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Intellectual Property Litigation FAQ

Litigation Basics

What is intellectual property litigation?

Intellectual property litigation is the process of pursuing legal action in court against a party who has infringed your intellectual property rights.

How long does it take to get to trial?

Depending on the type of proceeding (e.g., action, simplified action, application) and the schedule of the court, it can take anywhere between one year and several years to get to trial.

I can’t wait for a trial; how can I stop the infringer from infringing my rights now?

There are several options at your disposal to try to immediately stop infringement. The first is to send a cease and desist letter to the infringer that informs them of your intellectual property rights, describes how they have infringed your rights, and demands they cease the infringement. While the infringer is not bound to comply with your demand, sometimes they will do so to avoid further legal action.

If you have already started a court proceeding against the infringer, you can bring a motion to obtain an interlocutory injunction that prohibits the infringer from continuing their infringing activities while the case makes its way to trial. However, interlocutory injunctions can be difficult to obtain in intellectual property cases.

Can I represent myself in court proceedings?

Yes, litigants can represent themselves in Small Claims Court, Ontario Superior Court of Justice and Federal Court. However, without legal education and experience it is difficult for litigants to know which Court is best for the specific proceeding, what limitation periods apply, what causes of action or defences are available, and how to navigate the Court system. Further, except in Small Claims Court proceedings, the opposing party will likely be represented by a lawyer, so representing yourself may put you at a disadvantage.

Further, if you are a corporate litigant, you cannot represent yourself in an Ontario Superior Court proceeding or Federal Court proceeding except with leave (permission) of the Court, which is rarely granted. Corporate litigants can, however, self-represent in Small Claims Court.

Standing and Causes of Action

Who can sue for patent infringement?

The Patent Act gives a patentee (meaning the patent owner) and “persons claiming under” the patentee, including licensees, the right to sue for patent infringement. If you are not a patent owner or licensee, we can help you determine if you nonetheless have a right to sue for patent infringement as a “person claiming under” the patentee. If you can sue but are not the patent owner, you will be required to name the patent owner as a party to any patent infringement court proceedings.

Can I still sue someone who is using my invention even if I do not have a Canadian patent?

It depends. If you do not have a patent in Canada, then you cannot sue for patent infringement in Canada. However, there may be other causes of action that can form the basis of a legal claim (e.g., breach of confidence, breach of contract, etc.).

Who can sue for trademark infringement?

The owner of a registered trademark may sue for trademark infringement. If you are a licensee of a registered trademark, you may call on the owner to sue for infringement; and if the owner does not do so within two months, you can sue in your own name. In that case, you would have to make the owner a defendant in the proceeding.

Can I still sue someone who is using my trademark even if I did not register it in Canada?

Unregistered or common-law trademarks still possess a degree of legal protection. However, the scope of this protection is much narrower than for registered trademarks. If you have an unregistered trademark, you can sue for passing off, if you can prove that:

  1. There was sufficient goodwill or reputation attached to your goods and/or services in association with the unregistered trademark in the mind of the consumer;
  2. Another trader deceived the consumer through its misrepresentation; and
  3. You suffered actual or potential damages.

Each element of the allegation must be proven on a balance of probabilities by the owner of the unregistered trademark. Reputation must be proven to the extent that it identifies the distinctiveness of the source of the goods or services.

Who can sue for copyright infringement?

The Copyright Act gives the owner of copyright, and any person deriving any right, title or interest from the owner by assignment or grant in writing the right to sue for copyright infringement. The courts have clarified that exclusive licensees of copyright can sue in their own name, but non-exclusive licensees cannot. If you have standing to sue, but are not the copyright owner, you will generally be required to name the copyright owner as a party to the court proceedings.

Can I still sue someone who has copied my work even if I did not register my copyright?

Yes. Copyright subsists automatically upon creation of an original work. The Supreme Court of Canada ruled that an “original work” under the Copyright Act is one that originates from an author, is not copied from another work, and is the product of an author’s exercise of skill and judgment (i.e., its creation was not purely mechanical).

With limited exceptions, creators of works are automatically the owners of copyright if their work is one in which copyright can subsist. However, copyright registration provides additional legitimacy in Court and strengthens your case against the infringer. Further, copyright registrants are presumed to own copyright in the work in question. If you foresee your work being ripe for infringement, it is best to obtain a copyright registration. Our lawyers will be happy to help you with the registration process.

Procedural Questions

How do I start a lawsuit against someone who is infringing my intellectual property rights?

In a regular action, the plaintiff commences a proceeding by drafting a statement of claim, which is a document that contains a concise statement of the material facts on which the plaintiff relies to prove infringement. The plaintiff must also plead a valid cause of action within the claim, or the facts that allow them to seek judicial redress in courts.

Once the plaintiff files the statement of claim in Court and it is issued, the plaintiff must then serve the issued claim on all defendants (the avenues for service vary depending on the court in which the proceeding was initiated) and file an affidavit of service as proof of that service upon the defendants.

If a defendant does not defend the action, the plaintiff may seek a default judgment against that defendant. If a defendant does defend, the litigation will continue against them.

If I think someone is infringing my intellectual property rights, do I have to send a cease and desist or demand letter before I sue?

No, you are not obligated to send a cease and desist letter before commencing legal proceedings. However, doing so can have several advantages. First, if the recipient complies with the letter, it may save you the time and costs of litigation. Second, the letter may open a pathway for negotiation between you and the recipient; for example, it may lead to a licensing agreement that is acceptable to both parties. Finally, evidence that you have tried to contact the infringer and work out a solution may be useful in future court proceedings.

How do I determine what I want from the infringer?

This is up to you. Litigation is time consuming and can be costly, so you should know why and what you want before starting a legal proceeding.

What should go into a cease and desist letter?

A cease and desist letter should, at the very least, inform the recipient of your intellectual property rights, describe how their activity infringes your rights, and demand that they stop infringing. It does not need to take any particular form, but the more official it looks, the more likely it is that it will be taken seriously.

Please see our article on cease and desist letters for more information.

Remedies

Can I obtain an injunction against the infringer?

There are two main types of injunctions that a court can award against an infringer: interlocutory injunctions and permanent injunctions. An interlocutory injunction to stop a defendant from infringing the rights of the plaintiff is awarded while the outcome of the trial is still pending. However, interlocutory injunctions are notoriously difficult to obtain in intellectual property proceedings.

Permanent injunctions are a common remedy awarded to a successful plaintiff after trial.

For more information on this topic, check out our article on court injunctions.

Can I get the infringer to give me back the offending goods?

Yes, recovering the infringing goods may be possible. As the plaintiff, you can ask the court to order that all infringing products be delivered to you or destroyed under oath if you are successful at trial.

Can I recover my losses through monetary damages?

Yes. However, proving damages may be difficult in certain situations.

Does the infringer have to give me the money they made from selling my goods?

During a court action, you can ask the Court to order the infringer to give you the profits that they made from their infringing sales, called an “accounting of profits”, as an alternative to damages (except in copyright matters, where it is available in addition to damages). The remedy may be preferable if the defendant’s profits are expected to be greater than your losses.

However, an accounting is an equitable remedy, so the Court can disallow it at its discretion, which may occur when the plaintiffs have delayed in commencing proceedings or as a result of their misconduct.

How can I find out how much money I could get at trial?

This can be difficult to know in advance. At the very least you need to have some idea of how many infringing sales the infringer made, how much they made as a profit on each sale, and how much you would have made on each of those sales. Sometimes the only way to figure this out is through discovery after a legal proceeding is already instituted.

If I win at trial, does the opposing party have to pay my legal costs?

Awarding costs is in the Court’s discretion. Generally, the successful party is awarded a portion of its legal costs.

In the Federal Court, legal costs are governed by Tariff B of the Federal Courts Rules: Counsel Fees and Disbursements Allowable on Assessment. A party seeking an assessment of costs in accordance with this Tariff shall file and prepare a bill of costs, which shall indicate details about the assessable service and evidence for the number of hours claimed. It provides a breakdown of the number of hours that can be claimed for services performed by legal professionals in the course of a Federal Court dispute.

Choosing a Court for the Dispute

Which courts have jurisdiction to hear my dispute?

As an intellectual property litigant, you have three courts that are potentially viable as an avenue for your dispute: the Federal Court, the provincial courts and, if available, the Small Claims Court in your province.

How do I choose a court for my dispute?

Disputes involving infringement of patents, trademarks and copyrights can generally be tried in either Federal Court or provincial court, but only federal judgments may be enforced across Canada.

The Federal Court is your only option in the following litigation proceedings:

  • 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 of 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; and
  • Cases in which a party wants an entry in the trademark register made, expunged, varied or rectified.

Provincial courts may be the only option for disputes that are largely contractual or based on tortious activities, including common law passing off and breach of confidence.
Small Claims Court is an option where the quantum of damages that you are claiming is relatively low.

Can I sue someone for infringing my intellectual property rights in Small Claims Court?

Intellectual property claims can be pursued in Small Claims Court only where the quantum of damages sought by the plaintiff is lower than the capped maximum which the Court in that province can award. In Ontario, the Small Claims Court has jurisdiction to hear cases involving claims for $25,000 or less. Alberta has the highest capped monetary amount in Canada at $50,000. Further, small claims courts typically do not have the jurisdiction to award injunctions.

As a practical matter, the Small Claims Court system should not be used for complex disputes and should be reserved for more straightforward cases of intellectual property infringement.

I have a business in Ontario, but someone is infringing my intellectual property rights in another province or territory – can I sue them? Where?

Yes, you can pursue legal action against an infringer that is infringing your intellectual property rights outside Ontario. Which court and jurisdiction the lawsuit should be brought in depends on the particular nature of the dispute, as well as the residence and place of business of the defendant. Generally, you will be able to bring a lawsuit against the defendant in the province in which they committed the infringement.

Importantly, you can commence a legal proceeding in Federal Court in relation to intellectual property disputes that arise in any province and any Court orders are enforceable nationwide. You can also file documents in various Federal Court registry offices across Canada.

Avoiding Having to Defend Litigation

Do I have to respond to a cease and desist or demand letter?

A cease and desist letter on its own does not have legal effect in the same manner as, for example, a court order. As such, it is not mandatory to respond to a letter that you have received. However, responding to the letter can open up a channel of communication between you and the sender that may lead to a positive outcome. Not responding, on the other hand, can lead to litigation.

I received a Statement of Claim. Do I have to respond?

It is not strictly mandatory to respond to a statement of claim that a plaintiff has served upon you. However, if you elect not to respond, the plaintiff can ask the Court to issue a default judgment in their favour. This may result in you having to pay damages for intellectual property infringement which you could otherwise have avoided. It is best to discuss any statement of claim that you receive with a lawyer to determine the best way to proceed.

I got a notice from my Internet Service Provider that my account has been associated with copyright infringement. Should I ignore it?

This notice is likely part of the notice and notice regime in Canada that attempts to prevent online copyright infringement. The notice itself does not have any legal power, which means that there are no immediate consequences to not responding. However, the notice is meant to flag to the infringer that the activity in which they are partaking can have legal consequences, and that it infringes on the intellectual property of someone else. In most cases, if you cease the infringing activity, it may help to prevent future litigation on the matter.

The best strategy after you receive the notice is to critically evaluate your online actions and cease any behavior that infringes on others’ copyright. It may also be helpful to consult a lawyer about your potential liability and the likelihood of future litigation.