Kelly Gill Partner


Speaks:  English, French

Year of Call: 1993 - Ontario

Primary phone: +1 416-862-3536

Fax: +1 416-863-3536

Email: kelly.gill@gowlingwlg.com

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Primary office:  Toronto



Kelly Gill

A partner at Gowling WLG since 1999, 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 2015 World Trademark Review 1000 ranks Kelly as one of the top trademark litigation counsel in Canada, stating 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). This two-volume text, first published in 2002 and updated each year since, 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 is also an adjunct professor and sits on the Advisory Board of IP Osgoode at Osgoode Hall Law School.

Career & Recognition

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Memberships

  • Canadian Bar Association
  • Institute of Trademark Agents
  • Intellectual Property Institute of Canada
  • International Trademark Association

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.

Previous speaking engagements

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