John McKeown smiling in a suit
John McKeown
Relevant Practices
Year of Call
Ontario, 1976

John McKeown

Counsel

One of Canada’s leading experts in Intellectual Property and Trademark law.

Useful Links

John McKeown focuses on providing advocacy and advice concerning intellectual property and related matters, including protecting trademarks, 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 (Trademarks/Copyright). Some of Canada’s largest marketers have relied on John’s advice.

John supervises obtaining, protecting and licensing trademarks and hundreds of successful trademark applications. He has been involved in many opposition proceedings before the Trademarks Opposition Board and actions for infringement.

John has particular expertise regarding actions relating to copyright.  He is the author of McKeown, Fox, on Canadian Law of Copyright and Industrial Designs (four binders in loose leaf format with quarterly installments). 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, (currently in its fifth edition) 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.

In Canadian Intellectual Property Law and Strategy: Trademarks, Copyright and Industrial Designs, John provides an overview of Canadian law relating to trademarks, copyright and industrial designs along with strategic commentary designed for legal practitioners outside Canada. An annual version of the book is published each year by LexisNexis.

John is currently the Chairman of the Canadian Bar Association Trademarks Committee. He has been heavily involved in the trademark reform process. He is also the Vice-Chair of the American Bar Association Trademarks & Internet Committee and Vice-Chair of the American Bar Association Standing International IP Task Force.

John McKeown is well versed in prosecution and enforcement matters and provides practical and sound advice. He is very exact in his opinions and extremely reliable. A true go-to trademark practitioner in Canada. – World Trade Review

Practice Areas

  • Intellectual Property
  • Advertising & Marketing
  • Competition
  • Litigation

Recognition

  • Selected by his peers for inclusion in the 2014 – 2022 editions of The Best Lawyers in Canada© in the field of Intellectual Property Law
  • Recognized by the World Trademark Review, a professional rating organization for many years as among the World’s leading trademark professionals
  • Recognized as a Trademark Specialist by The Lawyer Network, a leading referral service profiling over 350 law experts in 90 jurisdictions worldwide
  • Certified as a Specialist in Intellectual Property Law (Trademarks/Copyright)
  • Martindale-Hubbell, BV Distinguished™ rating
Relevant Practices
Litigation & Alternative Dispute Resolution
Intellectual Property
Year of Call
Ontario, 1976

Representative Legal Matters

  • Successfully represented Patterned Concrete Mississauga Inc. in a successful copyright infringement action (Patterned Concrete Mississauga Inc. v. Bowmanite Toronto Ltd.)
  • Successfully represented Goodwill Industries International, Inc. in a trademark opposition and prevented a third party from registering trademarks for various financial services which contained the word GOODWILL. (Goodwill Industries International Inc. v. Vedett IP Corporation)
  • 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 trademark expungement proceedings (Canadian Tire Corporation, Limited v. P.S. Partsource Inc.)
  • Successfully used survey evidence to overturn a decision of the Trademarks 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)

Publications, Presentation & Media Highlights

Publications

Presentations

  • Presenter – Durham College – “Brand Projection” – July 20, 2021
  • Moderator – live webcast – American Bar Association IPL Conference – “Knowledge and Strategies for a Post Brexit Portfolio: Trademarks, Registered Designs and GIs” – April 12, 2021
  • Presenter – live webcast – IPIC – “Copyright Infringement – Practical Strategies for Online Enforcement” – November 19, 2020
  • Panelist – Thomson Reuters – “Brands and the Internet” – August 11, 2020
  • Presenter and co-chair at a seminar and webcast – Osgoode Hall Continuing Legal Education – “Canada’s New Trademark Regime”  – April 30, 2019
  • Presenter – American Bar Association IPL Conference – “An Update of Canadian Trademark Law Reform”  – April 11, 2019
  • Presenter – live webcast – Intellectual Property Institute of Canada – “Copyright and Freedom of Expression” – May 7, 2018
  • Presenter – live webcast – the Knowledge Group – “The Hague Agreement and Design Filings: Recent Trends and Developments in 2018”  – March 20, 2018
  • Presenter – live webcast – the Knowledge Group – “Canadian Trademark and Copyright Cases 2016 and 2017” – February 27, 2018
  • Presenter – live webcast – the Knowledge Group – “Best Practices in Protecting Your Brand and The Fundamentals of Trademark Law: A 2017 Perspective” – June 21, 2017
  • Presenter – American Bar Association IPL Conference – “Not in My Backyard: Blocking Infringement at the Real and Virtual Border” – April 5, 2017
  • Presenter – live webcast – the Knowledge Group – “Trademark Registration and Use in Commerce: Things You Need to Know” – March 22, 2017
  • Presenter – live webcast – Carswell – “Brand Management and the New World of the Omni Channel Marketplace” – September 28, 2016
  • Presenter – live webcast – the Knowledge Group –  “Protecting Your Brand Against Cybersquatting: How Your Company Can Fight Back” – June 3, 2016
  • Presenter – live webcast – the Knowledge Group – “Protecting Fluid Trademarks: Best Practices Uncovered!”  – July 15, 2015
  • Panelist and Organizer-American Bar Association IPL Conference, “A Trademark Overhaul: Canadian Trademark Amendments and their Effect on U.S. Trademark Owners” – March 25, 2015
  • Presenter –  USPTO webcast, “USPTO Roundtable on Post Registration Proof of Use Pilot Results” – December 12, 2014
  • Presenter – Osgoode Hall Continuing Legal Education – “Trademark Amendments: What you Need to Know” – September 12, 2014
  • Presenter – live webcast – the Knowledge Group – “Effective Use of Surveys in Trademark Litigation in 2014” – August 21, 2014
  • Presenter – INTA Webcast – “Strategic Considerations and Practical Tips for Enforcing Trademarks on Social Media” – April 23, 2014
  • Presenter – Osgoode Hall Continuing Legal Education presentation – “Combatting Counterfeit Products – Understanding Bill C-8” –  April 9, 2014
  • Presenter – a Carswell Webinar Series with John Torella of J.C. Williams Group and Dr. Ruth Corbin of Corbin Partners Inc. – “How to Select and Protect a Great Brand Name” – October 3, 2013
  • Presenter – ABA Webinar: Trademark Fundamentals: Managing Your IP in a World of Social Media – September 12, 2013
  • Presenter – live webcast – the Knowledge Group – “Effective Use of Surveys in Trademark Litigation.” – August 6, 2013
  • Presenter and panelist – discussion with Andris Pone of Coin Branding Inc. and Dr. Ruth Corbin of Corbin Partners Inc., concerning “Selecting and Protecting a Great Brand Name.” – May 30, 2013
  • Moderator – 2013 International Trademark Association (INTA) Annual Meeting in Dallas, Texas – “Modernizing a Trademark: How to Deal with Issues Relating to Abandonment, Genuine Use and Deviating Use”  – May 8, 2013
  • Panelist – 28th ABA Annual Intellectual Property Law Conference – “Is that Domain Yours or Mine? Coping with the New Top Level Domain Names” – April 3, 2013
  • Presenter – Insight’s Copyright Law and Practice in Canada Now Conference – “The Arrival of Technical Protection Measures” – December 3 & 4, 2012
  • Presenter – IT.CAN Public Affairs Forum – “The Copyright Modernization Act” – October 17, 2012
  • Presenter – Toronto Computer Lawyers’ Group – “The Copyright Modernization Act” – September 25, 2012
  • Presenter – ABA Section of International Law – “How the New Anti-Counterfeiting Trade-Agreement Affects Your Practice or Business” – Chicago, August 3, 2012
  • Chairperson – Osgoode Hall Law School Professional Development – “Understanding Bill C-11: The Copyright Modernization Act” – June 5, 2012
  • Chairperson – Osgoode Hall Law School Professional Development – The Legal and Practical Guide to Protecting Your Brand on the Web and in Social Media & presenter – “Brand Management and the Internet: An Overview” & “New Generic Top Level Domain Names and Their Implementation” – September 26, 2012
  • Panelist – American Bar Association’s 26th Annual Intellectual Property Law Conference – “The New gTLDs: What Trademark Owners and Their Attorneys Need to Know” – Arlington, Virginia – April 8, 2011

Reports and Articles

  • False or Misleading Statements that Discredit a Competitor
  • Distinctiveness and Infringement
  • Bad Faith Trademark Applications
  • Linking and Copyright Infringement
  • Drafting Industrial Designs
  • Who is the Author of a Computer Program?
  • Blurred Lines
  • More Confusion Concerning Stripes
  • De Minimis Sampling and Copyright
  • No Copyright in Facts
  • Copies of these articles and many others are available at my blog located at https://www.johnmckeownblog.com/blog

Professional Associations & Memberships

  • American Bar Association
  • Canadian Bar Association
  • Intellectual Property Institute of Canada
  • International Trademark Association
  • Ontario Bar Association
  • Toronto Lawyers Association

Podcasts

  • LexisNexis Podcast on Generic Top-Level Domains

Community Involvement

Education

  • 1974 – University of Toronto (LL.B.)
  • 1971 – Queen’s University (B.Comm.)

Other

Personal Interests

Golf and tennis.

  • Successfully represented Patterned Concrete Mississauga Inc. in a successful copyright infringement action (Patterned Concrete Mississauga Inc. v. Bowmanite Toronto Ltd.)
  • Successfully represented Goodwill Industries International, Inc. in a trademark opposition and prevented a third party from registering trademarks for various financial services which contained the word GOODWILL. (Goodwill Industries International Inc. v. Vedett IP Corporation)
  • 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 trademark expungement proceedings (Canadian Tire Corporation, Limited v. P.S. Partsource Inc.)
  • Successfully used survey evidence to overturn a decision of the Trademarks 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)

Publications

Presentations

  • Presenter – Durham College – “Brand Projection” – July 20, 2021
  • Moderator – live webcast – American Bar Association IPL Conference – “Knowledge and Strategies for a Post Brexit Portfolio: Trademarks, Registered Designs and GIs” – April 12, 2021
  • Presenter – live webcast – IPIC – “Copyright Infringement – Practical Strategies for Online Enforcement” – November 19, 2020
  • Panelist – Thomson Reuters – “Brands and the Internet” – August 11, 2020
  • Presenter and co-chair at a seminar and webcast – Osgoode Hall Continuing Legal Education – “Canada’s New Trademark Regime”  – April 30, 2019
  • Presenter – American Bar Association IPL Conference – “An Update of Canadian Trademark Law Reform”  – April 11, 2019
  • Presenter – live webcast – Intellectual Property Institute of Canada – “Copyright and Freedom of Expression” – May 7, 2018
  • Presenter – live webcast – the Knowledge Group – “The Hague Agreement and Design Filings: Recent Trends and Developments in 2018”  – March 20, 2018
  • Presenter – live webcast – the Knowledge Group – “Canadian Trademark and Copyright Cases 2016 and 2017” – February 27, 2018
  • Presenter – live webcast – the Knowledge Group – “Best Practices in Protecting Your Brand and The Fundamentals of Trademark Law: A 2017 Perspective” – June 21, 2017
  • Presenter – American Bar Association IPL Conference – “Not in My Backyard: Blocking Infringement at the Real and Virtual Border” – April 5, 2017
  • Presenter – live webcast – the Knowledge Group – “Trademark Registration and Use in Commerce: Things You Need to Know” – March 22, 2017
  • Presenter – live webcast – Carswell – “Brand Management and the New World of the Omni Channel Marketplace” – September 28, 2016
  • Presenter – live webcast – the Knowledge Group –  “Protecting Your Brand Against Cybersquatting: How Your Company Can Fight Back” – June 3, 2016
  • Presenter – live webcast – the Knowledge Group – “Protecting Fluid Trademarks: Best Practices Uncovered!”  – July 15, 2015
  • Panelist and Organizer-American Bar Association IPL Conference, “A Trademark Overhaul: Canadian Trademark Amendments and their Effect on U.S. Trademark Owners” – March 25, 2015
  • Presenter –  USPTO webcast, “USPTO Roundtable on Post Registration Proof of Use Pilot Results” – December 12, 2014
  • Presenter – Osgoode Hall Continuing Legal Education – “Trademark Amendments: What you Need to Know” – September 12, 2014
  • Presenter – live webcast – the Knowledge Group – “Effective Use of Surveys in Trademark Litigation in 2014” – August 21, 2014
  • Presenter – INTA Webcast – “Strategic Considerations and Practical Tips for Enforcing Trademarks on Social Media” – April 23, 2014
  • Presenter – Osgoode Hall Continuing Legal Education presentation – “Combatting Counterfeit Products – Understanding Bill C-8” –  April 9, 2014
  • Presenter – a Carswell Webinar Series with John Torella of J.C. Williams Group and Dr. Ruth Corbin of Corbin Partners Inc. – “How to Select and Protect a Great Brand Name” – October 3, 2013
  • Presenter – ABA Webinar: Trademark Fundamentals: Managing Your IP in a World of Social Media – September 12, 2013
  • Presenter – live webcast – the Knowledge Group – “Effective Use of Surveys in Trademark Litigation.” – August 6, 2013
  • Presenter and panelist – discussion with Andris Pone of Coin Branding Inc. and Dr. Ruth Corbin of Corbin Partners Inc., concerning “Selecting and Protecting a Great Brand Name.” – May 30, 2013
  • Moderator – 2013 International Trademark Association (INTA) Annual Meeting in Dallas, Texas – “Modernizing a Trademark: How to Deal with Issues Relating to Abandonment, Genuine Use and Deviating Use”  – May 8, 2013
  • Panelist – 28th ABA Annual Intellectual Property Law Conference – “Is that Domain Yours or Mine? Coping with the New Top Level Domain Names” – April 3, 2013
  • Presenter – Insight’s Copyright Law and Practice in Canada Now Conference – “The Arrival of Technical Protection Measures” – December 3 & 4, 2012
  • Presenter – IT.CAN Public Affairs Forum – “The Copyright Modernization Act” – October 17, 2012
  • Presenter – Toronto Computer Lawyers’ Group – “The Copyright Modernization Act” – September 25, 2012
  • Presenter – ABA Section of International Law – “How the New Anti-Counterfeiting Trade-Agreement Affects Your Practice or Business” – Chicago, August 3, 2012
  • Chairperson – Osgoode Hall Law School Professional Development – “Understanding Bill C-11: The Copyright Modernization Act” – June 5, 2012
  • Chairperson – Osgoode Hall Law School Professional Development – The Legal and Practical Guide to Protecting Your Brand on the Web and in Social Media & presenter – “Brand Management and the Internet: An Overview” & “New Generic Top Level Domain Names and Their Implementation” – September 26, 2012
  • Panelist – American Bar Association’s 26th Annual Intellectual Property Law Conference – “The New gTLDs: What Trademark Owners and Their Attorneys Need to Know” – Arlington, Virginia – April 8, 2011

Reports and Articles

  • False or Misleading Statements that Discredit a Competitor
  • Distinctiveness and Infringement
  • Bad Faith Trademark Applications
  • Linking and Copyright Infringement
  • Drafting Industrial Designs
  • Who is the Author of a Computer Program?
  • Blurred Lines
  • More Confusion Concerning Stripes
  • De Minimis Sampling and Copyright
  • No Copyright in Facts
  • Copies of these articles and many others are available at my blog located at https://www.johnmckeownblog.com/blog
  • American Bar Association
  • Canadian Bar Association
  • Intellectual Property Institute of Canada
  • International Trademark Association
  • Ontario Bar Association
  • Toronto Lawyers Association

Podcasts

  • LexisNexis Podcast on Generic Top-Level Domains
  • 1974 – University of Toronto (LL.B.)
  • 1971 – Queen’s University (B.Comm.)

Personal Interests

Golf and tennis.

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