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François Guay

François Guay

Key Details

François Guay
Smart & Biggar/Fetherstonhaugh


François Guay has practised intellectual property for close to 35 years and in that time has advised on litigation strategies. He has argued cases related to patents, trademarks, and the industrial designs fields. Guay has represented numerous big brands including Microsoft, Nike, Sony, Diageo and others. He is a fellow of the Intellectual Property Institute of Canada, and a member of INTA and AIPPI.

Professional Highlights

  • Bodum USA Inc and PI Design AG v Trudeau Corporation (1889) Inc, 2012 FC 1128 (Federal Court) — Successfully represented the defendant Trudeau Corporation in an industrial design infringement action where the Court rejected the plaintiffs’ claim of industrial design infringement and declared their industrial design registrations invalid. This was the first industrial design infringement decision on the merits emanating from any level of the Federal Court since a 1993 amendment to the infringement provisions of the Industrial Design Act.
  • Marlboro Canada Limited v Philip Morris Products SA, 2012 FCA 201 (Federal Court of Appeal) — Successfully represented the plaintiffs by counterclaim Imperial Tobacco Canada Limited and Marlboro Canada Limited in a trademark infringement action of the MARLBORO word mark. The Federal Court of Appeal, overturning the decision of the trial judge, held that Philip Morris and Rothmans, Benson & Hedges, by selling a cigarette package without a brand name but incorporating the well-known design elements of Philip Morris’ international MARLBORO package, had infringed the Imperial Tobacco’s exclusive rights in the MARLBORO word mark in Canada. The Supreme Court of Canada dismissed Philip Morris’ application for leave to appeal of this decision. My colleagues and I recently received the 2012 Canadian Trademark Milestone Case of the Year award from Managing Intellectual Property (U.K.) for our success in this case.
  • Easton Sports Canada Inc v Bauer Hockey Corp and Nike International Limited, 2011 FCA 83 — François successfully represented Bauer Hockey Corp. and Nike International Limited in this appeal, which confirms the trial decision in 2010 FC 361.
  • Nike International Limited and Bauer Hockey Corp v Easton Sports Canada Inc, 2010 FC 361 (Federal Court); confirmed on appeal 2011 FCA 83 (Federal Court of Appeal) — Successfully represented Bauer Hockey and Nike International, which had the validity of their patent for a hockey skate confirmed by the Court. The patent was also found to be infringed by more than 30 models of skate sold by the defendant, Easton Sport.

Participation in Wider Community

Professional Affiliations

  • Fellow, Intellectual Property Institute of Canada
  • Member, International Trademark Association
  • Member, International Association for the Protection of Intellectual Property (AIPPI)
  • Member, European Communities Trade Mark Association
  • Member, International League of Competition Law (LIDC)

Academic Affiliations

Speaking engagements

  • "Les dommages en matière de brevets," Bureaux de l'ABC-Québec, Montreal, May 2012
  • "La contrefaçon et ses impacts sur l'économie et les entreprises canadiennes" (co-presenter: Sanjay D. Goorachurn), Congrès annuel du Barreau du Québec, Montreal, May 2009
  • "Recent Anti-Piracy Developments in Canada" (panel discussion moderated by Sanro Zlobec), joint Intellectual Property Institute of Canada and the New York State Bar Association summer meeting, Montreal, July 2008
  • "Aspects commerciaux et litigieux de la PI reliés aux transactions de fusions et acquisitions et aux licences" (co-presenter: Sanjay D. Goorachurn), Congrès annuel du Barreau du Québec, Mont-Tremblant, QC, June 2007
  • "Valoriser et commercialiser les actifs de propriété intellectuelle," Les contrats de cession, Canadian Institute, Montreal, April 2006

Teaching activities

  • "Mock Trial with Oral Testimony" (workshop participant), The Trademarks Practitioner, IPIC-McGill Advanced Trademarks Course, Montreal, August 2010