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Scott Miller

Co-managing Partner, Certified Specialist (IP)

Scott Miller is a co-managing partner at MBM and Chair of the Litigation Department. He is also certified as a specialist in all areas of Canadian Intellectual Property Law (Patent/Trademark/Copyright) by the Law Society of Ontario. In addition, Scott has recently been nominated and selected for "Who's Who Legal: Sports & Entertainment 2019", as one of the leading practitioners in this field.

Scott’s driven business approach to resolving disputes includes a no-nonsense style that is dictated by enormous energy and passion. This approach has resulted in countless successfully negotiated settlements, as well as a proven track record of litigating cases before all levels of Court, including the Supreme Court of Canada and the Federal Court of Appeal.

Scott has over 25 years of IP litigation experience ranging from trademarks, patents, copyright and industrial designs to NOCs, anti-counterfeiting, domain names and trade secrets. He appreciates that IP acquisition, IP utilization and litigation are business tools that can be used as a sword or a shield depending on the client’s business strategy. Armed with this understanding and his extensive experience, Scott works closely with his clients to develop and implement strategies that meet their business needs. Scott’s clients include many multinational companies in the fields of health and personal care products, cosmetics, sports, clothing, restaurants, optics, medical devices, telecommunications, transportation and alcoholic beverages.

Scott is a regular guest speaker for a variety of professional associations, local universities and colleges. He is an avid sports enthusiast with over 15 years of experience coaching hockey. His motto is equally applicable around the hockey rink as it is in the practice of law: “Don’t be afraid to go into the corners”.

Speaking Engagements

November 21, 2023 (Calgary) - University of Alberta Law - "Developing IP Strategy"

November 9, 2023 (Ottawa) - Algonquin College - Graphic Design Program - "The Business of Design"

April 1, 2019 (Ottawa) - IPIC Trademark Case Law Series: Official Marks and False and Misleading Statements (co-presenter)

March 26, 2019 (Ottawa/Toronto) - Everything you need to know about Intellectual Property (Canadian Manufacturers & Exporters Association webinar)

December 6, 2018 (Ottawa) - CBC Radio - All in a Day interview, discussing Kenya's national dissatisfaction with Disney's trademark, HAKUNA MATATA. Kenyans don't believe a company should be allowed to trademark a national phrase.

January 19, 2018 (Ottawa) - 22nd Annual Intellectual Property Law: The Year in Review

June 13, 2017 (Toronto): Big Data = Big Ownership, models for addressing proprietary issues (Heavy Equipment Autonomous Vehicle Initiative Conference)

May 26, 2017 (Montebello): Corporate Transfer of an Internet Business (23^rd Annual East Region Solicitors Conference)

May 22, 2017 (Barcelona): Counterfeit Goods & Parallel Imports in Canada (INTA)

May 8, 2017 (Ottawa): Following the Signs: New Directions in Trademark Law Panel: The Expanding Scope of Trademark Protection – “When is Offensive, Too Offensive” (University Of Ottawa, Faculty of Law)

November 8, 2016 (Ottawa): Photography Copyright Presentation (Camera Club of Ottawa)

Recent case Accomplishments:

• Scott recently set precedent in the interpretation of Section 10, Prohibited Marks, under the Trade-Marks Act. Scott had a composite mark, one which contained both a design component and a word component, expunged on the basis that the word portion of the mark was dominant and clearly descriptive of the services offered. Further, the word portion of the composite mark was sufficiently dominant that the composite mark has become recognized in Canada as designating the kind of service with which it is associated, in contravention of Section 10 of the Trade-Marks Act. As a result, the owner of the composite mark was enjoined from using the entire mark.

• Before the Federal Court and confirmed by the Federal Court of Appeal, Scott recently won a significant s.45 of the Trade-marks Act case which overturned a decision of the Trade-mark Office which would have struck the COHIBA trademark for non-use. At issue was the description of wares which included “manufactured tobacco for smoking” and whether control under a license cannot be established if the terms of license provide for control over the character and quality of the wares in issue by the licensee. Scott was able to demonstrate that for s.45 proceedings, a general description of wares which includes the specific (cigars) ware is an appropriate description of wares. Moreover, the FC and FCA confirmed that actual control in fact is sufficient irrespective of the terms of a licence.

• Scott has appeared before the Supreme Court of Canada and has assisted the Court to define the tests for confusion under the Trade-marks Act and determine the relevant dates to assess confusion.

• Scott successfully had the Federal Court set aside a decision of the Commissioner of Patents to irrevocably lapse a patent. As a result of Scott’s success, the Commissioner of Patents, when deciding to exercise discretion, will be forced to consider how a patent applicant will be affected by a decision.

• Scott stopped the infringing use of the “Boogity! Boogity! Boogity!’” trade-mark and was featured in MACLEAN’S, Canada’s national news magazine.

• In a generic domain name case, Scott defeated an interlocutory injunction motion and clarified the law relating to proving irreparable harm regardless of the existence of an irreparable harm clause in a contract. Moreover, Scott successfully argued that passing off cannot occur where a statute authorizes the use of particular words in question.

• On appeal, Scott’s arguments led the court to confirm that utility and functionality are defences to alleged infringement of a registered industrial design. Moreover, the court agreed with Scott that today’s commercial reality demands that multi-national companies in discovery must obtain and produce documents from related third parties that are not party to the litigation.

• Through a land mark decision, Scott caused the Canadian Trade-marks Office to amend their practice to recognize the importance of sound as a criterion for assessing clearly descriptiveness of a trade-mark. In assessing entitlement to a descriptive design trade-mark, attention now turns to whether the sound of the word elements constitutes the dominant feature of the mark. If so, the design trade-mark is likely invalid.

Education

• B.A., Economics, McGill University
• LL.B., (began at University of Alberta, final year at McGill University)

Professional Involvement

• American Bar Association (ABA)

• American Intellectual Property Law Association (AIPLA)

• Canadian Bar Association (CBA)

• International Trademark Association (INTA)

• International Anti-Counterfeiting Coalition (IACC)

• Pharmaceutical Trade Marks Group (PTMG)

• Licensing Executive Society (LES)

• Intellectual Property Owners Association (IPO)

• Association of Intellectual Property Firms (AIPF)

• Law Society of Ontario

• Contributor to The Conference Board of Canada – Intellectual Property in the 21st Century