IP Litigation

Effective Intellectual Property Dispute Resolution

As intellectual property litigation counsel, we provide a strategic approach supported by our considerable experience advising in intellectual property disputes in Canada. Whether acting for the intellectual property rights holder or the alleged infringer, we use our past experience as counsel in hundreds of intellectual property disputes to advocate for your business’s interests in a well-informed manner designed to achieve your objectives in a way that is proportional to both their budget and what’s at stake.

Our IP litigation team is led by Georgina Danzig and Christopher Heer. Our IP litigators have advised in hundreds of patent, trademark, copyright, design, and confidential information and trade secrets disputes as well as dozens of anti-counterfeiting enforcement matters. We have acted successfully as counsel in proceedings in the Federal Court, Federal Court of Appeal, and Ontario Superior Court of Justice, including its Divisional Court and Small Claims Court branches.

We have also negotiated licence and settlement agreements concluding a number of patent, trademark, copyright, industrial design and trade secret lawsuits and other disputes prior to reaching trial and in most cases prior to reaching discovery or even the commencement of a lawsuit.

If you have any questions about our services or you are in need of IP litigation or IP dispute resolution services, please contact us for a complimentary and confidential telephone appointment.

The Intellectual Property Dispute Process

A brief overview of the litigation process applicable to most intellectual property matters is found below. After that we provide information about small claims court proceedings as a cost-effective alternative for self-represented litigants to pursue nominal infringements and infringements with claims for damages of $35,000 or less.

Infringement and Validity Opinions

At the outset, when acting for an intellectual property rights holder, we will help you evaluate whether a particular competitor has infringed your intellectual property rights. When acting for the alleged infringer, we will assess what non-infringement arguments may be made as well as determine your chances to succeed on allegations that the intellectual property rights asserted against you are invalid or non-enforceable.

With the results of the opinion in hand, we will then work with you to develop and carry out a litigation strategy and/or a plan of action for resolving the matter out of court.

The Typical Stages of a Federal Court Proceeding

Pleadings

Most intellectual property litigation in Canada takes place in the Federal Court. A lawsuit is typically commenced by the plaintiff issuing a statement of claim which the defendant responds to in a statement of defence.

A defendant may also make a counterclaim containing allegations against the plaintiff in the same document as its statement of defence. The plaintiff may then reply to the statement of defence and respond to the allegations in the counterclaim. If a defence to a counterclaim is made, the defendant may also reply to the defence.

Discovery

Following the close of pleadings, the lawsuit enters the discovery stage. Each party to the lawsuit conducts a search of its own documents for documents relevant to the issues in the lawsuit. A list of relevant documents, and most often copies of those documents, are then provided by the parties' lawyers to the other parties' lawyers in the lawsuit.

In intellectual property lawsuits, there is often a confidentiality order or protective order or agreement in which the parties have agreed to certain conditions regarding who can access the documents provided. In some cases, access to certain highly confidential documents is restricted to only the lawyers and independent experts for the parties.

Following the exchange of documents, oral examinations of the parties take place. If the party is a company, a representative for the company is examined by lawyers for the adverse parties. The questions and answers from the examinations are recorded in written transcripts for use at trial.

Pre-Trial

In most intellectual property cases, expert reports are prepared and exchanged following examinations for discovery. A pre-trial conference with the Court will also take place to plan for a trial.

Trial

A trial in the Federal Court is heard by a single judge without a jury. Typically, the judge does not decide the matter at the conclusion of the trial, but rather issues a written judgment and reasons several months later.

In its decision, the court will likely order the losing party to pay the successful party some portion of its legal costs. Typically, the amount is less than 25% of the party’s actual legal costs.

It usually takes at least 18 to 24 months to get to a trial in the Federal Court with a decision following some months thereafter.

Appeal

The decision of the trial judge may be appealed to the Federal Court of Appeal. An appeal will be decided by a panel of three Federal Court of Appeal judges. There is no further discovery in the course of the appeal. Each party files written submissions in advance of the hearing and then makes its oral submissions at the hearing.

Appeal decisions are often issued within weeks of the appeal and sometimes the decision is given at the conclusion of the hearing with written reasons for the decision following shortly thereafter.

Settlement

An intellectual property dispute can be settled at any time and earlier is often better for all parties involved. We invite you to contact us as soon as possible should an intellectual property dispute arise so we can help you to explore the possibilities for an early resolution.

Intellectual Property Disputes in the Ontario Small Claims Court

What is the Ontario Small Claims Court?

The Ontario Small Claims Court is a branch of the Ontario Superior Court of Justice. This court is meant to provide a more accessible and less formal way of litigating disputes, where the amount of money or value of property in issue does not exceed $35,000.

Note however that the Ontario Small Claims Court has jurisdiction to hear defendant’s claim (or counter claim) together with a plaintiff’s claim. So the Ontario Small Claims Court can still hear the matter even where the total in dispute between a plaintiff’s claim and defendant’s claim exceeds $35,000, as long as neither claim individually exceeds $35,000.

The Ontario Small Claims Court has a mandate to hear and determine in a summary way all questions of law and fact. It operates under set of rules of procedure and evidence that are more relaxed than the Ontario Superior Court while still providing litigants with a formal court process to pursue disputes up to $35,000.

Claims for Damages up to $35,000

In the Ontario Small Claims Court, you can sue for damages for infringement of intellectual property rights if you are seeking $35,000 or less, not including interest and costs.

The Ontario Small Claims Court can be suitable for obtaining awards of damages for trademark infringement and copyright infringement where the rights holder has not sustained provable monetary losses over $35,000 and does not believe the infringer obtained $35,000 or more of profits from the infringement. In such disputes, nominal damages or statutory damages may still be awarded in amounts under the small claims court damages limit.