Print | Email

In Which Court Should I Bring My Intellectual Property Dispute?

Intellectual property disputes may be commenced in the Federal Court, provincial superior courts, and small claims courts. While the majority of intellectual property disputes are brought in the Federal Court, provincial superior courts and small claims courts may be appealing alternatives in certain cases.

The Federal Court and provincial superior courts have exclusive jurisdiction for some causes of action and concurrent jurisdiction for other causes of action. Therefore, depending on the matter of the dispute, one may choose to commence a case in either the Federal Court or provincial superior courts or may be limited to only the Federal Court or provincial superior courts. Choosing a court depends on the allegations, facts, and parties of the case. If the matters of a dispute are the subject of concurrent jurisdiction, selecting between the Federal Court and provincial superior courts becomes a strategic decision.

Exclusive Jurisdiction

The Federal Court has the exclusive jurisdiction to impeach, invalidate or expunge intellectual property. Therefore, an action in rem, where the finding is directed toward the intellectual property itself as opposed to in personam where the finding is directed toward the parties involved in the dispute, must be commenced in the Federal Court. The Federal Court also has the exclusive jurisdiction for actions involving the statutory grant or registration of intellectual property rights. Further, actions relating to records within the Canadian Intellectual Property Office (CIPO) and appeals or judicial reviews from CIPO must be brought in the Federal Court.

In contrast to the Federal Court, provincial superior courts have the jurisdiction to make findings that are in personam. Provincial superior courts may be the only option for disputes that are largely contractual or based on tortuous activities. In addition, disputes involving common law passing-off, trade secrets, and breach of contracts, including licensing and confidentiality agreements, must be brought in provincial superior courts. 

Concurrent Jurisdiction

Matters involving the enforcement of an intellectual property right registration for a declaration of invalidity in personam fall within the concurrent jurisdiction of the Federal Court and provincial superior courts. Intellectual property infringement actions may also be brought in either the Federal Court or provincial superior courts. 

Practical Considerations

If the matters of a dispute are the subject of concurrent jurisdiction, one must consider practical reasons in choosing between the Federal Court and provincial superior courts. Federal Court judges have greater exposure, experience and familiarity with intellectual property matters and, as a result, greater expertise with the subject than provincial superior court judges.

Further, Federal Court judgments are recognized nationwide and can thus be enforced across Canada. This means, for example, that a Federal Court order for an injunction can be enforced across the country. In contrast, provincial superior court judgments are limited to the provincial borders of the province in which they are made. This said, an award for damages or an injunction is enforceable against any asset or operation of the defendant, irrespective of the province or territory. However, injunctive relief awarded in one province is not enforceable in another province.

Small Claims Courts

A further consideration for intellectual property rights holders seeking recourse against alleged infringers is bringing a case to small claims courts. In particular, small claims courts may be an appealing alternative for copyright infringement cases.

Small claims courts are desirable for their simplified and relatively inexpensive proceedings as well as their timely resolutions. However, a small claims court proceeding may only be an option for a plaintiff seeking monetary relief within the monetary limit of the respective provincial small claims court. Each province and territory has a capped monetary amount that can be claimed for damages. In Ontario, small claims courts have the jurisdiction to hear claims for $25,000 or less while Alberta has the highest capped monetary amount in the country at $50,000.

With the jurisdiction to typically only award monetary damages, small claims courts should not be used for all intellectual property matters. Parties of intellectual property disputes seeking other types of equitable remedies or relief such as injunctions, delivery up, and amending or deleting a registration or application at CIPO should not use the small claims court system.