Mat Brechtel

Partner
Norton Rose Fulbright Canada LLP

Mat Brechtel

Mat Brechtel

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Biography

Mat Brechtel is a partner in the intellectual property group with extensive experience dealing with trademarks, branding and marketing both online and on the ground, digital assets and software, copyright protection and enforcement trade secrets, and a wide variety of related intellectual property and intangible assets.

Mat has represented a wide range of well-known international brands before the courts and arbitration tribunals in protecting and defending their trademarks and reputation within Canada.

Mat also provides advice to entrepreneurs regarding the use of IP assets online, navigating novel challenges with trademark use, software and app copyright issues, streaming, and other emerging platform issues.

Mat has particular experience addressing the complexities that arise with multi-jurisdictional litigation issues, and has acted on behalf of clients obtaining evidence in Canada for use in legal proceedings around the world, and clients concurrently enforcing their intellectual property rights in multiple jurisdictions.

Mat has appeared before Supreme Court and Court of Appeal of British Columbia, before the Federal Court and Federal Court of Appeal, the Ontario Superior Courts, the Trademarks Opposition Board, and in several international arbitrations.

Prior to practising Mat spent two years clerking, first for the BC Court of Appeal with justices Mackenzie and Newbury, and subsequently for the Supreme Court of Canada with Justice Rothstein.
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Professional experience

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LL.B., Dalhousie University, 2009
B.Sc. (Biochemistry), University of Alberta, 2005

  • British Columbia 2011
  • Ontario 2011
  • Canada (trademarks) 2014

Mr. Brechtel has significant experience representing his brands, technology, and consumer goods clients before the courts and in private arbitration. A few of his cases include:

·      RE/MAX v. Save Max, 2019 FC 1582 – Representing RE/MAX in trademark proceedings, including obtaining an order for disclosure of a solicitor's file. 

·      Biofert Manufacturing Inc. v. Agrisol Manufacturing Inc., 2020 FC 501 - Representing BioFert, a leading manufacturer of fertilizers through to trial against defendants found liable for trademark infringement and passing off, as a result of their launch of an unauthorized competitor intended to divert sales by harnessing historical goodwill.

·      Counsel for MXM Beverages (makers of NUDE) both defending and pursuing trade dress and trademark claims related to the sale of competing NÜTRL beverages.

·      Eyeball Networks Inc. v. BlackBerry Limited - representing BlackBerry regarding claims surrounding the allegedly faulty development of video conferencing software, successfully resolved shortly before trial.

·      Louis Vuitton et al. v Audrey Wang et al., 2018 FC 1198, 2019 FC 1389 – successfully obtained and defended an Anton Piller order and Mareva injunction preserving evidence of the defendants' counterfeiting activities and securing assets for judgment, and subsequently obtaining judgment against Defendants at summary trial for a variety of unlawful activities related to the sale of counterfeit goods.

·      Cascade Aerospace Inc. V. AGNL Avionics Abbotsford Nominee ULC - counsel for Cascade aerospace obtaining a novel injunction to halt the continued distribution of confidential information, including by parties in knowing receipt.

·      Vancouver Community College v Vancouver Career College (Burnaby) Inc., 2017 BCCA 41 – counsel for the plaintiff at trial and on appeal, successfully obtaining an order for damages and permanent injunction prohibiting defendant from using trademarks online as a domain name or otherwise regarding its Internet presence

·      Counsel in private arbitration proceedings surrounding a multi-million dollar contract for the customization and implementation of SaaS software designed for Enterprise Resource Planning (ERP).

·      Annie Pui Kwan Lam v. Chanel S. de R.L et al. 2016 FCA 111 – The Federal Court of Appeal remanded the matter back to the trial judge to re-determine and clarify an ambiguity in personal liability for Ms. Lam regarding one of four acts of infringement, but nevertheless confirmed the appropriateness determination of counterfeiting cases by way of summary trial even where credibility issues exist, thereby permitting the trial judge to discard Ms. Lam's evidence. The court also approved the use of a multiplier-based calculation of nominal damages and awarding significant punitive and exemplary damages in this type of case to deter such activities

·      Council of Natural Medicine College of Canada v College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia, 2013 FC 287 – successfully defended a challenge to the constitutionality of the official marks regime under s. 9 of the Trademarks Act, upholding the college's right to protect certain professional designations as official marks

 

Canadian courts adapt to challenges of COVID-19, The Lawyer's Daily, May 2020

Co-author - Chapter 10: Litigation Process, Intellectual Property Disputes: Resolutions and Remedies (ed. Ronald E. Dimock)

Modernization of the courts during COVID-19, July 20, 2020

Google Goes Organic to Fight Counterfeiters, June 16, 2020

"Bill C-86 – Tinkering with official marks in Canada," November 30, 2018.

Conflict of jurisdiction and the internet – a split Supreme Court of Canada leaves us hanging, June 2018

R. v. Comeau decision bad news for Canadian wine industry, The Lawyer's Daily, May 1, 2018

Supreme Court of Canada grants worldwide injunction, June 29, 2017

Supreme Court of Canada "unfriends" Facebook's forum selection clause: Privacy action can proceed in British Columbia, June 27, 2017

The key to keyword advertising: British Columbia Court of Appeal overturns passing-off decision, February 07, 2017

BC Court of Appeal tackles online trademarks in keywords and domain names, January 30, 2017

Landlord liability: counterfeit merchandise, vicarious liability and aiding and abetting infringement, September 07, 2016

Canada: Who Owns Survey Plans?, July 6, 2016

Court of Appeal on counterfeiting: green light for significant damages and summary trial, April 13, 2016

Intellectual Property Law and the Internet (L'Expert) June 21, 2016.

Court of Appeal confirms domain name as "instrument of confusion", March 10, 2016

Supreme Court of Canada to hear second case involving jurisdiction and the internet, March 10, 2016

Supreme Court of Canada grants leave to appeal worldwide Google injunction, February 19, 2016

New Beer Brands, Same Old Trademark Issues, February 1, 2016

Addressing Anonymity, December 4 2015

Incredible "credibility" – counterfeiter's evidence in summary trial weighed and rejected, September 29, 2015

Give Your Brand Some Teeth: The Importance of Registering Your Trademark, March 17, 2015

Canada's Notice And Notice Copyright Regime in Force, January 17, 2015

New guidance on territorial competence: a good reason to plead multiple causes of action, 2015

 

  • Fraudsters on the rise – Protecting the brands and reputations of Canadian businesses - June 2020, with Mark Davis, Karen MacDonald, and Alexis Kerr
  • 2018 CBA Annual IP Day – Panellist Addressing Diversity Issues
  • Intellectual Property Issues in Employment Law: Do You Know Who Owns Your IP? - CLEBC Annual Employment Law Conference
  • IP Issues in Municipal Law - 2016
  • Canadian Bar Association
    • Executive-at-large and young lawyer liaison for CBABC IP section
  • Law Society of British Columbia
  • Law Society of Upper Canada
  • International Trademark Association
    • Vice chair of the Young Practitioners Committee
  • Intellectual Property Institute of Canada
    • Committee member on the Young Practitioners Committee
  • Vancouver Bar Association