Kelly Gill
- Year of Call, Ontario (1993)
Bio
Kelly Gill is best known for his intellectual property litigation practice, particularly in the areas of trademarks and unfair competition. Kelly is past leader of the firm's Trademarks, Brands & Designs and IP Litigation & Strategy groups.
Kelly is ranked as a leading IP lawyer by some of the world's foremost legal directories, such as the Canadian Legal Lexpert Directory, Who's Who Legal and The Best Lawyers in Canada. The World Trademark Review ranks Kelly as one of the top trademark litigation counsel in Canada and has stated that he "never misses a trick and just doesn't let up. He is a forceful advocate and skilled litigator."
Kelly has appeared before all levels of court in Canada and served as counsel on two of the Supreme Court of Canada's most important trademark and copyright decisions: Masterpiece Inc. v. Alavida Lifestyles Inc. (2011 SCC 27) and CCH Canadian Ltd. v. Law Society of Upper Canada (2004 SCC 13).
Kelly is the author of numerous publications, most notably Fox on Canadian Law of Trademarks and Unfair Competition (4th edition). First published in 2002 and updated yearly since, it is considered the leading trademark law authority in Canada. It has been cited by every level of court, including the Supreme Court of Canada in all of its trademark judgments since publication.
Kelly has also been an adjunct professor of Trademark Law at Osgoode Hall Law School.
Bio
Kelly Gill is best known for his intellectual property litigation practice, particularly in the areas of trademarks and unfair competition. Kelly is past leader of the firm's Trademarks, Brands & Designs and IP Litigation & Strategy groups.
Kelly is ranked as a leading IP lawyer by some of the world's foremost legal directories, such as the Canadian Legal Lexpert Directory, Who's Who Legal and The Best Lawyers in Canada. The World Trademark Review ranks Kelly as one of the top trademark litigation counsel in Canada and has stated that he "never misses a trick and just doesn't let up. He is a forceful advocate and skilled litigator."
Kelly has appeared before all levels of court in Canada and served as counsel on two of the Supreme Court of Canada's most important trademark and copyright decisions: Masterpiece Inc. v. Alavida Lifestyles Inc. (2011 SCC 27) and CCH Canadian Ltd. v. Law Society of Upper Canada (2004 SCC 13).
Kelly is the author of numerous publications, most notably Fox on Canadian Law of Trademarks and Unfair Competition (4th edition). First published in 2002 and updated yearly since, it is considered the leading trademark law authority in Canada. It has been cited by every level of court, including the Supreme Court of Canada in all of its trademark judgments since publication.
Kelly has also been an adjunct professor of Trademark Law at Osgoode Hall Law School.
Experience
Experience
Representative Work
Kelly has appeared as lead trial counsel and appeal counsel on numerous cases before the Supreme Court of Canada, the Federal Court of Appeal, the Federal Court Trial Division, the Ontario Court of Appeal, High Court and Divisional Court. He has successfully represented clients in many notable cases, including:
Supreme Court of Canada
- CCH Canadian Ltd. v. Law Society of Upper Canada (2004) - counsel for the Law Society at trial, the Court of Appeal and the Supreme Court of Canada. This leading copyright case was the first time the Supreme Court dealt with such fundamental copyright issues as the standard of originality and fair dealing. The 2004 Judgment of the Supreme Court of Canada is recognised as one of the most important copyright decisions in Canadian history.
- Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27, [2011] 2 S.C.R 387 - counsel for Masterpiece Inc., this case has clarified important legal principles with respect to the differences, overlaps and interrelationships in Canada between rights flowing from registration and those existing at common law through use.
Federal Court of Appeal, Federal Court Trial Division, Ontario Court of Appeal, High Court and Divisional Court
- Marlboro Canada Limited v. Philip Morris Products S.A. 2012 FCA 201 - trade-mark/copyright - infringement
- Varco Canada Limited v. Pason Systems Corp. 2011 FC 467 - patents - motion to re-open trial
- Philip Morris Products S.A. v. Marlboro Canada Limited 2010 FC 1099 Date: November 8, 2010 - trade-mark/copyright - infringement
- Pason Systems Corp. v. Varco Canada Ltd., 2006 FCA 100 - patents - judicial review setting aside Decision of Commissioner to amend third party patent pursuant to s. 8 clerical error
- Pason Systems Corp. v. Varco Canada Ltd. 2006 FCA 100 Date: March 9, 2006 - patents - lack of good faith available as ground of invalidity
- Society of Composers, Authors and Music Publishers of Canada, v. Kicks Roadhouse Inc. (c.o.b. How-Dee's) (2005), 39 C.P.R. (4th) 28 (F.C.T.D.) - copyright - trial
- Consorzio Del Prosciutto Di Parma v. Maple Leaf Meats Inc. (2002), 18 C.P.R. (4th) 414 (FCA) - appeal - trade-mark expungement
- Merial LLC v. Novartis Animal Health Canada Inc (2001), 11 C.P.R. (4th) 48, [2001] 2 F.C. 536 (FCTD) - trade-mark infringement action - civil procedure
- Consorzio Del Prosciutto Di Parma v. Maple Leaf Meats Inc. (2001), 11 C.P.R. (4th) 48, [2001] 2 F.C. 536 (FCTD) - trade-mark expungement
- Canadian Memorial Services v. Personal Alternative Funeral Services Ltd (2000), 4 C.P.R. (4th) 440 (FCTD) - trade-mark infringement; trade-mark expungement; passing off - summary judgement
- Ling Chi Medicine Co. (HK) Ltd v. Mohan Persaud et al (1998), 81 C.P.R. (3d) 369 (FCA) - trade-mark expungement - appeal of trial
- Boehringer Ingelheim (Canada) Ltd v. Bristol-Myers Squibb Canada Inc. (1998), 78 C.P.R. (3d) 67 (Ont.Ct.Gen.Div.) - misleading advertising - interlocutory injunction motion
- 1013579 Ontario Inc. v. Bedessee Imports Ltd. (1997), 77 C.P.R. (3d) 163 (FCA) - trade-mark infringement; passing off - appeal of summary judgement
- M & I Heat Transfer Products Ltd. v. Airseal Controls Inc. (1997), 77 C.P.R. (3d) 126 (FCA) - patent infringement; patent impeachment - appeal of trial
- Canada Games Company Limited v. Llumar Star Kites Inc (1996), 69 C.P.R. (3d) 454, 206 NR 3 (FCA) - trade-mark registrability - appeal of trial decision
- Kellogg Company v. Imperial Oil Limited (1996), 136 DLR (4th) 686, 29 OR (3d) 70, 67 C.P.R. (3d) 426 (Ont.Ct.Gen.Div) - trade-mark infringement; passing off; copyright infringement - appeal of motion for production and motion to strike pleading
- Eveready Canada v. Duracell Canada Inc. (1995), 64 C.P.R. (3d) 348, 44 CPC (3d) 104 (Ont.Ct.Gen.Div) - misleading advertising; trade-mark disparagement - interim injunction motion
- Johnson & Johnson Inc. v. Bristol-Myers Squibb Canada Inc. (1995) - misleading advertising; trade-mark infringement - interlocutory injunction motion
- U & R Tax Services Ltd. v. H & R Block Canada Inc (1995), 62 C.P.R. (3d), 257, 97 FTR 259 (FCTD) - copyright infringement - trial
- Regina v. Ferjo (1994), 58 C.P.R. (3d) 223 (Ont.C.A.) - criminal passing off - appeal of trial
- Somerville House Books Ltd. v. Tormont Publications Inc. (1993), 53 C.P.R. (3d) 77 (FCA) - copyright infringement - appeal of interim injunction motion
Qualifications
Qualifications
Education
1997
Osgoode Hall Law School, LLM
1991
Osgoode Hall Law School, LLB
1988
Queen's University, BA (Honours)
Languages Spoken
English
French
Memberships
- Canadian Bar Association
- Institute of Trademark Agents
- Intellectual Property Institute of Canada
- International Trademark Association
Awards
Awards
February2025
August2024
February2024
November2023
August2023
February2023
November2022
November2022
August2022
March2022
February2022
August2021
February2021
February2021
September2020
August2020
February2020
September2019
August2019
January2019
August2018
January2018
December2017
August2017
November2016
August2016
June2016
Who's Who Legal: Trademarks 2016
April2016
December2015
Who's Who Legal: Canada 2015
September2015
The Best Lawyers in Canada 2016
September2015
The International Who's Who of Business Lawyers 2015
September2015
Who's Who Legal: Trademarks 2015
July2015
Canadian Legal Lexpert Directory 2015
July2015
Managing Intellectual Property 2015
July2015
Who's Who Legal 100, 2015
April2015
Benchmark Canada: The Definitive Guide to Canada's Leading Litigation Firms & Attorneys 2015
February2015
The Lexpert/American Lawyer Guide to the Leading 500 Lawyers in Canada 2015
February2015
World Trademark Review 1000: The World's Leading Trademark Professionals , 2015
October2014
Who's Who Legal: Canada 2014
September2014
Who's Who Legal - The International Who's Who of Trademark Lawyers 2014
September2014
Who's Who Legal: The International Who's Who of Business Lawyers 2014
July2014
Canadian Legal Lexpert Directory 2014
June2014
Managing IP's Trade Mark & Copyright Handbook 2014
April2014
Chambers Global 2014
April2014
Benchmark Canada: The Definitive Guide to Canada's Leading Litigation Firms & Attorneys 2014
February2014
Lexpert/American Lawyer Guide to the Leading 500 Lawyers in Canada 2014
February2014
World Trademark Review (WTR) 1000 2014
November2013
Who's Who Legal: Canada 2013
September2013
The Best Lawyers in Canada 2014
September2013
Who's Who Legal - The International Who's Who of Trademark Lawyers 2013
July2013
Canadian Legal Lexpert Directory 2013
July2013
Who's Who Legal: The International Who's Who of Business Lawyers 2013
April2013
Chambers Global 2013
March2013
Benchmark Canada 2013
February2013
The Best Lawyers in Canada® 2013
February2013
World Trademark Review (WTR) 1000 (2013)
December2012
Who's Who Legal: Canada 2012
July2012
Canadian Legal Lexpert Directory 2012
July2012
Who's Who Legal: The International Who's Who of Business Lawyers 2012
May2012
Guide to the World's Leading Trade Mark Law Practitioners 2012
April2012
Benchmark Canada 2012
April2012
Chambers Global 2012
April2012
World Trademark Review (WTR) 1000 (2012)
February2012
The Best Lawyers in Canada 2012
December2011
Who's Who Legal 2011
June2011
World Trademark Review (WTR) 1000 - The definitive guide to trademark legal services (2011)
February2011
Canadian Legal Lexpert Directory , 2011
February2011
The Best Lawyers in Canada® 2011
February2010
Canadian Legal Lexpert Directory , 2010
February2010
The Best Lawyers in Canada® 2010
2004
Lexpert, Rising Stars, Leading Lawyer Under 40
Publications & speaking engagements
Publications & speaking engagements
Kelly has written extensively in his area of expertise and is co-author of Fox on Canadian Law of Trade-Marks and Unfair Competition, 4th edition. Considered by many to be the leading text on trade-mark law in Canada, this 4th edition published in 2002, is now a looseleaf service that is updated twice yearly. The new text was recently cited with approval numerous times by the Supreme Court of Canada in Kirkbi AG v. Ritvik Holdings Inc. (the "LEGO case").
Kelly is an author of Trial by Survey: Survey Evidence and the Law, numerous chapters in different specialized texts, and articles on different facets of IP. He has sat on the editorial boards of the Canadian Intellectual Property Review and Patent World (London), and regularly lectures at such law schools as the University of Western Ontario and the University of Toronto and various conferences sponsored by such entities as ALI-ABA and the CBA. Kelly is also a Canadian contributing editor of the European Intellectual Property Review.