Litigation is at the most involved (and potentially aggressive) end of the spectrum of potential enforcement activities. While litigation is often the last resort in a failed negotiation, it can be a very effective enforcement tool. However, litigation can also be expensive, complex and time-consuming.
In intellectual property (IP) litigation, both parties present their cases in court to a judge, who then hands down a ruling. It is common for cases that go to litigation to end up being settled before the end of a trial.
Questions to consider before litigation
- Is litigation a feasible option for you in terms of costs and time?
- What is your likelihood of success?
- What exclusive IP rights do you have available to enforce?
- What are the possible defences available to the infringer, and what are their chances of success?
- Is there enough evidence to be gathered of the infringing activity?
- What is the expected relief (e.g. an injunction, monetary damages, destruction of the infringing product), and is it recoverable?
- What are the potential costs of litigating, and what are the potential costs of not litigating (e.g. loss of goodwill or reputation, encouraging future infringers)?
- Have you exhausted potential alternatives, such as mediation or arbitration?
Courts in Canada
There are 2 court systems that generally deal with IP matters in Canada:
- the Federal Court system
- the provincial courts system
Some IP matters can only be tried in the Federal Court, and others can only be tried in the provincial courts. Generally speaking, disputes involving the infringement of patents, copyright and trademarks can be tried in either court system, whereas an action to invalidate IP rights must be brought before the Federal Court. Therefore, choosing in which court to commence your proceeding becomes a strategic decision. In some instances, you may be required to litigate in both court systems.
For multi-jurisdictional disputes, weigh the pros and cons of litigating in Canada versus abroad or using alternative dispute resolution, particularly arbitration.
Courts can only try matters over which they have jurisdiction. Only the Federal Court has the jurisdiction to impeach, invalidate or expunge IP registrations. The Federal Court has the exclusive jurisdiction to decide the following types of cases:
- cases in which a party wants to impeach or annul a patent
- cases in which a party wants to vary or expunge any entry in the records of the Patent Office relating to the title to a patent
- cases involving conflicting patent applications
- cases in which a party wants to appeal a decision of the Commissioner of Patents refusing to grant a patent
- cases in which a party wants an entry in the copyright register made, expunged, varied or rectified
- cases involving conflicting copyright registrations
- cases involving conflicting trademark registrations
- cases in which a party wants an entry in the trademark register made, expunged, varied or rectified
Advantages of the Federal Court
- The judges are more experienced with pure IP matters.
- The Federal Court maintains registries across the country.
- Cases can often be more quickly heard and appealed.
- Orders from the Federal Court are enforceable Canada-wide.
Provincial superior courts
Provincial courts deal mostly with criminal and private law cases (e.g. breach of contract), but they can also try certain types of IP cases. Provincial courts may be the only option for disputes that are largely contractual in nature or based on complicated commercial activities, such as a breach of confidence arising from a departing employee. If your IP dispute is based on any of these causes of action, you must go through the provincial courts system.
Examples: ownership disputes based on employment contracts, breaches of non-disclosure or license agreements, misappropriation of trade secrets
Small claims court
A quick, easy and less expensive way for litigants to enforce their IP rights in court is through an action in small claims court. This is a specialized branch of the provincial courts system.
A small claims court proceeding is only an option for a plaintiff seeking monetary relief within the monetary limit of their respective provincial small claims court. Each province and territory has a capped monetary amount that can be claimed for damages. In Ontario, the small claims court has the jurisdiction to hear cases involving claims for $35,000 or less, while Alberta has the highest capped monetary amount in the country, at $50,000.
Get professional help
Solving conflicts involving IP rights is often complex. Consult an IP professional, such as an IP agent or lawyer, to discuss the next steps if you believe your IP rights are being infringed upon.
If IP infringement is happening in another country, a Canadian IP professional may be able to coordinate with an IP professional in the other country to enforce your IP rights.