James Green Partner


Speaks:  English

Year of Call: 2010 - Ontario

Primary phone: +1 416-369-7102

Fax: +1 416-862-7661

Email: james.green@gowlingwlg.com

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Primary office:  Toronto


Areas of expertise:


James Green

James Green is an intellectual property litigator in Gowling WLG's Toronto office. James has extensive experience representing clients in trademark, patent, design and copyright litigation before all levels of court in Canada, in trademark opposition and cancellation proceedings before the Trademarks Opposition Board, and in domain name dispute proceedings.

James is also a registered Canadian patent agent and trademark agent. He prepares and prosecutes applications for patents and trademarks, and regularly provides advice to clients with respect to the registrability, infringement and validity of intellectual property rights.

James previously served as a law clerk to the Honourable Justice James O’Reilly of the Federal Court. At the Federal Court, James provided assistance with a variety of intellectual property cases and also gained extensive experience in administrative law, assisting with judicial review proceedings from decisions of a wide variety of Federal boards and tribunals.

Before practising law, James studied chemistry and worked in a research laboratory.

Career & Recognition

Filter timeline:
  • 2010

    • Qualifications (Year of Call/Admission, etc.)
      2010
      Year of Call, Ontario
  • 2009

    • Education
      2009
      University of Western Ontario, JD, with Distinction
  • 2006

    • Education
      2006
      McMaster University, B. Arts Sc. (Honours), Summa Cum Laude

Memberships

  • Canadian Bar Association
  • Law Society of Upper Canada
  • Ontario Bar Association
  • The Osgoode Society for Canadian Legal History
  • Apotex Inc v AstraZeneca Inc: IP Experts Take the Plunge into the Hot Tub, European Intellectual Property Review, Vol. 34, Issue 12 (2012)
  • Supreme Court of Canada Clarification of the Law With Respect to the Test for Trade-mark Confusion, IP Law Quarterly, Vol. XVI, No. 4 (2011)

Insights & Resources

James regularly appears as counsel in cases before the Federal Court, Federal Court of Appeal, and Trademarks Opposition Board. A sample of cases includes:

Federal Court:

  • Trans-High Corporation v Conscious Consumption Inc., 2016 FC 949: obtained judgment for trademark infringement, depreciation, and passing-off with personal liability for corporate directors of infringing company (counsel for Trans-High)
  • Trans-High Corporation v Hightimes Smokeshop and Gifts Inc., 2015 FC 919 and 2015 FC 1104: successful prosecution of contempt of court proceedings against trademark infringer (counsel for Trans-High)
  • Philip Morris Products S.A. v Marlboro Canada Limited, 2015 FC 364: decision concerning entitlement to accounting of profits in a novel trademark infringement case (counsel for Philip Morris)
  • Burning Man v Burn BC Arts Cooperative, 2015 FC 42: obtained judgment for passing-off (counsel for Burning Man)
  • Syntel, Inc. v Syntelica Solutions Inc. (T-715-14): successful application to expunge an improperly registered trademark (counsel for Syntel)
  • I.C. Medical Inc. AMT Electrosurgery Inc. v Linvatec Canada ULC (T-1284-12): successful motions to declare a counterclaim moot and to defend claim for elevated costs of a patent infringement claim (counsel for I.C. Medical and AMT Electrosurgery)
  • Micro Focus (IP) Limited v Information Builders Inc., 2014 FC 632: successful appeal from a decision of the Trademarks Opposition Board (counsel for Micro Focus)
  • Trans-High Corporation v Hightimes Smokeshop and Gifts Inc., 2013 FC 1190: obtained judgment granting substantial damages and costs in an application for trademark infringement and passing-off (counsel for Trans-High)
  • Baksh v Probiohealth, 2012 FC 1388: successful defence of application for judicial review and statutory appeal from a decision of the Commissioner of Patents (counsel for Probiohealth)

Federal Court of Appeal:

  • Philip Morris Products S.A. v Marlboro Canada Limited, 2016 FCA 55: appeal concerning entitlement to accounting of profits in a novel trademark infringement case (counsel for Philip Morris)
  • Philip Morris Products S.A. v Marlboro Canada Limited, 2015 FCA 9: appeal from a decision regarding trial costs (counsel for Philip Morris)

Trademarks Opposition Board:

  • Gowling Lafleur Henderson LLP v Liwayway Marketing Corporation, 2015 TMOB 193, 194, 195, and 196: successful prosecution of non-use cancellation proceedings (counsel for requesting party) 
  • Sally Beauty International, Inc. v ADA International Beauty Inc., 2015 TMOB 38: successful opposition to confusingly similar trademark application (counsel for Sally Beauty)
  • Forest Stewardship Council, A.C. v G.H. Imported Merchandise & Sales Limited, 2014 TMOB 99 and 2014 TMOB 100: successful defences of trademark applications in opposition proceedings (counsel for G.H. Imported Merchandise)

Domain Name Disputes:

  • Magna International Inc. v Roger Wells and William Green (UDRP domain name proceedings): obtained transfer of domain names used in attempted fraud (counsel for Magna)
  • Huron Consulting Group, Inc. v Martine Colas (CDRP domain name proceeding): obtained transfer of domain name used in attempted fraud (counsel for Huron Consulting)
  • Magna International Inc. v Unknown (CDRP domain name proceeding): obtained transfer of domain name used in attempted fraud (counsel for Magna)
  • Magna International Inc. v Victor Silva (UDRP and CIRA domain name proceedings): obtained  transfer of domain names held by cybersquatter (counsel for Magna)
  • Magna International Inc. v Mustafa Mashari (UDRP domain name proceeding): obtained transfer of domain name used in attempted phishing scam (counsel for Magna)