Lorne Lipkus

Kestenberg Siegal Lipkus LLP
65 Granby Street
Toronto, ON Canada M5B 1H8

Tel: +1 416 597-0000
Fax: +1 416 597-6567
Email: llipkus@ksllaw.com

Lorne M. Lipkus

Partner

Practice Overview

Lorne M. Lipkus is a founding partner in the Toronto, Ontario, law firm of Kestenberg Siegal Lipkus LLP. He practices throughout Canada in the area of intellectual property litigation with a principle focus on anti-counterfeiting enforcement, including obtaining and serving Anton Piller Orders and assisting law enforcement in obtaining and executing criminal search warrants and dealing with all aspects of border enforcement.

Mr. Lipkus has attended and presented workshop demonstrations of the firms proprietary network anti-counterfeiting tracking and enforcement software program (N.A.T.E.) tracking information on the service of over 10,000 Anton Piller Orders, cease and desist letters, separate actions, investigations and law enforcement seizures across Canada. He is also actively involved in computer and Internet issues relating to anti-counterfeiting enforcement.

Training Sessions and Lectures

Mr. Lipkus coordinates and conducts training sessions, workshops and lectures across Canada dealing with anti-counterfeiting enforcement matters. He has done so on behalf of or in conjunction with:

The RCMP
Various regional and municipal police forces
Representatives of Canada Border Services Agency (CBSA)
Industry Canada
Canada Revenue Agency (CRA) and
private investigators

His training includes educating law enforcement about the impact of counterfeiting; particularizing ways in which to distinguish between authentic and counterfeit products; outlining techniques to assist law enforcement in obtaining criminal search warrants; and assisting law enforcement on behalf of brand owners in identifying and prosecuting criminal cases.

He has lectured on anti-counterfeiting matters at various educational meetings and conferences, including the:

ASIS International (American Society for Industrial Security)
Association of International Automobile Manufacturers of Canada (AIAMC)
Brand Protection Packaging Forum
Canadian American Law Enforcement Organization (CALEO)
Canadian Association of Importers and Exporters
Canadian Bar Association (CBA)
Canadian Standards Association (CSA)
C.O. Bick College
Conestoga College, Law and Security Administration Program
Criminal Intelligence Service Canada (CISC)
Food & Consumer Products Canada
International Association of Women Police (IAWP)
International Anti-Counterfeiting Coalition (IACC)
Electro Federation Canada (EFC)
Health Canada
Intellectual Property Institute of Canada (IPIC)
International Trademark Association (INTA)
Imaging Supplies Coalition (ISC)
National Association of Drug Diversion Investigators (NADDI)
North West Fraud Investigators Association
Ontario Ministry of Government Services
Operation Pipeline\Convoy;\Jetway
Pharmaceutical Sciences Group (PSG
Retail Council of Canada, and
The University of Guelph

Mr. Lipkus published an article entitled, “International Counterfeits: A Practical Primer on Anti-counterfeiting Enforcement in Canada”, (June 2006) 6 Can. Inter. Lawyer 201-209.

In addition to the lectures, publications and training sessions Mr. Lipkus conducts in the intellectual property area, he is a published author and lecturer on both franchise litigation and the execution of judgments. He has been qualified as an expert in the identification of counterfeit merchandise in several cases before the Federal Court of Canada.

Mr. Lipkus has been counsel in a number of Federal Court cases of significance to anti-counterfeiting enforcements on behalf of rights holders, including:

Gianni Versace S.p.A. v. 1154970 Ontario Ltd., 2003 F.C. 1015 [clarifying the legal and evidentiary bases to obtain Court Orders preserving infringing merchandise in actions where destruction or disposition of infringing merchandise is an issue]

Ragdoll Productions (UK) Limited et al v. Doe, [2003] 2 F.C. 120 (F.C.T.D.) [clarifying and validating awards of minimum compensatory damages for infringement of intellectual property rights in circumstances where the Defendants conduct their business in a manner that renders traditional damage and profit analysis unavailable]

Tejani v. Nintendo of America Inc. 2001 FCA [Federal Court of Appeal decision affirming decision that Charter of Rights and Freedoms is not applicable to the issuance and execution of Anton Piller Orders and affirming the use of “rolling” Anton Piller Order against fixed retail establishments]

Gianni Versace S.p.A. et al v. V. K. Design Inc. c.o.b. Laco Sac et al, unreported (Court File No. T-1575-01 - December 10, 2001) [application of principles of minimum compensatory damage awards for conduct pre-dating and post-dating notice of infringing conduct (i.e. ‘double damages’)]

Club Monaco Inc. v. Woody World Discounts Ltd. (1999) 2 C.P.R. (4th) 436 [examining the sufficiency of evidence and detailing the requirements to be contained in affidavits filed to obtain Anton Piller Orders]

Nike Can. Ltd v. Doe (1999) 174 F.T.R. 131 [reviewing the procedures required for execution of Anton Piller Orders]

Fila Can. Inc. v. Doe (1996) 3 F.C. [establishing the procedure to obtain and review the service of a rolling John Doe Anton Piller Order and establishing the first “model” Anton Piller Order]

Since at least the early 1990’s Mr. Lipkus has obtained over 8,000 judgments for over 100 Plaintiffs in counterfeiting\pirating cases in Canada. Many have resulted in significant recoveries for rights holders. He has also assisted law enforcement in Canada in several hundred criminal cases involving counterfeiting\pirating.

Memberships

Mr. Lipkus has been a member of the International Anti-Counterfeiting Coalition (IACC) since 1998 and is also a member of the Canadian Bar Association, International Trademark Association, Intellectual Property Institute of Canada (IPIC), the Law Society of Upper Canada and a founding member of the Canadian Anti-Counterfeiting Network (CACN).

Mr. Lipkus serves as Chair for the Counterfeiting and Trade Offenses Committee of the Canadian Bar Association as well as the Education and Training Committee of the Canadian Anti-Counterfeiting Network and the Education and Training Committee of the Canadian Intellectual Property Council.

Education

Mr. Lipkus received his Bachelor of Arts (Hons.) from Concordia University in 1975. He graduated from McGill University with a Bachelor of Civil Law in 1978 and a Bachelor of Laws in 1979, and was called to the Ontario Bar in 1981.

Media

Mr. Lipkus has been quoted extensively in most major daily print media in many cities in Canada in addition to being interviewed on all national Canadian television stations, many regional outlets and numerous radio stations. He has also been featured in the CBC “Venture”, CTV “W5” and RDI “Enquête” television shows.