Easton Sports Canada Inc. v. Bauer Hockey Corp. and Nike International Limited, 2011 FCA 83 — Mr. Guay successfully represented Bauer Hockey Corp. and Nike International Limited in this appeal, which confirms the trial decision in 2010 FC 361.

Microsoft Corp. c. 9038-3746 Québec Inc., 2010 FCA 151 — Mr. Guay represented Microsoft, the respondent (plaintiff) in this software counterfeiting case. The appellant (defendant) pleaded guilty to two charges of contempt of court for selling Microsoft counterfeit software against an injunction of the court and was thus ordered to pay a fine of $50,000 for each offence. The defendant had his appeal from that sentence dismissed, the Federal Court of Appeal finding that he had shown total disregard for the law and malicious and selfish contempt for the courts.

Producteurs Laitiers du Canada v. Republic of Cyprus (Ministry of Commerce, Industry & Tourism), 2010 FC 719 — Mr. Guay represented the Republic of Cyprus, which appealed from the decision of the Trade-marks Opposition Board dismissing its application to register the certification mark HALLOUMI for use in association with a particular cheese produced in Cyprus.

Bauer Hockey Corp. v. Easton Sports Canada Inc., 2010 FC 361 — Mr. Guay represented Bauer Hockey and Nike International, which had the validity of their patent for a hockey skate confirmed by the Court. The patent was also found to be infringed by more than 30 models of skate sold by the defendant, Easton Sport. 

Prenbec Equipment Inc. v. Timberblade Inc., 2010 FC 23 — Mr. Guay represented Prenbec Equipment, the plaintiff in a saw tooth patent infringement case. In that interlocutory decision, Prenbec Equipment successfully had the Federal Court order the Patent Re-examination Board to stay the re-examination proceedings of the patent that were launched by the defendant. The Court found that the defendant was merely attempting to avoid dealing with the issue of credibility surrounding its alleged prior art.

Air Canada v. AIS Infonetics Inc., 2009 FC 668 — Mr. Guay represented Air Canada, the defendant in a patent infringement action. In that interlocutory decision, Air Canada successfully had the plaintiff motion for security for damages dismissed. The Court held that AIS had not met the lower threshold of showing that the claim was even arguable.

Prenbec Equipment Inc. v. Timberblade Inc., 2009 FC 584 — Mr. Guay represented Prenbec Equipment, the plaintiff in a saw tooth patent infringement case. In this interlocutory decision, the defendant failed to convince the Court that the proceedings had to be stayed pending the re-examination proceedings of the patent.

Shell Canada Ltd. v. P.T. Sari Incofood Corp., 2008 FCA 279 —Mr. Guay represented Shell Canada, the opponent against the registration of the trade-mark JAVACAFE for various foods and beverages. The decisions of the Trade-marks Opposition Board and the Federal Court were reversed by the Federal Court of Appeal. The trade-mark JAVACAFE was found to be descriptive considering that Java is an island well-known for its coffee.

MacLennan v. Gilbert Tech Inc., 2008 FCA 35 — Mr. Guay represented Mr. MacLennan and Quadco Equipment in this second appeal to the Federal Court of Appeal in a patent infringement action brought against Gilbert Tech. The Court found that the patent for a saw tooth and tooth holder was infringed by the customers who were replacing the plaintiff's teeth with the defendant's, thus remaking the patented invention and not repairing it. The Court also found that the defendant, by referring to the plaintiff's teeth in its price list, infringed the patent by inducement.

Microsoft Corp. v. Cerrelli, 2007 FC 1364 — Mr. Guay represented Microsoft, which was awarded half of its costs on an exceptional solicitor/client basis considering that the defendants’ conduct in the software counterfeiting action was tinted with bad faith.

MacLennan v. Gilbert Tech Inc., 2006 FCA 204 — Mr. Guay represented Mr. MacLennan and Quadco Equipment in this first appeal to the Federal Court of Appeal in a patent infringement action brought against Gilbert Tech. The Federal Court of Appeal held that the Trial Judge erred in applying the law on infringement by inducement and returned the matter to the Trial Judge.

Bauer Nike Hockey Inc. v. Tour Hockey, 2003 FCT 451 — Mr. Guay represented Bauer Nike Hockey, the plaintiff in a trade-mark infringement action. Bauer Nike Hockey was granted a summary judgment by the Court based on a settlement offer accepted by the defendant.

Excelled Sheepskin & Leather Coat Corp. v. YM Inc. (Sales), REJB 2002-27573, J.E. 2002-200 (Que. C.A.) (Nuss J.A.) — Mr. Guay represented YM Inc., which successfully had the Quebec Court of Appeal reverse the permanent injunction granted against them by the Superior Court in a copyright and passing-off action.

Diamant Toys Ltd. v. Jouets Bo-Jeux Toys Inc., 2002 FCT 384 — Mr. Guay represented Diamant Toys, the plaintiff in a copyright infringement action of drawings and photographs relating to a line of toy products. In this interlocutory decision, the plaintiff was successful in obtaining an order for seizure before judgment of the defendant’s products both in its possession and in the possession of third parties.

Sport Maska inc. c. Canstar Sports Group inc., EYB 1994-84516 (Que. C.S.) — Mr. Guay represented Canstar Sports Group, the defendant in an action brought by Sport Maska for passing off of its hockey helmets. Following a very thorough review of the law of passing off by the Quebec Superior Court, the defendant prevailed. 

2426-7536 Quebec Inc. v. Provigo Distribution Inc. (1992), 50 C.P.R. (3d) 539 (Que. S.C.) (Jasmin J.) — Mr. Guay represented 2426-7536 Quebec Inc., the plaintiff in this copyright infringement action. The plaintiff was successful in convincing the Quebec Superior Court that copyright subsisted in his pictograms and his plans for the interior and exterior of grocery stores, which were found to have been reproduced without his consent.

Martinray Industries Ltd. v. Fabricants National Dagendor Manufacturing Ltd. (1991), 41 C.P.R. (3d) 1 (F.C.) (Denault J.) — Mr. Guay represented Fabricants National Dagendor, the defendant in this folding doors patent infringement and validity action. The defendant successfully had the plaintiff’s claim of infringement dismissed and, in counterclaim, had the main claims of the patent invalidated for being broader than the disclosure, obviousness and for prior sale. 

Giffin v. Canstar Sports Group Inc. (1990), 29 C.P.R. (3d) 26 (F.C.) (Rouleau J.) — Mr. Guay represented Canstar Sports, the defendant in this skate boots patent infringement action. On a motion for interlocutory injunction, the plaintiff failed to demonstrate that there was a serious issue to be tried.

Marque d'or inc. c. Clayman, EYB 1988-77910 (Que. C.S.) (Gonthier J.) — Mr. Guay represented the plaintiffs in a complex unfair competition case. Direct solicitation of the employees of the plaintiffs by a former shareholder and director was found to amount to unfair competition.

Positron inc. c. Desroches, EYB 1988-77722 (C.S.) — Mr. Guay was involved in this case, which has become a leading authority in the Province of Quebec on the matter of trade secrets.

Memberships

• Fellow, Intellectual Property Institute of Canada; member of the Litigation Committee
• Member, International Trademark Association
• Member, International Association for the Protection of Intellectual Property (AIPPI)
• Member, European Communities Trade Mark Association
• Member, International League of Competition Law (LIDC)
• Member, Association des juristes pour le droit de la vigne et du vin
• Member, Canadian Bar Association

Speaking engagements

• "Les dommages en matière de brevets," Bureaux de l'ABC-Québec, Montreal, May 2012
• "La contrefaçon et ses impacts sur l'économie et les entreprises canadiennes" (co-presenter: Sanjay D. Goorachurn), Congrès annuel du Barreau du Québec, Montreal, May 2009
• "Recent Anti-Piracy Developments in Canada" (panel discussion moderated by Sanro Zlobec), joint Intellectual Property Institute of Canada and the New York State Bar Association summer meeting, Montreal, July 2008
• "Aspects commerciaux et litigieux de la PI reliés aux transactions de fusions et acquisitions et aux licences" (co-presenter: Sanjay D. Goorachurn), Congrès annuel du Barreau du Québec, Mont-Tremblant, QC, June 2007
• "Valoriser et commercialiser les actifs de propriété intellectuelle," Les contrats de cession, Canadian Institute, Montreal, April 2006
• "Aspects of the relationship between employer and employee in copyright : Canada," International Association for the Protection of Intellectual Property (AIPPI) 42nd World Congress, Paris, France, October 2010

Teaching activities

• "Mock Trial with Oral Testimony" (workshop participant), The Trade-marks Practitioner, IPIC-McGill Advanced Trade-marks Course, Montreal, August 2010

Publications

• "How do design and copyright interact?: Canada" (co-author: Ekaterina K. Tsimberis), Managing Intellectual Property, December 2012
• "Who owns copyright: employee or employer?" Intellectual Property Magazine, January 2011