Mark Edward Davis Mark Davis is a litigator who focuses on intellectual property matters. He has significant experience in patent litigation, including proceedings under the Patented Medicines (Notice of Compliance) Regulations, as well as in trade-mark, confidential information, and copyright disputes, particularly those relating to the Internet. Approaching all of his mandates with creativity and determination, Mark works closely with his clients to effectively secure, rapidly enforce and profitably capitalize on their intellectual property rights. Mark also represents clients in a wide variety of commercial litigation mandates.
In 2007, Mark, along with his colleagues Jon Stainsby and Bill Mayo, received international recognition from Managing Intellectual Property magazine for their work on Sanofi-Aventis Inc. v. Novopharm Ltd., 2007 FCA 163, the Canadian IP Case of the Year. That decision established that it was an abuse of process for a brand pharmaceutical company to attempt to re-litigate issues of patent validity under the Patented Medicines (Notice of Compliance) Regulations in an effort to keep generic products off the market in Canada. In a companion case, Novopharm Ltd. v. Sanofi-Aventis Canada Inc., 2007 FCA 167, Mark successfully argued before the Federal Court of Appeal that it was also an abuse of process for a brand pharmaceutical company to pursue litigation in an attempt to delay generic market entry based only on the hope that evidence of infringement might emerge through cross-examination. The combined effect of these two decisions reduced the number of procedural hurdles facing generic pharmaceutical companies in Canada.
Mark also successfully challenged the prevailing interpretation of section 7 of the Canada Evidence Act in Altana Pharma Inc. v. Novopharm Ltd., 2007 FC 1095. Based on Mark’s presentation of careful research and argument, the Court reversed previous authority and found that there is a presumptive limit on the number of experts that a party is allowed to bring forward in support of its case. This decision has had a profound effect on pharmaceutical patent litigation in Canada.
As a registered trade-mark agent, Mark assists clients with registering, maintaining and protecting their trade-mark rights in Canada. Mark has also regularly acted for clients to stop on-line infringement and has recovered numerous domain names for his clients.
For several years, Mark served as an adjunct professor at the University of Victoria, where, as part of the Internet and Information Technology Law course, he lectured on consumer protection in E-commerce, jurisdiction on the Internet, Internet-related aspects of trade-mark and copyright law, data and database protection, and domain name disputes.
Mark is Co-Chair of the Intellectual Property Institute of Canada’s Domain Names and Trade-marks on the Internet Committee. Mark is also a member of the American Bar Association’s Special Committees on On-line Trade-mark Issues and Copyright and New Technologies.
Mark is the Chair of Heenan Blaikie’s Toronto Associate Committee, and is co-editor of our quarterly intellectual property law newsletter, the IP Advocate. Education
LL.B., University of Victoria, 1999 B.A. (Honours), University of Western Ontario, 1993 Professional Affiliations
Advocates' Society American Bar Association Canadian Bar Association Intellectual Property Institute of Canada The Law Society of Upper Canada (Ontario) Toronto Computer Lawyers' Group Representative Work
Sanofi-Aventis Canada Inc. v. Novopharm 2009 FC 676
Apotex Inc. v. Ivax Pharmaceuticals S.R.O. 2007 ONCA 549
Altana Pharma Inc. v. Canada (Health) 2007 FC 1095
Altana Pharma Inc. v. Novopharm Limited 2007 FC 637
Novopharm Limited v. Sanofi-Aventis Canada Inc. 2007 FCA 167
Sanofi-Aventis v. Novopharm Limited 2007 FCA 163
Sanofi-Aventis Canada Inc. v. Canada (Health) 2007 FC 213
Pfizer Canada Inc. v. Canada (Minister of Health) 2006 FC 937
Sanofi-Aventis Canada Inc. v. Canada (Health) 2007 FC 124
Pfizer Canada Inc. v. Canada (Minister of Health) 2006 FC 1471
John Stagliano Inc. et al. v. Alain Elmaleh et al. 2006 FC 585
Purdue Pharma v. Novopharm Limited et al. 2006 FC 385
Sadhu Singh Hamdard Trust v. Canada (Registrar of Trade-marks) 2006 FC 171
Cameron v. Smith Lyons, [2005] O.J. No. 1245 (Ont. S.C.J.)
Johnson & Johnson Inc. et al. v. Arterial Vascular Engineering Canada Inc. et al. 2003 FCT 659 (F.C.T.D.)
Biogen, Inc. v. XCalibur Communications (2002), 22 C.P.R. (4th) 239 (CIRA Domain Name Dispute)
Browne & Co. Ltd. v. Bluebird Industries (2002), 22 C.P.R. (4th) 208 (CIRA Domain Name Dispute)
Publications and Conferences Canada, U.K. differ over obviousness test, The Lawyers Weekly, March 13, 2009. Unsolicited Offers to Register Domain Names in Foreign Jurisdictions Should be Approached with Caution, IPIC Bulletin May/June 2008. When the Competition Rips Off Your Idea … Who Do You Go To?, Forum for International Trade Training – National Conference, 2008, Speaker, June 2, 2008, Ottawa, Ontario. “Copyright Issues: What do You Own and What are You Giving Away?”, Brock University, March 2008, St. Catherines, Ontario. Copyright Law and Computer Programs – Authorship, Ownership, Protection and Exploitation, Ontario Partnership for Innovation and Commercialization. Protecting your Brand, Knowledge & Materials: Understanding Intellectual Property Law, Volunteer Lawyers Services and the United Way of Greater Toronto. Copyright Law - What are your rights and what are you giving away?, Laurentian University, Nipissing University and OPIC. Intellectual property owners’ rights limited in favour of users: Kraft, The Lawyer’s Weekly, September 14, 2007. Davis, Mark Edward, Re-Evaluating the Test For Obviousness – Anything but Obvious or at Least “Obvious to Try”, Intellectual Property, 2007 Volume 13, No. 3. Insight Conference - 4th Annual Commercial and Civil Litigation Series, Beginning with the End in Mind: Planning to Win, June 13, 2007. Foreign Injunctions Can Be Enforced in Canada, International Trademark Association Bulletin, February 1, 2007, Vol. 62, No. 3. Pro-Swing v. Elta Golf – A Cautious Approach to a Compelling Change, The Lawyer Weekly, January 19, 2007. Case Summary: Cross-Canada Auto Body v. Hyundai Auto Canada, IPIC Bulletin, Vol. 276 - March/April 2006. Supreme Court hears Lego Appeal, World Trade-mark Law Report, March 17, 2005. (co-author) Animal welfare protestors allowed to keep covancecampaign.com, World Trade-mark Law Report, July 2, 2004. (Co-author) CIRA Panel Re-Writes the Rules, World Trade-mark Law Report, April 15, 2004. (Co-author) The Question of Use on the Internet in Canada, INTA Bulletin, Vo. 59, No.7, April 1, 2004. (Co-author) Canadian government wins case against .ca cybersquatter, World Trade-mark Law Report, World eBusiness Law Report, July 31, 2003. (Co-author) CIRA Dispute Resolution Decisions Clarify "Bad Faith" Requirement, The Lawyers Weekly, May 23, 2003. CDRP Bad Faith Test Wider Than First Thought, World eBusiness Law Report, World Trade-mark Law Report, May 12, 2003. (Co-author) Beer Battle Shows Importance of Registering Trademarks, The Lawyers Weekly, November 29, 2002. Decision Clarifies Law on Anticipation by Prior Sale, The Lawyers Weekly, September 20, 2002. Trade-mark Law on the Internet, The Trade-marks Practitioner - An Advanced Course, McGill, Montreal, August 19 - 24, 2002. (co-author) Trade-mark Law on the Internet, Third Annual Internet Law Conference, Insight, Toronto, May 20 and 29, 2002. (co-author) Compensation Issues in IP Licensing, Federated Press - Negotiating and Licensing Agreements, April 24, 25 and 26, 2002. (co-author) Canada Contemplates Copyright Changes, The Interlawyer, Vol. 13, No. 2 - April/May/June 2002. (Co-author) Canada contemplates copyright changes, Broadcaster: Canada’s Communications Magazine, April 2002. (Co-author) Whose invention is it anyway? Front Lines, globetechnology.com., March 22, 2002. (Co-author) Copyright and What it Means for Municipalities, Municipal World, spring 2002. (Co-author) New Rules for Software Licensing? Front Lines, globetechnology.com., February 8, 2002. (Co-author) E-Copyright Infringement, Front Lines, globetechnology.com, August 31, 2001. (Co-author) Trade-marks and the Internet, IPIC-McGill Trade-marks Course II, Montreal, August 21, 2001. (co-author) Patents on Bay Street, Front Lines, globetechnology.com., July 18, 2001. (Co-author) Copyright and Your Municipality, 63rd Annual Meeting Association of Municipal Managers, Clerks and Treasurers of Ontario, June 19, 2001. (co-author) Intellectual Property Issues in an IT Context, CBAO - Advising Information Technology Businesses, June 9, 2001. (Co-author)
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