Intellectual Property Litigation

Some of Canada's most important intellectual property litigation has reached successful conclusion in the hands of Bereskin & Parr litigators. Our extensive courtroom experience is not confined to major cases; simple disputes receive equal attention and concern. Before commencing any litigation, however, we carefully review all options available to the client, including negotiation and alternative dispute resolution. When litigation is necessary, we carefully plan the strategy with the client, work in a cost-effective manner, and always treat the client as an essential member of the litigation team.

Who Can Start an Action?

Intellectual property rights generally must be enforced through the civil courts in Canada. An action for the violation of an intellectual property right may be brought by the owner of that right, or by someone else who has an interest in the right, such as a licensee. Also, in some cases, an exclusive distributor of an article protected by an intellectual property right may be able to commence an action.

Is Intellectual Property Litigation Different?

In a word, yes. The remedies available under the Patent Act, Trade-marks Act, Copyright Act and Industrial Design Act can be somewhat specialized and, therefore, intellectual property litigation requires special consideration. For example, many intellectual property litigation matters are decided at the interlocutory injunction stage and hence special care and attention is essential in the early stages of litigation and in interlocutory matters in particular.

Intellectual property litigation is commenced in the Federal Court of Canada for several reasons. First, any remedies granted by the Federal Court are automatically enforceable Canada-wide. Second, various federal statutes grant the Federal Court exclusive jurisdiction over certain matters, such as issuing a declaration of non-infringement of a patent, impeaching a patent, or expunging a trade mark registration. Lastly, the Federal Court is considered a "specialist" or "expert" court for hearing intellectual property matters.

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What Remedies are Available?

Patents

A successful plaintiff in a patent infringement action will be awarded an injunction preventing the infringer from practicing the invention for the term of the patent, and delivery up of any offending products, and may elect either damages or the infringer's profits, starting from the date of grant of the patent.

"Reasonable compensation" may also be awarded to compensate for damages in respect of activities which occurred prior to the grant of the patent, between the date of the publication of the application and the date of grant.

Patent litigation raises complex factual and legal issues, and may involve considerable expenditures and require expert witnesses. Since the validity of issued patents will almost always be an issue, patent litigation requires an in depth knowledge of patent law, as well as experience in the courts which most frequently handle these issues.

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Trade Marks

Remedies for trade mark infringement and passing-off include damages or accounting of the defendant's profits, delivery up of all infringing goods and injunctive relief against further unauthorized use of the infringing mark. Infringing goods may also be detained by Canada Customs at their point of entry into the country.

It is also not uncommon in trade mark matters, especially when dealing with "fly-by-night" operations such as individuals selling counterfeit merchandise, including watches or t-shirts, to seek an Anton Piller order or a John or Jane Doe order to allow the trade mark owner to seize infringing articles and deposit them into the safekeeping of the court pending a determination of the litigation. Bereskin & Parr obtained the first John Doe order in the Federal Court against trade mark counterfeiting.

Since courts do not treat such extraordinary remedies lightly, experience is required in obtaining these extremely effective types of relief, alternatively, in working with the police in the event it is decided to press for criminal sanctions.

Where an unregistered trade mark, trade name or business name is violated, an action for the tort of passing-off may be brought in provincial superior court. Actions for passing-off are often very complex and require the production of specific types of evidence to prove a plaintiff's common law rights to a name or mark.

Copyright

As with patents and trade marks, the remedies available for copyright infringement include damages, an accounting of profits, delivery up of infringing copies and injunctions. Provisions for seizure of goods prior to entry into Canada are also found in the Copyright Act.

It may also be a criminal offence, in some circumstances, to knowingly infringe a copyright, punishable by a prison term ranging up to five years and/or fines of up to $1,000,000.

Industrial Design

For infringement of a registered industrial design, a proprietor may seek damages, punitive damages, an accounting of profits, injunctive relief and disposal of any infringing articles.

What Options do Prospective Defendants Have?

Patents

A granted patent is only presumptively valid, and its validity may be challenged either outright, by bringing impeachment proceedings in the Federal Court, or by raising invalidity as a defence to infringement. Since an action for impeachment essentially reopens the question of patentability, an experienced patent litigator is required.

In some instances, a competitor to a patent holder may want to apply to the Federal Court to receive a declaration that its product or process does not infringe the patent. This declaration can be invaluable in allowing the competitor to compete with the patent holder free from the threat of pending litigation.

Trade Marks

As with patents, validity of a registered trade mark may be challenged by commencing expungement proceedings in the Federal Court, or by raising invalidity as a defence to infringement.

A defendant may seek to invalidate a registered trade mark on the grounds of the mark not being registrable, non-distinctiveness, abandonment or, in certain instances, that the trade mark owner was not entitled to the registration of the trade mark.

Also, after the third anniversary of its issuance, a registration is vulnerable to cancellation or amendment if it is not in use by way of summary expungement proceedings before the Registrar of Trade-marks.

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Copyright

Special defences to copyright infringement include that the allegedly infringing use constituted a "fair dealing" under the Copyright Act. The "fair dealing" exemption permits reasonable copying of a work for limited purposes, such as private study and research, or criticism and review.

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Industrial Design

The Industrial Design Act imposes strict marking requirements on articles protected by a registered design. Where a plaintiff did not properly mark its invention, that plaintiff is limited to injunctive relief against a defendant.

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In Your Court

Bereskin & Parr can give you and your clients a full range of support in litigation matters. A wide variety of technical backgrounds in science, engineering, biotechnology, and computers, coupled with experience before federal and provincial courts and tribunals, ensures that your client will be well represented. Whether it's an expert opinion, assistance to counsel, negotiating a settlement or representation before the courts, our professionals can offer creative, practical and cost-effective service.

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