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jmckeown@casselsbrock.com

Telephone: 416 869 5498
Fax: 416 350 6940

Cassels Brock & Blackwell LLP
2100 Scotia Plaza
40 King Street West
Toronto, ON M5H 3C2
Canada

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Profile

John McKeown

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 trade marks and hundreds of successful trade mark applications have been filed. He is involved in many opposition proceedings before the Trade-marks Opposition Board and actions for infringement. He works with a team of law clerks to deliver cost effective service.

A few noteworthy cases on which John acted as counsel include:

• 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 Trade-marks Opposition Board and helped clarify the standard of review relating to such appeals when the decision was affirmed by the Federal Court of Appeal. (Accessoires D’Autos Nordiques Inc. v. Canadian Tire Corporation, Limited).

John has particular expertise regarding actions relating to copyright. He is the author of Fox, 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 looseleaf 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 is scheduled to be published in June 2010. 

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.

Education

LL.B., University of Toronto, 1974
B.Comm., Queen's University, 1971

Achievements

• Martindale-Hubbell, BV Distinguished™ rating
• Certified as a Specialist in Intellectual Property Law (Trade Marks/Copyright)

Call to the bar

Ontario, 1976

Associations

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

John McKeown Discusses the Potential Impact of New Generic Top Level Domain Names

Understanding Bill C-32: Copyright Modernization Act

Brand Management in Canadian Law, Third Edition

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Cassels Brock is Pleased to Announce INTA Committee Appointments

John McKeown Disputes gTLD Threat to Branding in the Toronto Star

John McKeown Refutes Concerns over New gTLDs in the Globe and Mail

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The Cassels Brock Report - February 2012

1. New Domain Names
2. A Trade-Mark Registration for Trade Dress
3. MARCHÉ EXPRESS
4. We Were Just One Click Away for Supreme Court of Canada Review
5. “Intrusion Upon Seclusion” – The Tort Whose Time has Come?
6. An Equitable Interest in a Patent

The Cassels Brock Report - November 2011

1. A Matter of Deference
2. Trade-mark Licences and Controlled Corporations
3. Summary Trial
4. Interpreting Industrial Design Registrations
5. Enforceability of Online Agreements
6. Supreme Court Clarifies Role of Hyperlinks in Defamation Case
7. Untruth in Advertising: Competition Bureau Cracks Down on Misleading Advertising

The Cassels Brock Report - September 2011

1. What Is a "Sculpture" for Copyright Purposes? Can an Action Be Brought for the Infringement of a Foreign Copyright?
2. Infringement of Design Trade-marks
3. Trade-mark Genericism
4. The Status of the New gTLDs
5. Lawyers and Accountants Qualify for .xxx Sponsored Top-Level Domain Registration. An Exercise in Brand Protection
6. Privacy Compliance – Just Good Business Practice?
7. Salary, Solicitation And Standards Of Conduct For Sports Agents
8. Tucows.Com Co. V. Lojas Renner S.A., 2011 ONCA 548

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