Gordon J. Zimmerman  

Partner

Executive Summary

Gordon Zimmerman is a Partner and former Regional Leader of BLG’s Intellectual Property Group. He focuses exclusively on intellectual property, including patents, trademarks, copyright, industrial designs, trade secrets and confidential information, and related litigation. Registered as a trademark agent and patent agent, Gordon is certified by the Law Society of Upper Canada as a Specialist in Intellectual Property Law (Patents, Trademarks, Copyright).

Gordon has prepared and presented evidence and testimony in complex litigation, including factual and expert evidence in science, engineering, marketing and accounting. He also handles trademark and patent applications, licensing, due diligence investigations, security interests and other non-litigious issues.

He has appeared as counsel in the Federal Court of Canada (at trial and on appeal), High Court of Ontario (at trial and on appeal) and on applications for leave to appeal to the Supreme Court of Canada in cases involving patents, trademarks, industrial designs, copyright, passing off, trade secrets, confidential information, wrongful termination of distributorship agreements, conspiracy, breach of contract, breach of fiduciary duty and related matters.

His pre-law work experience concentrated on pulp and paper, industrial chemicals, atomic energy, vacuum molecular beam studies and peptide analysis. He speaks English, French, Italian, and some German and Spanish.

Representative Work

  • Cochlear Corp. v. Cosem Neurostim – obtained trial judgment holding plaintiff's patent valid and infringed (quia timet) (with respect to inner ear prosthesis to give hearing to totally deaf users).
  • Mackenzie Financial ats Ethical Funds Inc. – resisted interlocutory injunction based on alleged trademark infringement respecting use of word ETHICAL in association with mutual fund.
  • Canada Trust ats TD Bank – successfully defended Canada Trust in a highly publicized Federal Court trademark infringement action respecting use of the word and colour GREEN.
  • CTV v. CAPAC – obtained an order prohibiting Copyright Board and CAPAC/PROCAN (now SOCAN) from proceeding with "'network"' tariff in Federal Court proceedings. Leave to appeal to Supreme Court of Canada denied.
  • AlphaNet Telecom v. Delrina – obtained injunction preventing Delrina from misusing trade secrets and confidential information of AlphaNet in Ontario Court, General Division, Commercial Court list, in highly publicized case. Action settled following interlocutory injunction.
  • Movenpick et al. v. E.A.T. at Le Marché Inc. – obtained injunction prohibiting competing restaurant from using trademark MARCHÉ.

Publications & Presentations

  • Author, “Trademark Use,” IP Benchbook for Federal Court Judges, 2010-present.
  • Author, “Enforcing Judgments,” Intellectual Property Disputes: Resolutions and Remedies, Carswell, 2005-present.
  • Contributor, regular case comments, World Trademark Law Review (electronic journal).
  • Author and Speaker, “'Due Diligence in IP Licensing” and “International Aspects of IP Licensing,” Proceedings of the Federated Press Conference entitled “Intellectual Property Licensing,” May 30-31, 2005.
  • Author/Speaker, “Extending the Monopoly: Overlapping Intellectual Property Protection,” Proceedings of IPIC Annual Meeting, September 2000.
  • Author/ Speaker, “Understanding The Essentials of Contract Law For Intellectual Property Agreements,” Proceedings of the Infonex Conference entitled “Intellectual Property Issues for Business Agreements: A Practical Course,” April 28-29, 1997.
  • Author/ Speaker, “An Overview of Canadian Law relating to Security Interests and Intellectual Property,” Proceedings of the Canadian Bar Association  CLE Conference entitled “Changes Affecting Intellectual Property in Canada: A North American Perspective,” March 1994.
  • Author/Speaker, “Trade Secrets: Leak Prevention and Damage Control,” Proceedings of The Canadian Institute Seminar entitled “Patents – The Complete Course,” February 1992.
  • Author/Speaker, “Canadian Intellectual Property Issues for the U.S. Practising Lawyer,” Proceedings of the New York State Bar Association conference entitled “International Aspects of Intellectual Property Law,” February 1991.
  • Author/Speaker, “Representations, Warranties and Conditions in Transactions Involving Intellectual Property,” Proceedings of the Canadian Bar Association Ontario Annual Institute, January 1991.
  • Author, “An Expert Patent Court for Canada?,” Canadian Intellectual Property Review, 1987, 3: 444.
  • Author, “Synergy and the Science Court: Scientific Method and the Adversarial System in Technology Assessment,” University of Toronto Faculty of Law Review, 1980, 38: 170.
  • Author, “Exemplary Damages and Copyright in Canada,” (1980) 57 CPR (2d) 65.

Rankings & Recognitions

  • Recognized in the 2017 edition (and since 2015) of World Trademark Review's (WTR) 1000 — The World's Leading Trademark Professionals (Prosecution and Strategy; Enforcement and Litigation).
  • Recognized in the 2018 edition (and since 2016) of Chambers Canada — Canada's Leading Lawyers for Business (Intellectual Property).
  • Selected by peers for inclusion in the 2018 edition (and since 2008) of The Best Lawyers in Canada® (Intellectual Property Law).
  • Recognized in the 2016 and 2015 editions of the Legal 500 Canada (Intellectual Property).
  • Recognized in the 2016 edition (and since 2013) of Chambers Global — The World's Leading Lawyers for Business (Intellectual Property).
  • ​Recognized in the 2016 edition (and since 2013) of The Canadian Legal Lexpert Directory (Intellectual Property).
  • Recognized in the 2016 edition (and since 2012) of Who's Who Legal: Canada (Trademarks).
  • Recognized in the 2016 edition of Who's Who Legal: The International Who's Who of Business Lawyers (Trademarks).
  • Recognized in the 2014 edition of Managing IP Handbook (Patent, Trademark).
  • Martindale-Hubbell® AV® Preeminent 5 out of 5 Peer Review Rated.