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Kenneth Hanna

Partner* - Lawyer, Senior Litigator, Trademark Agent

Tel: 416-865-3504
Email: khanna@ridoutmaybee.com
Office: Toronto
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Kenneth D. Hanna is the senior litigation partner with the firm of Ridout & Maybee LLP and is located in the firm’s Toronto office. Ken’s practice is principally directed towards intellectual property (“IP”) litigation where he has appeared as lead counsel and acted for clients from around the world on various patent, trademark, copyright, industrial design and trade secret matters before the Federal Court of Canada, the Federal Court of Appeal, the Ontario Superior Court of Justice and the Ontario Divisional Court.

Ken has successfully represented firm clients and acted as a barrister on third party actions across a wide spectrum of technologies in the IP arena, as well as working extensively with foreign counsel on cross-border proceedings. Ken has also acted as an Independent Supervising Solicitor on counterfeit merchandising matters and routinely uses his experience and expertise to assist clients with business venture development, planning and actualization in addition to the protection and enforcement of IP rights.

Since the introduction of the Marihuana for Medical Purposes Regulations in 2013 (superseded by the Access to Cannabis for Medical Purposes Regulations and the 2018 Cannabis Act & Regulations), Ken has assisted several clients in successfully navigating regulatory requirements to becoming licensed cultivators and processors of medical cannabis.

Ken has B.A.’s from the University of Lethbridge and the University of Calgary, as well an LL.B from the University of Windsor and is a registered trade mark agent. He is also a member of both the Law Society of Ontario and the Law Society of Alberta.

From 2013 through to the end of 2019, Ken was a member of the firm’s Executive Committee which has been tasked with the preparation and fulfillment of the firm’s strategic plan and day-to-day operations including but not limited to improving work flow, IT stability, revenue growth and overall profitability of the firm.

Notwithstanding his busy practice and firm management duties, Ken also acts as an articling principle training new lawyers, mentors law students through job shadows and the Fox IP Moot competitions, guest lectures, is a member of the American Bar Association, is a Fellow of the American Bar Foundation and acts as a technical advisor to third party board of directors.

Ken’s favorite endeavours outside of work are spending time with his son and wife, travelling and underwater photography while scuba diving…from which Ken has shared far too many close up pictures of sharks…and not the ones in the courtroom.

*Kenneth Hanna Professional Corporation
  • B.A. (Political Science, Linguistics), University of Lethbridge (1991)
  • B.A. (Psychology, Anthropology), University of Calgary (1994)
  • LL.B., University of Windsor (1998)
  • Barrister & Solicitor, Province of Ontario (2000)
  • Barrister & Solicitor, Province of Alberta (2000)
  • Registered Trademark Agent, Canada (2002)
  • Intellectual Property Institute of Canada – IPIC (Affiliate)
  • Canadian Bar Association – CBA
  • American Bar Association – ABA – Patent Litigation, International Patent Treaties & Laws and International Trade Mark Treaties and Laws Committees (Member)
  • Managing Intellectual Property’s IP Stars – 2016, 2017, 2018/19, 2020/21

Patents

  • Eikon Device Inc. ats Tatuyou,. LLC (T-251-19)
    • Litigation counsel to Eikon in relation to ongoing alleged patent infringement in respect of transparent breathable polyurethane films/bandages.
  • Kinectrics Inc. v. Candu Energy Inc. and Atomic Energy of Canada Limited (T-957-18);
    • Lead counsel for Kinectrics in an ongoing declaratory action relating to invalidation of AECL/Candu patents relating to wet-scrape tools for nuclear reactors.
  • Descon Conveyor Systems & Consultants Inc. ats GEbo Cermex Canada Inc. and Gebo Packaging Solutions France (T-635-18);
    • Lead counsel for Descon relating to patent infringement action for an accumulation table in major bottling facilities. Represented client’s interest resulting in successful settlement.
  • Icon Elite Group Inc. v. Blue Sports Import-Export Inc.(T-346-17);
    • Lead counsel for Icon Elite in a patent infringement action relating to walking skate guards resulting in a successful settlement.
  • Sun-North Systems Ltd. Ats Lock Antriebstechnik GMBH, Gerd Arntjen and Secco International Inc.(T-1804-16);
    • Lead counsel for Sun-North in alleged patent infringement action relating to ventilation apparatus for wall surface. Successfully resolved and settled action.
  • 1132734 Alberta Ltd. d.b.a. Alta Injection Molding ats Canplas Industries Ltd. (T-1454-15); Airtrun Products Inc. and Merit Precision Moulding Limited ats Canplas Industries Ltd. (T-366-11 consolidated with T-719-14);
    • Lead counsel for Airturn Products and its manufacturers in an alleged patent infringement action relating to roof vents resulting in successful settlement.
  • Cascade Corporation v. Kinshofer GmbH and Kinshofer Liftall Inc. (T-2204-14)
    • Lead counsel in the first ever Federal Court summary trial proceeding on a patent infringement matter (relating to quick couplers for industrial equipment).
  • Evolution Technologies Inc. v. Human Care Canada Inc. (T-2497-14); Evolution Technologies, Inc. v. Drive Medical Canada Inc. (T-1159-13); Evolution Technologies Inc. v. AMG Medical Inc. (T-1448-12); and Evolution Technologies Inc. ats Human Care Canada Inc.(T-1556-12);
    • Lead counsel of Evolution Technologies in respect of various patent actions relating to rollators (rolling walkers).
  • Clio USA, Inc. ats The Procter & Gamble Company and Procter & Gamble Inc. (T-442-13)
    • Lead counsel to Clio USA in respect of alleged patent infringement action relating to dental whitening stripes. Successful settlement reached.
  • Anvil International, LLC, Mueller Canada Ltd. and Mueller Water Products, Inc. ats Victaulic Company and Victaulic Company of Canada ULC (T-1244-13)
    • Lead counsel to Anvil et al. in Canada in respect of patent infringement allegations relating to pipe couplings. Coordination with US counsel in respect of parallel litigation and successful re-examination proceedings.
  • KWH Pipe (Canada) Ltd. et al. v. Ideal Pipe et al. (T-2230-12)
    • Lead counsel to KWH Pipe and successful resolution of patent infringement action relating to extrusion moulded piping.
  • Fiber Optic Designs, Inc. v. Costco Wholesale Canada Ltd. and Wal-Mart Canada Corp./La Compagnie Wal-Mart Du Canada (T-1841-11)
    • Lead counsel to Fiber Optic in respect of patent infringement relating to one-piece Christmas light designs. Coordination with US counsel in achieving successful global settlement for client.
  • Throttle Control Tech Inc. v. Precision Drilling Corporation, Precision Drilling Limited Partnership, Precision Drilling Trust, Victory Rig Equipment Corporation and Trinidad Drilling Ltd. (T-862-10)
    • Lead counsel for Throttle Control in respect of patent infringement relating to “snubbing” for use in oil well drilling. Successful resolution for client.
  • Buckman Laboratories Inc. and Buckman Laboratories of Canada, Ltd. v. Ciba Specialty Chemicals Corp., Ciba Specialty Chemicals Water Treatment Limited and Ciba Specialty Chemicals Canada Inc. (T-1736-07); Buckman Laboratories of Canada, Ltd. and Buckman Laboratories International Inc. ats Ciba Specialty Chemicals Canada Inc. v. (T-1714-03)
    • Successfully represented Buckman et al. in patent matters relating to the manufacture of paper.
  • j2 Global Communications Inc. and Catch Curve Inc. v. Protus IP Solutions Inc.(T-139-06)
    • Lead counsel and part of a global team in respect of multi-national patent and trademark infringement matters, with successful representation of j2 Global and Catch Curve on patent infringement actions in Canada relating to value-added messaging and communications, resulting a $213 million acquisition.
  • Yangaroo Inc. ats Destiny Media Technologies, Inc. and Destiny Software Productions, Inc. (T-413-06)
    • Lead counsel to Yangaroo in respect of patent infringement matter relating to business to business distribution of media through the internet. Successful resolution by settlement.
  • Ronald Harrison and Carolina Mat Incorporated v. Sterling Lumber Company (T-2058-05); Ronald Harrison and Carolina Mat Incorporated v. Swamp Mats Inc. (T-2099-05)
    • Lead counsel to Carolina Mat et al. in respect of patent infringement matters relating to the manufacture of “road mats” for use in association with heavy industrial equipment in the oil field.
  • Brasscorp Ltd. d.b.a. Cliplight Manufacturing Company ats Uview Ultraviolet Systems Inc. (T-824-04)
    • Counsel to Uview Ultraviolet in respect of patent infringement action relating to use of tool for injecting dye into air conditioning units for automobiles to detect leaks. Matter settled on appeal.
  • Dynamic Fuel Systems Inc. ats Canadian Hydrogen Energy Company(T-1297-04)
    • Lead counsel and successful representation of Dynamic Fuel Systems Inc. in patent infringement involving electrolysis and hydrogen gas in internal combustion engines.
  • Biosig Instruments Inc. and Sears Canada Inc. ats Icon du Canada Inc.(T-694-03)
    • Lead counsel and successful representation of Icon in having a statement of claim for alleged patent infringement dealing with electronic circuitry in fitness equipment, dismissed with costs.
  • Techflow Design & Manufacturing Inc. v. Alpha Marathon Technologies Inc., Dual Spiral Systems Inc. and Rafael J. Castillo(T-1052-03)
    • Lead counsel and successfully defence of Dual Spiral Systems Inc. and Rafael J. Castillo in an alleged patent infringement action in respect of machinery design for plastic extrusion products whereby the Plaintiff’s claim was dismissed with costs.


Trademarks & Breach of Confidence

  • Meyer Sound Laboratories Incorporated et al. v. ACS Productions Sound & Lighting Inc. et al (T-2041-19)
    • Lead counsel for Meyer Sound Laboratories Incorporated et al. in an alleged trade mark infringement application.
  • Verka Foods International Limited ats KRBL Limited(T-983-18);
    • Lead counsel to Verka Foods in alleged trade dress, trademark and copyright infringement action. Successfully resolved litigation.
  • Icon Health & Fitness, Inc. v. Nutrasource Diagnostics Inc.(T-113-17);
    • Lead counsel for Icon Health in respect of s.18 & s.57 expungement application relating respondent’s mark.
  • Mondo Foods Co. Ltd. v. 2130545 Ontario Inc. D/B/A/ “Pasta Mondo” (T-1724-18); Mondo Foods Co. Ltd. v. Saucisses et Salami Mondo Inc. and 82524369 Manitoba Holdings Inc. (T-1897-16); Mondo Foods Co. Ltd. v. Agri-Mondo Inc. et al. (T-1418-16); Mondo Foods Co. Ltd. v. Liquid Creations Inc. (T-1762-14 & T-101-16)
    • Litigation counsel to Mondo Foods in Canada in relation to various successful trademark infringement matters relating to Mondo’s MONDO trademark.
  • P.K. Overseas (P) Ltd. ats KRBL Limited (T-1188-15)
    • Lead counsel to P.K. Overseas in respect of ongoing trademark and copyright matters in Canada.
  • Computer Programs and Systems Inc. et al. ats Evident Inc. (T-1801-15)
    • Lead counsel to CPSI et al. in Canada in respect of ongoing litigation relating to alleged trademark infringement.
  • Wal-mart Canada Corp., Tomson Merchandise Co. Ltd. And Everstar Merchandise Co. Ltd. Ats Canadian Tire Corporation, Limited (T-1926-15).
    • Litigation counsel to Wal-mart, Tomson, and Everstar relating to alleged trademark, trade dress and copyright infringement action in respect of Christmas lights. Successful settlement of action.
  • Mueller Water Products et al. ats ITET Corp. et al.(CV-13-489853)
    • Lead counsel to the Mueller group of companies in respect of an ongoing action for alleged breach of confidence, misappropriation of confidential information, breach of contract and alleged group enterprise.
  • Mastronardi Produce Ltd. v. Lakeside Produce, Inc.(T-1090-15)
    • Lead counsel for and successful representation of Mastronardi in respect trademark matters in Canada including coordinating parallel US/Canadian litigation.
  • Pharmafreak Holdings Inc. and Pharmafreak Technologies Inc. v. 517255 B.C. Inc. et al. (T-1486-13); P Pharmafreak Holdings Inc. and Pharmafreak Sciences Inc. v. Redtagnutrition.com et al.(T-306-13)
    • Lead counsel for Pharmafreak companies in respect of various successful FREAK trademark enforcement matters in Canada.
  • 511 Foods Ltd. v. Microflex Corporation(T-1862-13)
    • Lead counsel to 511 Foods relating to its HY FIVE trademark and design. Successful resolution by settlement.
  • McDonnel Hayes Limited ats Soda & Tonic Inc. (CV-12-458481)
    • Lead counsel to McDonnel Hayes and successful representation of same in respect of alleged trademark infringement matter whereby interlocutory injunction application and action dismissed against McDonnel Hayes with costs.
  • Molly Maid International Inc. v. Bradley Enns d.b.a. Canada Maid Service et al.(T-1714-10)
    • Lead counsel and successful representation of MOLLY MAID trademark matters in Canada.
  • Circa Inc. v. 3805913 Canada Inc. d.b.a. Circa Auctions et al.(T-1841-10)
    • Lead counsel to and successful representation of CIRCA trademark matters in Canada.
  • Indaco Manufacturing Ltd. ats Bag to Earth, Inc.(T-403-08)
    • Successful in representing Indaco in an alleged trademark infringement action in respect of its BAG TO NATURE trademark in Canada in association with biodegradable and/or compostable plastic/biopolymer bags.
  • Drägerwerk AG & Co. KGaA and Draeger Safety Canada Ltd. v. Alcotest Quebec Inc. et al.(T-2088-08)
    • Successful representation of Drägerwerk at trial over the use of the registered trademark and neologism “ALCOTEST”.
  • Dynamic Fuel Systems Inc.(04-CV-271005CM1; 04-CV-278067 CM1; 08-CV-00354405-0000; 08-CV-367016; CV-08-360986)
    • Lead counsel and successful representation of Dynamic Fuel Systems in respect of various action including successful defence against interlocutory injunction and receipt of cost award of $65,000.00.
  • Edge Combat Fitness Inc., Combat Survival Inc. and Moni Aizik ats Krav Maga Enterprises, LLC. (T-1506-05)
    • Successful representation of the Defendants in a trademark action in respect of the term KRAV MAGA, with costs awarded to the Defendants’.
  • Solatube International, Inc. v. Distinctive Installs Inc. and Kevin Rintjema(T-2158-04 & 05-CV-291029 PD3)
    • Successfully enforced the Plaintiff’s rights in respect of its SOLATUBE trademark as against the Defendants in an action for trademark infringement, passing off and false and misleading statements under s.7(a) of the TMA.
  • Norwood Industries Inc. v. Scierie Mobile Gilbert Inc. and Jacques Gilbert(T-64-03)
    • Successfully represented the interests of Norwood Industries in respect of its NORWOOD trademark, as well as copyright infringement matters resulting in complete capitulation by the Defendants and cancellation of the Defendants’ trademark “Morewood”.
  • Clic Import Export Inc. v. Top Star Distribution Group Inc. et al.(T-2261-01)
    • Lead counsel and successful representation of Clic in various trademark matters including Judgment and contempt against Top Star Distribution Group Inc. et al.


Copyright, Industrial Design & Counterfeit Merchandising

  • 2660722 Ontario Inc. et al. v. Vanpak Limited et al. (T-512-20)
    • Lead counsel for Vanpak Limited in respect of an industrial design and passing off action.
  • Truth Hardware Corporation v. ACU Plasmold Inc. Xiao Lu Zhuo, Fit Hardware Solutions Inc., Dany Martel and Yuri Davis-Martel (T-391-20)
    • Lead counsel for ACU Plasmold et al. in relation to an alleged industrial design infringement action.
  • Ultimate Drivers of Canada Inc. v. Oriented Drivers et al.(T-772-16)
    • Counsel to Ultimate Drivers in respect of copyright and trademark infringement matters relating to driver training.
  • Mitchell Repair Information Company L.L.C
    • Lead counsel to Mitchell on numerous trademark and copyright infringement matters.
  • Tubco Whirlpools Ltd and Canspa Manufacturing Inc. and ICarve Co. Ltd and Hamid Ghahremani and Massoud Ghahremani ats HQart Corp. (CV-10-398466);
    • Lead counsel to Tubco, Canspa, ICarve and personal defendants relating to alleged copyright infringement in wood carvings. Successful in dismissal of all claims.
  • Aviation World et al. ats Michael J. Culhane (T-1168-08)
    • Lead counsel to Aviation World et al. and successful representation of same in respect of alleged copyright infringement matter.
  • Shoestring Opera v. Lawrence Cotton and Greg Robic(07-CV-344211 PD3)
    • Lead counsel to and successful representation of Shoestring Opera dealing with musical and lyrical artistic copyright works.
  • Walter Kohlberger and Colonial Pillar Incorporated v. Heritage Casting and Ironworks Ltd., Alpha Foundry Inc. and Humberstone Woodworking Limited(T-1721-02)
    • Lead counsel to and successful representation of Humberstone against alleged Industrial Design infringement resulting in costs to Humberstone.
  • New Traditions Music v. Zeke’s Distribution Corporation, et al.(T-1952-02)
    • Lead counsel to and successful representation of New Traditions Music in a copyright infringement matters against numerous defendants.
  • Orion Pictures Corporation and Danjaq LLC; Fila Canada, Inc.; Phat Fashions LLC, Tornado Imports (Canada), Inc.; Rocawear Licensing LLC and Importation Nils, Ltd.
    • Lead counsel and successful representation in respect of the intellectual property interests of various brand manufacturers in trademark and copyright counterfeiting matters including the issuance and enforcement of anton pillar orders. Also acted as a Court appointed Independent Serving Solicitor at the request of a leading law firm in Toronto which represents a large portfolio of brand manufacturers.
  • Faud Nader ats. Active Images et al. (T-1981-00)
    • Lead counsel to and successful representation of Faud Nader in respect of copyright issue relating to fonts.

Letters Rogatory

  • Camtac Manufcturing Inc. ats Fatigue Fracture Technology, LLC (Court File No. 37/18)
    • Lead counsel and successful representation of Camtac in resisting application for letters rogatory by FFT before Ontario Superior Court.
  • American National Manufacturing, Inc. and Dires LLC (d/b/a Personal Comfort Bed) v. Supreme Quilting (1970) Ltd. And Steven Finkelstein (CV-16-562534);
    • Lead counsel for Applicants in successful application for letters rogatory in Ontario.
  • Oticon, Inc. v. Gennum Corporation and Sound Design Technologies, Ltd. (CV-09-380918)
    • Successfully defeated Oticon’s motion to have letters rogatory endorsed by the Ontario Superior Court, thereby compelling Sound Design to disclose confidential and proprietary information in respect of an action in the United States to which Sound Design was not a party.  Costs to Sound Design in the amount of $34,699.92.

 

Meet Our People

The lawyers and patent and trademark agents at Ridout & Maybee LLP bring both legal expertise and real-world industry knowledge to work for our clients. Many of our professionals were leaders in their technical field prior to working in intellectual property law, and hold advanced degrees and certifications.