John McKeown – Goldman Sloan Nash & Haber LLP

Practice/Organization Description

John focuses on providing advocacy and advice concerning intellectual property and related matters, including protecting trade-marks, copyrights, patents, confidential information and misleading advertising and claims under the Competition Act. A growing component of his work relates to intellectual property claims on the Internet, including domain name disputes. He is certified by the Law Society of Upper Canada as a specialist in Intellectual Property Law (Trade Marks/Copyright). Some of Canada’s largest marketers have relied on John’s advice.

John supervises obtaining, protecting and licensing trademarks and hundreds of successful trade mark applications. He is involved in many opposition proceedings before the Trade-marks Opposition Board and actions for infringement.

John has particular expertise regarding actions relating to copyright. He is the author of McKeown, Fox, on Canadian Law of Copyright and Industrial Designs (3rd Edition, 2000; 4th Edition, 2003), the leading copyright textbook in Canada. The 4th edition has been released in a loose-leaf form and builds on the success of the 3rd edition. The text is updated semi-annually. John and the text have been referred to by both the Supreme Court of Canada and the Federal Court of Appeal as an authoritative source.

John’s textbook, Brand Management in Canadian Law (1st Edition, 2004; 2nd Edition, 2006; 3rd Edition, 2010) considers brand management from a legal perspective. The components which make up a brand, a consumer’s perception of a brand, brand equity, brand leverage and integration are discussed. Additional chapters deal with legal considerations relating to choosing a brand name, branding on the internet, protecting the components of a brand and developing effective brand management policies. A second edition was published in 2006 and a third edition was published in June 2010. A fourth edition is anticipated once the current amendments to the Trademarks Act have been finalized.

In Canadian Intellectual Property Law and Strategy: Trademarks, Copyright and Industrial Designs, John provides an overview of Canadian law relating to trade marks, copyright and industrial designs along with strategic commentary designed for legal practitioners outside Canada. The book was published in March 2010 by Oxford University Press. The publication of the book was taken over by LexisNexis and 2013 and 2014 editions have been published. Their plan is to publish a new edition each year.

For the past year John has been the Chairman of the Canadian Bar Association Trademarks

Committee and heavily involved in the trademark reform process.

Cases of Note:

• Successfully argued on appeal that a patent specification should be given a purposive construction and that the defendant had not infringed (Eli Lilly & Company v. O’Hara Manufacturing Ltd.). This decision of the Federal Court of Appeal was applied in many subsequent cases in the Federal Court and eventually affirmed by the Supreme Court of Canada

• Successfully argued that a defendant could deny the existence of copyright when the statement of claim relied on a certificate of registration so long as sufficient material facts were pleaded (IT Hartford Life Insurance Co. of Canada v. American National Assurance Life Company).

• Successfully used the uniform domain name dispute resolution policy to require that a number of domain names owned by cybersquatters be transferred (Canadian Tire Corporation, Limited v. 849075 Alberta Ltd. and other similar cases)

• Obtained confirmation from the Federal Court of Appeal that hearsay evidence was unacceptable in trade mark expungement proceedings (Canadian Tire Corporation, Limited v. P.S. Partsource Inc.).

• Successfully used survey evidence to overturn a decision of the Trademarks Opposition Board and helped clarify the standard of review relating to such appeals. (Accessoires D’Autos Nordiques Inc. v. Canadian Tire Corporation, Limited).

Education

University of Toronto (LL.B.)

Queen's University (B.Comm)

Professional Associations & Memberships

Intellectual Property Institute of Canada, International Trademark Association, Ontario Bar Association (Alternative Dispute Resolution, Civil Litigation, Information Technology and E-Commerce, Privacy Law), Canadian Bar Association (Competition Law Section), American Bar Association (Patent, Trade mark and Copyright Law Section), Toronto Lawyers Association

Honors and Awards

• Included in 2014 Ninth Edition of Best Lawyers in Canada - Practice area of Intellectual

Property Law

• Selected by his peers for inclusion in Best Lawyers in Canada 2015 in the field of

Intellectual Property Law

• Certified as a Specialist in Intellectual Property Law (Trade Marks/Copyright)

• Recognized by a third party trademark professional rating organization as among the World’s leading trademark professionals for both enforcement and litigation and prosecution and strategy.

• Martindale-Hubbell, BV Distinguished™ rating

Contact

480 University Avenue, Suite 1600
Toronto, Canada , Ontario M5G 1V2, Canada

  • 416-597-3371

Areas of Practice
  • Intellectual Property
  • Litigation
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