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L.E. Trent Horne

Partner Admitted to the Ontario Bar: 1997
  • Certified Specialist (Intellectual Property: Patent, Trademark & Copyright), LSO
  • Registered Trademark Agent (Canada)

 

A trusted advisor and strategist, Trent Horne has been guiding clients to successful resolution of intellectual property disputes for 20 years.

Trent is a member of the firm's Intellectual Property and Litigation & Dispute Resolution Groups. He has been certified as a specialist in all areas of intellectual property by the Law Society of Ontario and has appeared as lead counsel in a wide range of intellectual property matters at the tribunal, trial and appellate level. 

He has particular expertise in patent litigation in a variety of technologies, ranging from genetically modified plants to manufacturing equipment. Trent is also a registered trademark agent in Canada and is involved in trademark prosecution, summary cancellation and opposition proceedings.

Trent is frequently asked to present on intellectual property and advocacy issues. He is a contributing author to two publications on Federal Court practice and procedure (Federal Courts of Canada Service and Canadian Federal Courts Practice) and is a regular contributor to the Supreme Court Law Review.

He is a member of the Federal Court Rules Committee, the Federal Court IP Users’ Group, the Intellectual Property Institute of Canada (serving as Chair of the Litigation Committee) and the Canadian Bar Association (serving on the Court Practice and Trademark Committees).

Awards & Recognition

  • Registered Trademark Agent (Canada)
  • Consistently recommended in The Canadian Legal Lexpert Directory in Intellectual Property and Litigation - Intellectual Property
  • Named in IAM Patent 1000: The World's Leading Patent Practitioners
  • Recognized in Managing Intellectual Property's IP STARS Handbook as a Patent Star - Canada and a Trademark Star - Canada
  • Recognized in Who's Who Legal: Patents and Who's Who Legal: Canada as a leading lawyer in the area of patents
  • Recognized among the top 1000 trademark professional in Litigation and Enforcement in WTR 1000: The World's Leading Trademark Professionals
  • Recognized in The Best Lawyers in Canada in the field of Intellectual Property Law
  • AV Peer Review Rating from LexisNexis Martindale-Hubbell

Representative Matters

Represented SanDisk Corporation in a trademark opposition brought against UC Mobile Co. Ltd. regarding the trademark SQUIRREL Design. SanDisk Corporation v. UC Mobile Co. Ltd. 2016 TMOB 148.

Represented the Intellectual Property Institute of Canada (IPIC), Canada's preeminent association of intellectual property professionals, as an intervener in the Federal Court of Appeal. The case involved a novel legal issue as to whether noncompliance with the Public Servants Inventions Act can be grounds to invalidate a patent. IPIC successfully argued that the validity of a patent can only be judged against what the Patent Act and Patent Rules require; an earlier order granting summary judgment was set aside in its entirety. Brown v Canada, 2016 FCA 37.

Represented Gary Gurmukh Sales Ltd. in connection with successful enforcement of trademark rights relating to souvenir merchandise. In addition to obtaining an injunction, order for delivery up, damages and costs, the respondent's claim that the trademarks were invalid was dismissed. Gary Gurmukh Sales Ltd. v. Quality Goods IMD Inc., 2014 FC 437.

Represented Research In Motion Limited (RIM) in successfully defeating an application for damages and an injunction relating to RIM's use of BBM in association with its BlackBerry Messenger service. All claims against RIM were dismissed, with costs. BBM Canada v. Research In Motion Limited, 2012 FC 666.

Represented CFM Corporation in a trial and appeal in connection with a patent directed to electric fireplaces. Dimplex North America Limited v. CFM Corporation, 2006 FC 586; 2007 FCA 278

Represented Advance/Newhouse Partnership and Bright House Networks, LLC in connection with an application to give effect to letters rogatory issued by the United States District Court for the Middle District of Florida. Advance/Newhouse Partnership and Bright House Networks, LLC v. Brighthouse Inc. (2005), 38 CPR (4th) 559

Represented Raydan Manufacturing Ltd. in successfully defending a patent infringement action related to truck suspensions. Emmanuel Simard & Fils (1983) Inc. v. Raydan Manufacturing Ltd., 2005 FC 973.

Selected Publications

Canadian Federal Courts Practice, LexisNexis, contributing author, 2007-present.

Federal Courts of Canada Service, LexisNexis, contributing author, 2007-present.

"Developments in Intellectual Property: The 2015-2016 Term," the Supreme Court Law Review, (2017) 77 S.C.L.R. (2d) 167, LexisNexis, author, 2017.

Education

  • LLB, Queen's University, 1995
  • BAS, Trent University, 1992