My Background and Focus

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 2024” 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 the Court, including the Supreme Court of Canada and the Federal Court of Appeal.

Scott has over 30 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 20, 2024 (Ottawa): Algonquin College (Business and Graphic Design Program) – “IP 101”
• August 9, 2024 (Cincinnati, OH): Wood Herron & Evans LLP –  “IP Implications of French Language Laws”
• November 21, 2023 (Calgary): University of Alberta Law – “Developing an IP Strategy”
• November 9, 2023 (Ottawa): Algonquin College (Business and 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): Canadian Manufacturers & Exporters Association – “Everything you need to know about Intellectual Property” (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): Heavy Equipment Autonomous Vehicle Initiative Conference – “Big Data = Big Ownership, models for addressing proprietary issues.”
• May 26, 2017 (Montebello): 23^rd Annual East Region Solicitors Conference – “Corporate Transfer of an Internet Business”
• May 22, 2017 (Barcelona): INTA – “Counterfeit Goods & Parallel Imports in Canada”
• May 8, 2017 (Ottawa): University Of Ottawa, Faculty of Law – “New Directions in Trademark Law Panel: The Expanding Scope of Trademark Protection – When is Offensive, Too Offensive”
• November 8, 2016 (Ottawa): Camera Club of Ottawa – “Photography and Copyright Protection”

Litigation Accomplishments

• Scott recently set a precedent in the interpretation of Section 10, Prohibited Marks, under the Trademarks 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 Trademarks 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 Trademarks Act case, which overturned a decision of the Trademark Office that 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 the 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 in defining the tests for confusion under the Trademarks Act and determining 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!’” trademark 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 multinational companies in discovery must obtain and produce documents from related third parties that are not party to the litigation.
• Through a landmark decision, Scott caused the Canadian Trademarks Office to amend their practice to recognize the importance of sound as a criterion for assessing the clear descriptiveness of a trademark. In assessing entitlement to a descriptive design trademark, attention now turns to whether the sound of the word elements constitutes the dominant feature of the mark. If so, the design trademark is likely invalid.