David specializes in contentious matters relating to copyrights, trademarks, and domain names: when problems arise, clients look to David to help secure effective and efficient solutions. David provides advice and representation in disputes between competitors, between suppliers and distributors, and against bad faith actors (e.g., trademark squatters and knowing infringers). His clients range from multinational software companies to family-owned restaurants.
In the course of his representation of clients, he has appeared before the BC Supreme Court, the Ontario Superior Court, and the Federal Court of Canada. He also regularly represents clients in arbitrations and before tribunals, such as domain name proceedings under CIRA’s Dispute Resolution Policy (CDRPs) and trademark oppositions and cancellations before the Trademarks Opposition Board.
David has extensive knowledge of trademark law, and has assisted clients in respect of traditional trademarks, three dimensional trademarks, official marks, and geographical indications. He is co-author of Hughes on Trademarks, one of the leading texts on Canadian trademark law.
David sifts through legal jargon and procedural complexity to present straightforward advice and recommendations to clients throughout the course of their disputes: he identifies both problems and solutions in a manner that can be effectively used, even by the busiest of clients.
Work Highlights
Intellectual Property Litigation
- Acted as counsel in applications, motions, and trials involving various aspects of intellectual property and procedure:
- • Sidney Filkow v Canada (Attorney General) and the Registrar of Copyrights, T-1610-22 (successfully obtained expungement of copyright registration)
- • Clark Wilson LLP v 7299362 Canada Inc, 2022 FC 1478 (successful appeal of decision of Registrar involving non-use cancellation proceedings, resulting in order for deletion of consulting services)
- • Association of Chartered Certified Accountants v The Canadian Institute of Chartered Accountants, 2016 FC 1076 (successful motion for exclusion of expert reports in action involving official marks)
Counsel for Clients in Summary Non-Use Cancellation Proceedings
- Successfully obtained expungements of a trademark registrations and/or registered goods and services in contested non-use proceedings:
- • Clark Wilson LLP and Divertissement Dreamwave Inc/Dreamwave Entertainment Inc, 2023 TMOB 168
- • Clark Wilson LLP v Greenland Sales Limited, 2022 TMOB 38
- • Deeth Williams Wall LLP v PPG Architectural Coatings Canada, 2018 TMOB 28
- Successfully maintained trademark registrations in contested non-use proceedings:
- • Mark James Management Limited v Beatniks Bistro Ltd, 2023 TMOB 192
- • DB Business Law Professional Corporation v Kung’s Manufactory Ltd, 2021 TMOB 69
Counsel for Clients in Opposition Proceedings
- Assisted in numerous oppositions, including preparing evidence, conducting cross-examinations, and preparing arguments, including:
- • Asset Pro Solutions Inc dba Maintenance Connection Canada v Maintenance Connection, LLC, 2024 TMOB 67 (successfully defended against multiple interrelated oppositions brought by client’s distributor in proceedings involving allegations of bad faith, entitlement, and confusion)
Services
| Trademark registration, enforcement, licensing and portfolio counseling; | Domain name registration, acquisition and disputes |
| Intellectual property audits and due diligence | Copyright registration, enforcement, licensing and counseling |
| Industrial Design applications and counseling | Trade Secret counseling |
Awards & Distinctions
- Best Lawyers in Canada: Ones to Watch, Intellectual Property Law, 2024
