Kelly Gill

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

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. (4^th) 28 (F.C.T.D.) - copyright - trial
Consorzio Del Prosciutto Di Parma v. Maple Leaf Meats Inc. (2002), 18 C.P.R. (4^th) 414 (FCA) - appeal - trade-mark expungement
Merial LLC v. Novartis Animal Health Canada Inc (2001), 11 C.P.R. (4^th) 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. (4^th) 48, [2001] 2 F.C. 536 (FCTD) - trade-mark expungement
Canadian Memorial Services v. Personal Alternative Funeral Services Ltd (2000), 4 C.P.R. (4^th) 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 (4^th) 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

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

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.

Kelly Gill

Partner

Bio

Bio

Experience

Experience

Representative Work

Supreme Court of Canada

Federal Court of Appeal, Federal Court Trial Division, Ontario Court of Appeal, High Court and Divisional Court

Qualifications

Qualifications

Education

Languages Spoken

Memberships

Publications & speaking engagements

Publications & speaking engagements

Stay connected

Kelly Gill

Partner

Bio

Bio

Experience

Experience

Representative Work

Supreme Court of Canada

Federal Court of Appeal, Federal Court Trial Division, Ontario Court of Appeal, High Court and Divisional Court

Qualifications

Qualifications

Education

Languages Spoken

Memberships

Publications & speaking engagements

Publications & speaking engagements

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Stay connected