Canada’s Intellectual Property Firm

Mark Evans

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Mark Evans

Principal
  • Smart & Biggar LLP
Language(s): English

Helping market leaders remain at the forefront of trademark and brand strategy, protection, and enforcement

Representing many of the world's most famous brand owners and personalities, Mark is widely recognized as one of Canada’s leading trademark lawyers. Clients seek him out for his sophisticated expertise in trademark protection, management, and counselling services to help them strategically build and protect the value of their brands.

A seasoned trademark lawyer and highly respected litigator, Mark has significant experience in all aspects of trademark law and the branding life cycle including trademark and trade-dress litigation, brand selection and clearance, trademark prosecution, oppositions and cancellations, and licensing and merchandising.

With more than 30 years of experience and an impressive record of success in numerous high-profile, precedent-setting cases, Mark is known for providing clients with exemplary service and highly-effective advice and solutions. He takes great interest in his clients and invests wholly in helping them realize their maximum brand potential while recognizing and mitigating unforeseen risks.

An IP career defined by experience, results, and hard-earned recognition

Mark is at the forefront of the Canadian trademark profession and has been honoured as “Canada’s Outstanding Practitioner of the Year – Trademark” (Managing Intellectual Property, 2020), “Canadian Trademark Litigator of the Year” (Benchmark Canada, 2014 and 2015) and a “Global Thought Leader – Trademarks” (Who’s Who Legal, 2019 and 2015). The World Trade Mark Review 1000 has repeatedly selected Mark as the only Canadian for their gold or silver bands of all areas of trademark law and practice: prosecution and strategy; enforcement and litigation; and anti-counterfeiting. He has also been recognized by senior in-house counsel as a “stand-out lawyer” in Acritas Stars (2018 and 2019) and “hailed as one of the strongest trademarks experts in the market” (Who’s Who Legal 2020). He has also been consistently honoured by a wide range of other leading Canadian and international publications, including the Lexpert/American Lawyer Guide to the Leading 500 Lawyers in Canada, Chambers Global, and Best Lawyers.

Mark has written extensively within the field of intellectual property law, including within international publications such as Trademark World, Managing Intellectual Property, National Law Journal and the World Trademark Law Report. He co-authored the 2017 and 2019 editions of the Canada chapter on trademark litigation for Thomson Reuters' Trade Mark Litigation Global Guide. He has also co-authored the Trademark Litigation: Remedies and Procedures chapter of the IP Benchbook, which is an electronic textbook for the Canadian judiciary, published jointly by the National Judicial Institute and the Law Society of Ontario. Mark was also a joint winner of the Marketing Research and Intelligence Association’s “Best Multi-Stakeholder Research Initiative” for consumer survey research conducted in the trade dress trial victory in Diageo Canada v Heaven Hill Distilleries et al,  2017 FC 571.

Mark is a frequent panelist on intellectual property subjects and has spoken to various organizations, including the International Trademark Association, the Intellectual Property Institute of Canada, the Canadian Corporate Counsel Association, the American Bar Association, the Law Society of Ontario, the New York State Bar Association, the Michigan State Bar Association, the Chicago Bar Association, the Intellectual Property Law Association of Chicago and the Oklahoma State Bar Association. Mark also taught trademark law at Osgoode Hall Law School for several years, and has lectured at the Oxford Intellectual Property Research Centre and the McGill/IPIC Intensive Copyright course.

During his academic career, Mark was awarded the prize for the highest grade in Intellectual Property Law in the Bar Admission course for Ontario.

Qualifications

  • News
  • Speaking
  • Industry Involvement
  • In the Media
  • "Canadian Brand Protection, eh?: Enforcing Trademarks in Canada from oppositions to litigation" (with Ekaterina Tsimberis), Smart & Biggar Webinar, June 23, 2022.
  • "Litigation, Oppositions and Non-Use Cancellation Proceedings: Effective strategies to protect and defend your marks in Canada" (with Noelle Engle-Hardy), Smart & Biggar Webinar, June 2021
  • "The Future of IP in Canada –The Northern Innovation Wave in America" (with Matthew Zischka and Daphne Lainson), Mondaq Webinar - Canada Future Series, May 27, 2021
  • Presenter, 2019 American Bar Association – Intellectual Property Law (ABA-IPL) Annual Meeting and 34th Intellectual Property Law Conference, Arlington, VA, April 11, 2019
  • “Trademarks Update”, Law Society of Ontario’s 23rd Annual Intellectual Property: Year in Review Seminar, January 17, 2019
  • "Brand Owners and Counsel: Strategies for Navigating Canada's Trademark Changes" (with Keltie Sim Luft, Philip Lapin and Andrea Kroetch), webinar series, October 25, 2018
  • "Use of Marks on the Internet", IPIC Case Law webinar series, May 30, 2018
  • “Navigating Trademark Risks for In-house Counsel”, Association of Corporate Counsel-Ontario, April 24, 2018
  • “What US Brand Owners Need to Know about Canada’s Trademark Changes – Legislation and Enforcement” (with Philip Lapin), Managing Intellectual Property – Global Trademark Roadshow in Palo Alto, California, June 21, 2017 and New York City on June 23, 2017
  • "Canada: upcoming legislative changes, and effective litigation enforcement", Managing IP Trademark Road Show, June 2017
  • "Use of Marks on the Internet", IPIC Case Law Webinar Series, June 14, 2017
  • "Remedies – Quick Results in Trademark Cases: Myth or Reality?" (panel discussion), IPIC’s 90th Annual Meeting, September 2016
  • "Passing Off," Intellectual Property Institute of Canada webinar, May 2016
  • “Trademarks: What are they and how you need to protect yourself”, CPD online’s inaugural Business Law and Legal Issues Facing Finance Professionals Conference, May 2016 
  • "Use of Marks on the Internet," Intellectual Property Institute of Canada webinar, May 2016
  • “Trade-Mark Infringement:  Where are the Courts Going with the “Use” Requirement?" (panel discussion), Law Society of Upper Canada’s 20th Annual Intellectual Property Law: The Year in Review, January 2015
  • “Canada's Significantly Amended Trademark Laws: What Canadian Brand Owners and In-House Counsel Need to Do Right Now”, Canadian Corporate Counsel Association Webinar, November 2015
  • “Canada’s Significant Trademark Law Changes”, Chicago Intellectual Property Law Association, October 2014
  • "European-Canadian Trademark Protection and Related Ethics", Intellectual Property Institute of Canada Webinar, June 2012
  • "IP Goes Digital (What This Means to Solicitors)" (panel discussion), Law Society of Upper Canada's 16th Annual Intellectual Property Law: The Year in Review, January 12, 2012
  • "Canadian Trademark Law--Important Developments for U.S. Brand Owners and Practitioners", Michigan State Bar Association's Intellectual Property Law Summer Institute, July 2011
  • "Business and legal issues in intellectual property licensing" (panel discussion), International Trademark Association's annual meeting, May 2011
  • "Effective Intellectual Property Management for the Non-IP Specialist" (panel discussion), Canadian Corporate Counsel Association, February 2011
  • "How the Bill Will Affect the Availability of Statutory Damages", Understanding Bill C-32: Copyright Modernization Act seminar, Osgoode Hall Law School of York University, November 2010  
  • "Canadian Opposition proceedings", Intellectual Property Institute of Canada's 82nd Annual Meeting, October 2008
  • "Trademark Litigation Remedies and Procedures" (Co-presenter: Michael D. Manson), Law Society of Upper Canada, June 2008
  • "IP Rights Enforcement: Protecting Product Configuration in Europe and Beyond" (moderator), International Trademark Association’s forum, December 2006
  • "Defining the Critical Elements of IP Licensing: Rights and Grants of Rights", The Canadian Institute's IP Licensing Conference, November 2006
  • "Protecting Intellectual Property in the Distribution Channel", Product Distribution Marketing, Federated Press, September 2006

Memberships

  • Fellow, Intellectual Property Institute of Canada
  • Member, International Trademark Association (INTA); member of the Professional Development Committee (2024-2025); member of the Law Firm Committee (2020-2023); member of the Leadership Committee (2016-2019); member of the Legal Practice Resources Committee; former member and Team Leader of the Law Firm Committee; former member of the Canada Subcommittee of the Anti-counterfeiting Committee; former Chair of the Trademark Use Subcommittee of the Internet Committee; former Sub-Chair of the Internet Committee

Teaching Activities

  • "Enforcement", IPIC/McGill Business of Copyright course, Montreal, August 2008
  • "Enforcement", IPIC/McGill Business of Copyright course, Montreal, August 2007
  • "Enforcement", IPIC/McGill Business of Copyright course, Montreal, August 2006
  • "Enforcement", IPIC/McGill Business of Copyright course, Montreal, August 2005
  •  Former Adjunct Professor in Trademark Law, Osgoode Hall Law School

Interviews

Publications

  • "Trade mark litigation in Canada: overview" (co-author: Graham Hood), Trade Mark Litigation Global Guide 2021 edition, Thomson Reuters, April 2022
  • "Trade mark litigation in Canada: overview" (co-author: Timothy Stevenson), Trade Mark Litigation Global Guide 2017 & 2019 editions, Thomson Reuters, January 2019
  • "Canadian Trademark Law: Prepare for Change" (co-author: Keltie Sim Luft), CCCA Magazine, Winter 2015 
  • "Faster, cheaper trademark litigation", The Trademark Lawyer, Issue 1, 2015
  • "Court reinforces high standard for rejecting marks based on living individual's reputation" (co-author: Graham Hood), World Trademark Review Daily, July 22, 2014
  • "Federal Court: well-known geographic locations are inherently weak", World Trademark Review Daily, April 3, 2014
  • "Harley-Davidson may sell Screamin' Eagle clothing in association with famous house mark" (co-author Graham Hood), World Trademark Review Daily, March 20, 2014
  • "Canadian Council of Professional Engineers fails to prevent registration of 'engineering' mark", World Trademark Review Daily, January 21, 2014
  • "SC denies request for leave to appeal decision preventing sale of no-name cigarettes", World Trademark Review Daily, April 23, 2013
  • "Federal Court expands what may constitute 'use' of a 'service", World Trademark Review Daily, March 29, 2011
  • "A Global Guide to Protecting Copyright (Canada)", Managing Intellectual Property, November 2009
  • "New court decision on 'use it or lose it' provision", World Trademark Review Daily, January 21, 2008
  • "Copyright Licensing Not the Answer to Grey Marketing" (co-author: Geneviève M. Prévost), Managing Intellectual Property, September 2007
  • "Fairweather achieves aim in TARGET APPAREL appeal", World Trademark Review Daily, November 7, 2006
  • "'Infringing' use wipes registered mark off of the register", World Trademark Review Daily, February 6, 2006
  • "Internal use of mark does not constitute actual use or passing off", World Trademark Review Daily, November 23, 2005
  • "CIPO seeks comments on streamlined opposition procedures", World Trademark Review Daily, November 14, 2005
  • "Supreme WIPO releases overview of key issues in UDRP decisions", World Trademark Review Daily, May 3, 2005
  • "Court to hear Lego appeal", World Trademark Review Daily, June 22, 2004
  • "A sound examination should not include design elements", World Trademark Review Daily, March 24, 2004
  • "Roller Derby iced by Federal Court", World Trademark Review Daily, July 7, 2003
  • "No stopping use of BOSTON MARKET before trial", World Trademark Review Daily, June 2, 2003
  • "American Sporting Goods gets the boot", World Trademark Review Daily, May 28 2003
  • "BOSTON CHICKEN plucked from registry", World Trademark Review Daily, April 11 2003