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Firm Overview

Smart & Biggar is Canada's largest firm practising exclusively in intellectual property and technology law, with offices in Ottawa,
Toronto, Montreal, and Vancouver. Since our inception over a century ago, we have been dedicated to one purpose: delivering unparalleled IP.

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Rankings and Recognitions

We are committed to providing our clients with the highest quality service and advice and we are proud that our services are consistently recognized in surveys of Canadian and international intellectual property practitioners.

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Firm History

The collaboration of Smart & Biggar/Fetherstonhaugh laid the foundation for delivering unparalleled IP service and solutions over a century ago.

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Practice Areas
Our team advises clients on a wide variety of existing and emerging IP and technology matters.   Click on any of the links below to learn more about a particular practice.
Legal Services
Industry Specializations

 

Professionals
Search by typing professional's last name or with any combination of name, keyword, or other criteria.

 
   
   

Offices
With offices across the country and a network that spans the globe, we offer our clients strategic counsel and an efficient gateway to the world.

For more information, please select an office below:

Ottawa | Toronto | Montreal | Vancouver

Articles
Our professionals regularly report on new developments in all areas of intellectual property and technology law. Please click here to view our list of articles.
Newsletters
IP Perspectives

Rx IP Update

IP Connections

Canadian ReMARKS

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Media
Coming soon
In order to better assist our clients and contacts, we are pleased to provide general information on Canadian intellectual property policies and proceduress, as well information on filing in certain foreign jurisdictions.

 

Careers
Smart & Biggar offers a variety of challenging and rewarding positions for professionals, students and administrative staff. Please select the appropriate link below to learn more about current opportunities.

Students | Professional | Administrative

Professionals

Brian P. Isaac
Partner, Toronto
Barrister and Solicitor,
Patent and Trade-mark Agent

 

CONTACT
Phone: 416.593.5514
Fax: 416.591.1690
YEAR OF CALL
Ontario Bar 1991
QUALIFICATIONS
  • Laurentian University B.Eng. (Mining) 1984
  • University of Ottawa LL.B. 1989
  • Registered Patent Agent 1991
  • Registered Trade-mark Agent 1991
 

Brian Isaac's practice has involved litigation in all areas of intellectual property for over 20 years. Mr. Isaac has appeared before the Federal Court of Canada, the Ontario Superior Court of Justice, and the Federal and Ontario Courts of Appeal, and he has also acted on numerous matters before the Canadian Trade-marks Opposition Board and Patent Appeal Board.  His tenacious nature has afforded him a long track record of success in commercial litigation. While his success before the courts has been exemplary, he approaches every case with an eye to meeting the business objectives of the client. He is highly effective in resolving issues through alternative dispute resolution methods, such as through mediation and settlement agreements.

In addition to his litigation experience, Mr. Isaac has become well-known in the legal community as a leading expert on IP crime. He regularly handles complex anti-counterfeiting and anti-piracy matters and is well-versed in all aspects of this area, including matters relating to customs and law enforcement. Mr. Isaac is called upon frequently to share his expertise in this area through speaking at events and conferences.

Another significant element of Mr. Isaac's practice is trade-mark filing, prosecution and enforcement, an area in which he is highly active. He also has experience in the prosecution of patents and industrial designs, and perfection of copyrights and trade secrets. 

Mr. Isaac's client activities involve portfolio development, litigation and providing anti-counterfeiting services to several high-profile corporations, such as:

Levi Strauss & Co.
Facebook, Inc.
LinkedIn Corporation
Valeant Pharmaceuticals International
Gilead Sciences Canada, Inc.
ActivisionBlizzard, Inc.
Bourgault Industries Ltd.
The Cheesecake Factory Incorporated
Highline Mfg. Inc.
Rolls-Royce PLC
Wellington West Capital Inc.
Abercrombie & Fitch Co.
Canadian National Railway Company
True North Nutrition Ltd.
Gaspari Nutrition Inc.
Miranda Windows & Doors Inc.
Underwriters Laboratories Inc.
Uview Ultraviolet Systems Inc.
Yahoo! Inc.
Business Software Alliance
Entertainment Software Association
Burberry
The Chanel Company Limited
Canadian Standards Association
Ferrari S.p.A.
Oakley, Inc.


Rankings and recognition

  • Selected by World Trademark Review 1000 – The Definitive Guide to Trademark Legal Services
  • Recognized in The Canadian Legal LEXPERT® Directory under Intellectual Property
  • Listed in Euromoney's Guide to the World's Leading Trade Mark Law Practitioners
  • Selected to appear in PLC Which Lawyer? under IP: non-patent litigation
PRACTICE AREAS
Litigation
IP Crime
Trade-marks
Copyright & Media
Patents
Industrial/Mechanical
Software/Internet/Information Technologies
Licensing & IP Transactions
IP Management & Strategic Counselling
Industrial Designs
 

Spirits International B.V. v. BCF S.E.N.C.R.L. 2012 FCA 131

Miranda Aluminum Inc. v. Miranda Windows and Doors Inc., 2009 FC 669, aff'd 2010 FCA 104

Abercrombie & Fitch Co. v. Giant Tiger Stores Limited, 2009 FC 492

Uview Ultraviolet Systems Inc. v. Brasscorp Ltd., 2009 FC 58

Carney Timber Company Inc. v. Pabedinskas, 2008 CanLII 63163 (On. S.C.)

Levi Strauss & Co. v. Canada, 2006 FC 654

Allerex Laboratories Ltd. v. Dey Laboratories L.P., 2005 CanLII 33532 (On. S.C.)

Apotex Inc. v. AB Hassle, 2005 FCA 209

Vivat Holdings Ltd. v. Levi Strauss & Co., 2005 FC 707

Rolls-Royce plc v. Fitzwilliam, 2002 FCT 598

Molson Canada v. Oland Breweries Ltd., 2002 CanLII 44947 (On. C.A.), aff'g 2001 CanLII 28238 (On. S.C.)

Whirlpool Corp. v. Camco Inc., 2001 FCT 689

Highline Mfg. Inc. v. Convey-all Industries Inc., 2000 CanLII 15229 (F.C.)

Sim & McBurney v. Microtel Ltd., 2000 CanLII 15722 (F.C.)

Levi Strauss & Co. v. Roadrunner Apparel Inc., 1999 CanLII 7977 (F.C.)

Bourgault Industries Ltd. v. Flexicoil Ltd., 1999 CanLII 7650 (F.C.A.), aff'g 1998 CanLII 7338 (F.C.)

Levi Strauss & Co. v. Timberland Co., 1997 CanLII 6012 (F.C.)

Labatt Brewing Co. v. Benson & Hedges (Canada) Ltd. (1996), 67 C.P.R. (3d) 258 (F.C.T.D.)

Levi Strauss & Co. v. Benisti Import-Export Inc. (1995), 61 C.P.R. (3d) 11 (F.C.T.D.)

Labatt Brewing Co. v. Molson Breweries, a Partnership (1995), 68 C.P.R. (3d) 216 (F.C.T.D.)

Molson Companies Ltd. v. John Labatt Ltd. (1994), 58 C.P.R. (3d) 527 (F.C.A.), aff’g 28 C.P.R. (3d) 457 (F.C.T.D.)

Memberships

  • Past Chair, Canadian Anti-Counterfeiting Network
  • Fellow, Intellectual Property Institute of Canada
  • Member, International Trademark Association; Chair of the Trademark Use Subcommittee of the Internet Committee, Sub-Chair of the Internet Committee
  • Member, International Anti-Counterfeiting Coalition
  • Member, Intellectual Property Owners Association
  • Member, Canadian Bar Association


Speaking engagements

  • "Copyright Issues on the Web," 6th Internet Law course, Federated Press, Toronto, December 2011
  • "Effective International Trade Startegies: Protecting Intellectual Property," CICA's Business and Industry Conference, Toronto, November 2011
  • "CyberRogues and Web Pirates! New Frontiers of Counterfeits and Squatters in Film, Fashion & Music," American Bar Association annual meeting, August 2011 
  • Presentation on the subject of regulatory and policy issues surrounding copyright modernization in Canada, University of Toronto Technology and Intellectual Property Group conference, Toronto, March  2011
  • "Counterfeiting - Canadian IP Crime Update 2011," Intellectual Property Institute of Canada Ottawa Informals Group, January 2011
  • "Copyright Issues on the Web – 2010," 4th Internet Law course, Federated Press, Toronto, December 2010
  • Presented a testimony to the Parliamentary Committee considering Bill C-32 (copyright reform bill) as an invited witness, Ottawa, December 2010
  • "CACN Counterfeit Products Update 2010," Canadian Anti-Counterfeiting Network Reality Tour (chair) Toronto and Saskatoon, November 2010 
  • "CACN Counterfeit Products Update 2010," Canadian Anti-Counterfeiting Network Reality Tour 2010, Saskatoon, SK and Toronto, ON, November 2010
  • "Financial Remedies — Innovative Tools to Break Organized Crime" (moderator), 2010 International Law Enforcement IP Crime Conference, Hong Kong, October 2010
  • "Don’t Forget to Hit the Refresh Button: The Law of Keyword Advertising Changes," American Bar Association teleconference, June 2010 
  • Presentation on copyright reform, University of Toronto Faculty of Law Technology Group, Toronto, March 2010 
  • Presentation to invitees at the Royal Ontario Museum event celebrating "Fakes and Forgeries Exhibit," Toronto, March 2010
  • "Practice management issues for the IP practice" (moderator), 14th Annual Intellectual Property Law — The Law in Review seminar, The Law Society of Upper Canada, Toronto, January 2010
  • "Copyright issues on the web," 3rd Internet Law conference, Federated Press, December 2009
  • "Consumer Product Safety and Customs Compliance" (panel discussion), Canadian Association of Importers and Exporters (IE Canada) 78th Annual Conference & Trade Show, Mississauga, ON, October 2009
  • Presentation on intellectual property educational initiatives, Canadian Intellectual Property Office Business Development and Partnerships Group, September 2009
  • Presentation delivered at Smart & Biggar’s Global Enforcement — Fighting Counterfeiting in the U.S., Canada, Europe and China seminar, Mississauga, ON, June 2009
  • Presentation delivered at Smart & Biggar’s Global Enforcement — Fighting Counterfeiting in the U.S., Canada, Europe and China seminar, New York City, June 2009
  • "The challenges of searching registered non-traditional trademarks" (workshop), presented at the Malaysian Intellectual Property Office in conjunction with the International Trademark Association and the Malaysian International Chamber of Commerce, Kuala Lumpur, Malaysia, March 2009
  • "Counterfeit and Grey Goods," 13th Annual Intellectual Property Law: The Year in Review, The Law Society of Upper Canada, Toronto, January 2009
  • Presentation on reform of copyright legislation, Intellectual Property Institute of Canada Annual Meeting, October 2008
  • Led course and presented paper on copyright issues on the web, 2nd Internet Law Conference, Federated Press, Toronto, December 2008
  • "Protecting your Products and Brands," Canadian Corporate Counsel Association 2008 National Spring Conference, April 2008
  • "Teaming Up to Help Stop Counterfeiting," CMX-Ciphex meeting, 2008
  • "What U.S. Trade-mark Lawyers Must Know About Anti-counterfeiting, Customs and Crossing the Border," International Trade-mark Association Annual Meeting, May 2006


Teaching activities

  • "Anti-counterfeiting Issues," 2010 IPIC-McGill Advanced Trade-marks Course, August 2010
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Publications

  • "How to ensure your ownership in copyright" (co-author: Jayda A. Sutton), IP Connections, May/June 2012
  • "Can I quote this headline?" Managing Intellectual Property, September 2011