Steven B. Garland: Lawyer with Smart & Biggar/Fetherstonhaugh

Steven B. Garland

Partner, Ottawa; Barrister and Solicitor; Patent and Trade-mark Agent
Ottawa,  ON  Canada
Phone613.232.2486

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Experience & Credentials
 

Practice Areas

  • Litigation
  • Patents
  • Trademarks
  • Copyright & Media
  • Industrial Designs
  • Licensing & IP Transactions
  • IP Management & Strategic Counselling
  • Pharmaceutical
  • Marketing & Advertising
  • Life Sciences
  • Software/Internet/Information Technologies
  • Chemical & Industrial Biotechnology
  • Industrial/Mechanical
  • Electrical/Electronics
  • IP Crime
  • Pharmaceutical Regulatory & Compliance
  • Energy
 
University University of Western Ontario, B.Eng., Chemical-Biochemical, 1985; Professional Engineer, Professional Engineers Ontario
 
Law SchoolUniversity of Ottawa, LL.B., 1990
 
Admitted1992, Ontario; 1992, Registered Trade-mark Agent; 1993, Registered Patent Agent; Registered to practise before the United States Patent and Trademark Office
 
Memberships 

Professional Involvement

Memberships

&bull

 
Biography

Steven Garland has over 20 years of experience in intellectual property litigation of all types, including issues relating to patent, trademark, copyright, industrial designs, trade secrets and competition law. He has acted in many patent litigation matters that have involved a wide variety of subjects, including chemical, biochemical, biotechnological, telephony, mechanical and industrial matters. Steven has appeared as counsel in intellectual property cases at both the Federal Court and Federal Court of Appeal, the Ontario Superior Court and Court of Appeal, the Nova Scotia Supreme Court and Court of Appeal, the Court of Appeal of British Columbia and the Supreme Court of Canada. He also regularly appears before the Patent Appeal Board and the Trademarks Opposition Board. He has also been retained as a mediator in intellectual property disputes. A representative list of some of the parties on whose behalf Steven has acted is provided below.

Steven regularly acts on behalf of innovator pharmaceutical and biopharmaceutical companies in respect of patent related matters, including patent infringement actions and proceedings under thePatented Medicines (Notice of Compliance) Regulations.

Several recent decisions in which Steven has acted as successful counsel have become leading cases and have been lauded by national and international legal publications, including:

Marlboro Canada v Phillip Morris,2012 FCA 201(with Francois Guay and Genevieve Prevost), which was selected byManaging Intellectual Propertyas the2013 Canadian Trademark Milestone Case of the Year;
Amazon.com, Inc v Commissioner of Patents,2011 FCA 328(with Colin B. Ingram and John R. Morrissey), which was recognized byManaging Intellectual Propertyas the2012 Canadian Patent Case of the Year; and
Amazon.com, Inc v Commissioner of Patents,2010 FC 1011(also with Colin B. Ingram and John R. Morrissey), which was chosen byLEXPERT Magazineas the2010 Canadian Business Case of the Year.

Steven is a Past President of the International Association for the Protection of Intellectual Property (AIPPI) Canadian Group, and a Past President of the Intellectual Property Institute of Canada. He is also an adjunct professor at the University of Ottawa Law School, where he teaches patent law. Steven is a regular writer and lecturer on intellectual property matters, both in Canada and internationally. He is also a member of the editorial board of the international publicationIntellectual Property Magazine. Prior to becoming a lawyer, Steven was a Reservoir Engineer in the Canadian oil and gas industry.

Representative list of parties

3M
Amazon.com
Anchor Brewing Company
Barmish Inc.
Bauer/Nike
Bayer Inc.
Bombardier
Clark Shoes
DSM
Dow Chemical
Ferrari
General Electric
Glaxo Wellcome
Harvard College (Harvard Mouse case)
Imperial Tobacco
Labatt
Loeb IGA
H. Lundbeck A/S
McDonalds
MCI
Merz Pharma GmbH
Nautica
Pfizer
Playboy
Progressive Games
sanofi-aventis
Shell Canada
Shoppers Drug Mart
Shionogi & Co.
Stamicarbon B.V.
Takeda
Vina Concha Y Toro

Rankings and recognition

•Named Canada's Trademark Litigator of the Year for 2013 byBenchmark Canada
•Named Best Lawyers' 2013 Ottawa Intellectual Property Law Lawyer of the Year
•Recognized annually since the inaugural edition in 2012 as a 'Local Litigation Star' inBenchmark Canadaunder Intellectual Property
•Recognized in the inaugural Canada Chapter ofLMG Life Sciences2013as a 'Life Science Star' under Intellectual Property
•Recognized in the inaugural edition ofManaging Intellectual Property's Trade Mark & Copyright Handbook 2014as an 'IP Star'
•Recognized in the inaugural edition ofManaging Intellectual Property's Patent Handbook 2014as an 'IP Star'
•Recognized annually in the Lexpert Guide to the Leading US/Canada Cross-Border Litigation Lawyers in Canadaunder Intellectual Property Litigation since 2012
•Selected to appear inThe LEXPERT /American Lawyer Guide to the Leading 500 Lawyers in Canadaunder Intellectual Property and Intellectual Property Litigation
•Recognized annually since the inaugural edition in 2011 ofWorld Trademark Review 1000 - The Definitive Guide to Trademark Legal Services
•Recognized annually since the inaugural edition in 2006 of The Best Lawyers in Canadaunder Intellectual Property Law
•Recognized inThe Canadian Legal LEXPERT Directoryunder Intellectual Property and Litigation - Intellectual Property
•Recognized annually since the inaugural edition in 2006 ofChambers Global - The World's Leading Lawyers for Businessunder Intellectual Property: Litigation
•Recognized in each edition of Euromoney'sExpert Guides: Guide to the World's Leading Patent Law Practitionerssince 2007
•Listed inIAM Life Sciences 250 - The World's Leading Life Sciences Patent Litigators 2010
•Recognized annually since the inaugural edition in 2012 ofIAM Patent 1000 - The World's Leading Patent Practitionersunder Litigation
•Recognized annually since the inaugural edition in 2011 ofIAM Patent Litigation 250 - The World's Leading Patent Litigators
•Recognized annually inWho's Who Legal: Patentssince 2010
•Recognized annually inWho's Who Legal: Life Sciencessince 2011
•Recognized annually since the inaugural edition in 2010 ofWho's Who Legal: Canadaunder Patents
•Recognized inWho's Who Legal: Canada 2013under Life Sciences

Experience

Dm-drogerie markt GmbH v 911979 Alberta Ltd,2014 TMOB 59

Rothmans Benson & Hedges Inc v Imperial Tobacco Products Limited,2014 FC 300

Cheah v McDonald's Corporation,2013 FC 774

Iwasaki Electric Co Ltd v Hortilux Schreder BV,2012 FCA 321, (FCTD)

Marlboro Canada Limited v Philip Morris ProductsSA, 2012 FCA 201

Amazon.com Inc v Canada (Attorney General),2010 FC 1011,2011 FCA 328

Red Bull GmbH v 9087-1047 Quebec Inc,2011 TMOB 79

Corlac Inc v Weatherford Canada Inc,2011 FCA 228(for the Intervener, IPIC)

Hortilux Schreder BV v Iwasaki Electric Co Ltd,2011 FC 967

Indigo Books & Music Inc v C & J Clark International Limited,2010 FC 859

Copperhead Brewing Co v John Labatt Ltd(1995),61 CPR (3d) 317

Harvard College v Canada (Commissioner of Patents),2002 SCC 76,[2004] 4 FC 528, 7 CPR (4th) 1, (CA)

Lundbeck Canada Inc v ratiopharm Inc,2009 FC 1102

Eli Lilly and Company v Apotex Inc,2009 FC 991

J2 Global Communications Inc v Protus IP Solutions Inc,2009 FCA 42

Lundbeck Canada Inc v ratiopharm Inc,2008 FC 579

Anchor Brewing Co v Sleeman Brewing & Malting Co,2005 FCA 170

Sim & McBurney v Anchor Brewing Co,2005 FCA 171

Sleeman Brewing & Malting Co Ltd v Anchor Brewing Co,2005 FCA 170

Oakley Inc v Shoppers Drug Mart Inc,2004 FCA 404

Anchor Brewing Co v Sleeman Brewing & Malting Co Ltd,2004 FC 384

Sim & McBurney v Anchor Brewing Co,2004 FC 118

Bauer Nike Hockey Inc v Regan,2003 FC 1174

Diamant Toys Ltd. v Jouets Bo-Jeux Toys Inc,2002 FCT 384

Stamicarbon BV v Urea Casale SA,2002 FCA 10

Andres Wines Ltd vVina Concha Y Toro SA,2001 FCT 575

President and Fellows of Harvard College v Canada (Commissioner of Patents)(2000),
4 FC 528, 7 CPR (4th) 1

Stamicarbon BV v Urea Casale SA(2001),1 FC 172, 8 CPR (4th) 206

Osler Harkin & Harcourt v Canada (Registrar of Trademarks)(1997),77 CPR (3d) 475, (FCTD)

Allen & Hanburys Ltd v Torpharm Inc,75 CPR (3d) 417

Central Transport Inc v Mantha & Associates(1995), 59 CPR (3d) 213, (FCTD)

Mobil Oil Corp v Hercules Canada Inc, [1994] 57 CPR (3d) 488, (FCTD)

Bousquet v Barmish Inc,[1993], 46 CPR (3d) 510, (FCA)

Media

Publications

•Federal Court confirms protection for colour trademarks in Canada (co-author: Timothy Stevenson),IP Update - Canada, April 2, 2014;Lexology, April 2, 2014;Mondaq, April 2, 2014;World Trademark Review,April 16, 2014;International Law Office Intellectual Property Newsletter, April 22, 2014;CCCA Members Knowledge Centre, April 2014
•Intellectual Property Litigation: Top 10 Differences between Canada and the U.S. (co-author: Jeremy E. Want),Corporate Counsel, January 2014
•Software Patents Worldwide: Canada (co-author: Colin B. Ingram),Software Patents Worldwide, Wolters Kluwer Law, December 2013
•Patentable subject matter (co-authors: Daphne C. Lainson and Kevin K. Graham),Canadian Patent Law Benchbook,2012
•Software Patents Worldwide: Canada (co-author: Colin B. Ingram),Software Patents Worldwide, Wolters Kluwer Law, September 2012
•Business-Method Patent Law in U.S., Canada, Seemingly in Synch (co-author: Colin B. Ingram),Executive Counsel, August/September 2012
•More effective protection for pharmaceuticals (co-author: Daphne C. Lainson),Intellectual Property Magazine, July/August 2012
•The Duty of Candour in Canada (co-author: Cameron P. Weir),Canadian Intellectual Property Review,Vol. 27, No. 2 (December 2011), p. 219-256
•Canada and the duty of candour (co-authors: Colin B. Ingram and Cameron P. Weir),Intellectual Property Magazine, November 2011
•Amazon.com's 'single action ordering' patent application and the patenting of 'business methods' in Canada (co-authors: John R. Morrissey and Colin B. Ingram),CBA Business & Corporate Bulletin, March 2011
•An Update on the Scope of Patentable Subject Matter in Canada: The Amazon.com's single action ordering patent application and the patenting of business methods in Canada (co-authors: Colin B. Ingram and John R. Morrissey), American Bar Association'sLANDSLIDE magazine, May/June 2011
•Chapter Update - Global Patent Litigation: Canada (co-author: Kevin Graham),Global Patent Litigation: Strategy and Practice, Wolters Kluwer Law, 2011
•Amazon single action ordering patent and the scope of patentable subject matter in Canada,Intellectual Property Magazine, February 2011
•Intellectual Property and Advisor/Client Privilege, AIPPI 2009 Seoul Intellectual Property International Conference, Seoul, South Korea, November 15, 2009
•Making IP Litigation in Canada More Attractive,Law360, August 7, 2009
•Privileged Communications Between IP Advisors and Clients: The Canadian Perspective and the AIPPI Treaty Proposal, AIPPI 41st World Intellectual Property Congress, Boston, September 6-11, 2008
•Intellectual Property Advisor-Client Privileged Communications: Canada and Other Jurisdictions, WIPO/AIPPI Conference on Client Privilege in Intellectual Property Professional Advice, Geneva, Switzerland, May 22 and 23, 2008
•The Right Dose: Update on the CanadianPatented Medicines (Notice of Compliance) Regulationsand Data Protection for Pharmaceuticals in Canada (co-authors: J. Sheldon Hamilton and Amelia Choi),Patent World, October 2007
•Recent Developments Lead to Changing Face (and Pace) of Patent Litigation in Canada,Patent World, 2007
•Pharma Litigation Continues to Drive Canadian Patent Law,The Guide to the World's Leading Law Practitioners(Canada), 2007
•Canada: Are Computer-Implemented Inventions Patentable?World Focus: IP & High Technology, October 2006
•Global Patent Litigation: Canada (co-author: Kevin K. Graham),Global Patent Litigation: Strategy and Practice, Wolters Kluwer Law, June 2006

 
ISLN901059794
 

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Federal Court Confirms Protection for Colour Trade-marks in Canada
Steven B. Garland,Timothy O. Stevenson, April 3, 2014
A March 28, 2014 decision of the Canadian Federal Court, Rothmans Benson & Hedges Inc v Imperial Tobacco Products Limited, 2014 FC 300, has reinforced the principle that, in Canada, a single colour as applied to the surface of a consumer product is capable of being registered as a trade-mark.
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Office Information

Steven B. Garland

55 Metcalfe Street Suite 900
OttawaON K1P 5Y6




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