’s Leading Trademark Professionals – 2015 - 2017
- IP Star, Managing Intellectual Property – 2015 - 2017
- Benchmark Litigation – 2016 Local Litigation Star, Ontario: Intellectual Property
- LEXPERT® Magazine – 2009 "Litigation Lawyers to Watch"
- “Trademark Disputes,” Lexis Practice Advisor® Canada, Intellectual Property and Technology Module – practical online resource for lawyers includes precedents, checklists, practice notes and more.
- “Trade-mark Litigation,” Intellectual Property Litigation Forms and Precedents, Toronto: LexisNexis, 2016.
- “2015 Patent Law Year in Review,” 20th Annual Intellectual Property Law: The Year in Review, Law Society of Upper Canada, Toronto, January 21, 2016.
- “Canadian Law of Industrial Design,” Canadian Copyright/Industrial Designs Benchbook, Toronto: Carswell, 2015.
- “Copyright Law in Canada - Similar But Not the Same,” Landslide (publication of the American Bar Association’s section of intellectual property law), May/June 2012.
- “Disclaimer, Dedication and Duty of Good Faith: A Review of Some Recent Decisions and Their Impact on Canadian Patent Litigation,” Canadian Intellectual Property Review, Vol. 27, 2011.
- “Holding Patentees to Account: Utility and the Promise of a Patent,” Canadian Intellectual Property Review, Vol. 27, No. 2, 2011.
- “ACTA moving forward as more details released - the proposed Anti- Counterfeiting Trade Agreement,” Internet and E-commerce Law in Canada, September 20, 2010.
- “Re-Evaluating the Test for Obviousness - Anything but Obvious or at Least 'Obvious to Try’,” Canadian Intellectual Property Review, 2007 Volume 13, No. 3.
- “Commencing Trademark Litigation,” Intellectual Property Litigation, Ontario Bar Association, Toronto, November 22, 2016.
- “The Art (But Mostly Science) of Cross-Examination in PM(NOC) Proceedings,” Pharma and Biosimilar Litigation in Canada – Navigating the PM(NOC) Regulations, Ontario Bar Association, Toronto, October 5, 2016.
- “Anticipation, Patent Case Law Review,” IPIC Webinar, April 28, 2016.
- “2015 Patent Law Year in Review,” Law Society of Upper Canada's 20th Annual Intellectual Property Law: The Year in Review, Toronto, January 21, 2016.
- “Taking it Down: Remedies Involving Internet Intermediaries” (panel moderator), 89th IPIC AGM, Banff, Alberta, October 15, 2015.
- “Are Minimum Compensatory Damages Really Judicial Statutory Damages in Disguise?” 2014 Canada Bar Association's IP Day, Ottawa, June 12, 2014.
- “Trade-mark Law Update” (moderator), Intellectual Property Institute of Canada's IP Law Year in Review, February 4, 2014.
- “Copyright Issues on the Web,” Federated Press' 8th Annual Internet Law Conference, Toronto, December 18, 2013.
- “Navigating Jurisdictional Challenges and Quantifying Damages in Section 8 Cases: Critical Views from Both Sides” (panelist), Canadian Institute’s 11th Annual Forum on Pharma Patents, Toronto, October 30, 2012.
- “Patent Damages in Canada: Who Owes What to Whom and When," Intellectual Property Institute of Canada’s annual general meeting, October 12, 2012.
Memberships and activities
- American Bar Association
- Chair, International Copyright Laws & Treaties Committee
- Member, ABA Intellectual Property Law Books Editorial Board
- Active member of Patent and Trademark Litigation committees
- Intellectual Property Institute of Canada
- Past Chair, Trademarks and the Internet Committee
- Member, Forums and Seminars Committee
- The Advocates' Society
- Canadian Bar Association
- Intellectual Property Law Section
- Trademark Litigation Committee
A precedent-setting case, the first Canadian decision to consider the prohibition on circumvention of technological protection measures (TPMs) in the Copyright Act, was issued on March 1, 2017. .
March 29, 2017