Background
Gordon Zimmerman is a partner in the Toronto office of Borden Ladner Gervais LLP and Regional Leader of the Intellectual Property Group. He practices exclusively in the area of intellectual property, including patents, trademarks, copyright, industrial designs, trade secrets and confidential information, and related litigation.
He was the gold medalist in Science upon graduation with a BSc (Chemistry) from the University of Waterloo. While obtaining his LLB from the University of Toronto Law School, he received a JDS Tory Fellowship for legal writing (the Science Court) and the PRO Canada Copyright Award for a paper on punitive damages. He also received a diploma in Civil Law/Common Law Studies from Dalhousie University and the University of Sherbrooke before being called to the Bar in Ontario in 1982. His pre-law work experience was in the fields of pulp and paper, industrial chemicals, atomic energy, vacuum molecular beam studies and peptide analysis.
Gordon has been a lecturer annually since 1997 at the IPIC/McGill advanced trademark and patent courses in Montreal. He has been an invited speaker to various groups including IPIC, CBA, IPBA, LSUC, NYSBA, LES, CICBV, IT-CAN, commercial conferences, and university and community college classes. He speaks English, French, Italian and some German and Spanish.
Gordon has prepared and presented evidence and testimony in complex litigation including factual and expert evidence in science, engineering, marketing and accounting. He also works in the areas of trademark and patent applications, licensing, due diligence investigations, security interests and other non-litigious issues.
Professional Experience
· Registered as Trade Mark Agent since 1982.
· Registered as Patent Agent since 1989.
· Certified by the Law Society of Upper Canada as a Specialist in Intellectual Property Law (Patents, Trade Marks, Copyright).
Rankings and Recognitions
· Ranked as a leading trade-mark professional in the World Trademark Review (WTR 1000 Survey) for 2011
· Recognized in the 2012 edition of Chambers Global - The World's Leading Lawyers for Business (Intellectual Property)
· Selected by peers for inclusion in The Best Lawyers in Canada 2012 (Intellectual Property Law)
· Martindale-Hubbell AV® Preeminent™ 5.0 out of 5 Peer Review Rating
· Recognized in the 2009 Canadian Legal Lexpert Directory (Intellectual Property)
· Named one of LawDay's 24 leading lawyers in Canada in the practice area of Intellectual Property for 2009
· Listed in the 2008 Guide to the World's Leading Trade-mark Law Practitioners
· Recognized in Who's Who Legal: Canada 2011 (Trademarks)
Professional and Community Activities
· Intellectual Property Institute of Canada - Fellow
· International Trade Mark Association
· Canadian Bar Association (Past Chair Trade Marks Committee,
· Past Chair Ad Hoc Committee on Security Interests in Intellectual Property)
· Inter-Pacific Bar Association (Past Vice-Chair, Intellectual Property Section)
· Licensing Executives Society
· International Bar Association
· American Bar Association
· Metropolitan Toronto Law Association
· The Law Society of Upper Canada
· IPIC/McGill Patent and Trade-mark courses
· BLG Reads to Kids Program
Pre-Law Work Experience
· Reed Inc., Quebec, P.Q. (1974)
· Hart Chemical Inc., Guelph, Ontario (1975)
· Atomic Energy of Canada Ltd., Pinawa, Man. (1975)
· Libera Universita Degli Studi, Trento, Italy (1976)
· Universitat Hohenheim, Stuttgart, Germany (1978)
Court Appearances
· Appeared as counsel in the Federal Court of Canada (at trial and on appeal), High Court of Ontario (at trial and on appeal) and on applications for leave to appeal to the Supreme Court of Canada in cases involving patents, trade marks, industrial designs, copyright, passing off, trade secrets, confidential information, wrongful termination of distributorship agreements, conspiracy, breach of contract, breach of fiduciary duty and related matters, many such cases being reported.
Selected Cases
· Cochlear Corp. v. Cosem Neurostim - Obtained trial judgment holding plaintiff's patent valid and infringed (quia timet) (with respect to inner ear prosthesis to give hearing to totally deaf users).
· Mackenzie Financial ats Ethical Funds Inc. - Resisted interlocutory injunction based on alleged trade-mark infringement respecting use of word ETHICAL in association with mutual fund.
· Canada Trust ats TD Bank - Successfully defended Canada Trust in a highly publicized Federal Court trade mark infringement action respecting use of the word and colour GREEN.
· CTV v. CAPAC - Obtained an order prohibiting Copyright Board and CAPAC/PROCAN (now SOCAN) from proceeding with "'network"' tariff in Federal Court proceedings. Leave to appeal to Supreme Court of Canada denied.
· AlphaNet Telecom v. Delrina - Obtained injunction preventing Delrina from misusing trade secrets and confidential information of AlphaNet in Ontario Court, General Division, Commercial Court list, in highly publicized case. Action settled following interlocutory injunction.
· Movenpick et al. v. E.A.T. at Le Marché Inc. - Obtained injunction prohibiting competing restaurant from using trade mark MARCHÉ.
Publications
· Regular case comments in World Trademark Law Review (electronic journal)
· 'Intellectual Property Licensing: Planning for Improvements, Enhancements and Modifications', Proceedings of The Canadian Institute's 10th Annual Conference on Intellectual Property Agreements, Toronto, November 27 and 28, 2006.
· 'Due Diligence in IP Licensing' and 'International Aspects of IP Licensing', Proceedings of the Federated Press Conference entitled Intellectual Property Licensing, Toronto, May 30 and 31, 2005.
· 'Negotiating and Drafting IP License Agreements - Essential steps and Drafting Best Practices for Home and Abroad', Proceedings of the Insight Conference entitled Negotiating and Drafting Major Business Agreements, Toronto, February 21 and 22, 2005.
· 'Enforcement of Orders and Judgments' in Intellectual Property Disputes, Resolutions and Remedies, Butterworth, 2002 to date (Loose leaf).
· 'Patent, Trade Secret and Technology Licensing', Proceedings of the Atlas Information Conference on Licensing, New York, April 5 and 6, 2001.
· 'Extending the Monopoly: Overlapping Intellectual Property Protection', Proceedings of IPIC Annual Meeting, Vancouver, September 21, 2000.
· 'Preserving the Value of Intellectual Property Assets', Proceedings of the Canadian Institute of Chartered Business Valuators, Vancouver, September 21, 2000.
· "Patents, Trade Secrets and Technology Licensing", Proceedings of the Insight Conference entitled Negotiating Licensing Agreements - Maximize the Value of Your Intellectual Property Assets, Toronto March 4 and 5, 1998.
· "Trade Secrets and Doing Business in the U.S.A. - Recent Developments" at the Price Waterhouse Conference entitled "Defending Your Assets", Toronto, November 5, 1997
· "Trade Secrets and the Unfaithful Ex-Employee", Proceedings of the Federated Press Conference entitled "Protecting and Managing Intellectual Property Assets", Toronto, September 23, 1997
· "Rights of Publicity and Protecting Against The Unhappy Celebrity or Bystander", Proceedings of the Canadian Institute entitled "Legal, Practical and Tactical Advertising", Toronto, Ontario, June 2 and 3, 1997
· "Understanding The Essentials of Contract Law For Intellectual Property Agreements", Proceedings of the Infonex Conference on "Intellectual Property Issues for Business Agreements: A Practical Course", Toronto, Ontario, April 28 and 29, 1997
· "Patent, Trade Secret and Technology Licensing", Proceedings of the Third Annual Canadian Institute "Licensing Intellectual Property" Conference in Toronto, Ontario, April 17 and 18, 1997
· "Recent Changes to Canadian Intellectual Property Legislation - NAFTA and WTO Agreement" Inter-Pacific Bar Association, Manila, Philippines, May 1 to 4, 1996
· "Disputes and Remedies in Intellectual Property Licensing", Canadian Institute Conference entitled "Licensing Intellectual Property", Toronto, Ontario, January 25 & 26, 1996
· "Trade Secrets and Confidential Information: International Aspects" Proceedings of the Canadian Institute Conference entitled "International Intellectual Property Protection", Toronto, Ontario, November 23 & 24, 1995 (Chair).
· "Proposed Amendments To The Trade-marks Regulations" (1995), Thomson & Thomson Update - Résumé, Vol. 3, No. 4, p. 3.
· "Is Your Photocopier a Smoking Gun?" (1994), Corporate Liability, Vol. II, No. 1, p. 82.
· "To Oppose or To Settle: Strategies for Success", Proceedings of the Canadian Institute Conference entitled "The Comprehensive Course on Trade-Marks", Toronto, Ontario, October 25-26, 1994.
· "Trading on the Infobahn: Licensing Patents and Trade Secrets in the Digital Age", Proceedings of the Canadian Institute Conference entitled "Intellectual Property Licensing", Toronto, May 30-31, 1994.
· "An Overview of Canadian Law relating to Security Interests and Intellectual Property", Proceedings of the CBA CLE Conference entitled "Changes Affecting Intellectual Property in Canada : A North American Perspective", Ottawa, March 10, 1994.
· "The Intellectual Property Tribunal: A Procrustean Fit?" Proceedings of the Canadian Institute Conference entitled "New Developments in Intellectual Property", Toronto, June 21, 1993.
· "Patents: The Main Issues" Proceedings of the University of New Brunswick Intellectual Property Conference, Fredericton, N.B., February 1993.
· "The Proposed Intellectual Property Tribunal: More Than Smoke and Mirrors?", CBA Intellectual Property Update, Toronto, November 1992.
· "Trade Secrets" (repeat of February 1992 Canadian Institute Seminar), Toronto, October 1992. "Trade Secrets and Confidential Information" Proceedings of the CBA Intellectual Property Law Update, Ottawa, March 1992.
· "Trade Secrets: Leak Prevention and Damage Control" Proceedings of the Canadian Institute Seminar entitled "Patents - The Complete Course", Toronto, February 1992.
· "Canadian Intellectual Property Issues for the U.S. Practising Lawyer" Proceedings of the New York State Bar Association conference entitled "International Aspects of Intellectual Property Law", New York, February 1991.
· "Representations, Warranties and Conditions in Transactions Involving Intellectual Property" Proceedings of the CBAO Annual Institute, Toronto, January 1991.
· "An Expert Patent Court for Canada ?" (1987) 3 Can. Intellectual Property Rev. 444.
· "Synergy and the Science Court : Scientific Method and the Adversarial System in Technology Assessment" (1980), 38 U.T. Fac.L. Rev 170.
· "Exemplary Damages and Copyright in Canada " (1980) 57 C.P.R. (2d) 65.