Intellectual Property Litigation Lawyers
We act for clients before all levels of court and the Canadian and U.S. trademarks offices.
At Shift Law, we aggressively and intelligently represent clients before all levels of Court, in settlement negotiations, before arbitrators and before the Canadian Intellectual Property Office. We have a proven track record in IP litigation, including in trademark infringement, copyright infringement and breach of confidence cases.
We have particular experience and expertise in litigating summary judgment motions and summary trials and cases relating to:
- trademarks and copyright
- trade secrets and confidential information
- publicity rights, libel, defamation
- trademark oppositions and trademark expungement proceedings
- domain names and Uniform Dispute Resolution Policy (UDRP) proceedings
- distribution and licensing agreements
- copyright claims from the Business Software Alliance (BSA)
We have a proven track record in IP litigation, including in trademark infringement, copyright infringement and breach of confidence cases.
Frequently Asked Questions
What should I do if someone is infringing my trademark or copyright?
If someone is infringing your IP rights, your best response will depend on a number of factors that an experienced IP lawyer can discuss with you. It is often best to start by having your lawyer send the infringer a cease and desist letter (or “demand letter”) requesting that they stop their infringing activities or face legal consequences.
What is the purpose of a cease and desist letter?
The primary purpose of a cease and desist letter is to persuade the recipient (or their lawyer) that they would be better off complying with your demands than facing the consequences of continuing the infringement. In many cases, however, the infringer will not voluntarily comply with your demands. In those cases, the cease and desist letter will become part of the evidentiary record in a lawsuit – showing that you tried to resolve the issue in good faith before commencing formal litigation. Both the tone and the content of a demand letter are always important to achieve its purpose.
What should a cease and desist letter say?
A good cease and desist letter will set out in clear terms your demands, the factual and legal basis for your demands and the factual and legal basis for a lawsuit if the infringer does not comply with those demands. The letter should detail the rights that the infringer has violated, how you acquired those rights and any damages that may result from the infringement. You should also communicate in the letter that you are serious about protecting your rights and that you are fully prepared to pursue legal action if necessary. To that end, it is often a good idea to set a deadline for a response and state what you will do if a response is not received (which should be something you are prepared to follow through with). Demand letters are more likely to be taken seriously if they come from a lawyer representing you than if they come from you directly.
What should you avoid in a cease and desist letter?
While it is important for a cease and desist letter to be firm and compelling, it should never be rude or harassing. It is also important to avoid false claims about the scope of your rights. You should always assume that a judge may read your demand letter at some point and that your letter may be shared with others, including on social media. In some cases, a resolution of the dispute might include a business relationship with the infringer. Wherever that is remotely possible, it is important to avoid burning bridges.
What should I do if I receive a cease and desist letter?
It is important not to ignore a cease and desist letter as this could be used as evidence of bad faith and weigh against you in any litigation. If you receive a cease and desist letter, you should speak to a lawyer who can advise you on appropriate next steps. As with demand letters themselves, both the tone and content of responses are important for all the same reasons.
When do I start an IP infringement lawsuit?
Starting a lawsuit is often the best way to proceed if an IP infringement dispute cannot be resolved through initial correspondence between the parties and their lawyers. While starting a lawsuit and engaging the judicial system is an important step that should not be taken lightly, it can also be just another step in the settlement negotiation process. Once litigation is commenced, legal fees will start to increase and it can become a game of “chicken” to see who will stay on course the longest.
What options do I have when starting an IP infringement lawsuit?
There are many decisions to be made in the course of any IP infringement lawsuit. The first important decisions to be made are what court to bring the lawsuit in and what procedure to use.
Choose your court
IP infringement proceedings can be brought in either the Federal Court of Canada or in a provincial/territorial Superior Court. The Federal Court hears the majority of IP disputes because it has jurisdiction over trademarks, copyright and patents and because its orders are easily enforceable throughout the country. Sometimes it is necessary to bring proceedings in Superior Court, however, which has jurisdiction to hear a much broader range of disputes, including contractual disputes and disputes involving confidential information. Provincial Small Claims Court may also be an appropriate forum where the total property or monetary value of damages does not exceed a certain amount. The Ontario Small Claims Court has jurisdiction to hear claims for monetary relief of up to $35,000.
Choose your procedure
IP infringement proceedings in Federal Court of Canada and Superior Courts can be initiated by way of action, simplified action or application. An action is a more traditional litigation route and includes oral and documentary discovery where parties obtain admissions from one another and concludes with a trial with live witnesses before a judge. The simplified action (referred to as simplified procedure in Ontario Superior Court) streamlines some of the processes of a traditional action to reduce the time and expense spent in litigation. An application is a more expedited proceeding that may be used where the parties are not in dispute over the underlying facts. Applications are sometimes referred to as “paper trials” because there is no examination for discovery and no live trial with witnesses. Instead the parties’ evidence is submitted through affidavits (sworn statements) and the parties’ written submissions.
How long does it take for an IP infringement matter to be resolved?
The time it takes to resolve a lawsuit will vary significantly depending on the complexity of the issues, how motivated the parties are to litigate, and the procedure and court selected. Litigation takes time and it may take several years before a matter is heard by a judge. It is common for parties in IP disputes to settle at some point before the matter is decided by the court. Actions typically take the longest because of all the steps involved, including discovery. In certain infringement actions, one side or the other will bring a motion for summary judgment asking the court to decide the case on the merits without the need for a full trial.
What are the stages of an IP infringement action?
An infringement action will include the following stages:
An action begins with a plaintiff filing a statement of claim. A statement of claim sets out the factual allegations against the defendant and the relief being sought. To avoid a default judgment, a defendant must serve and file a statement of defence within a prescribed timeline. A defendant may also choose to file a counterclaim against the plaintiff. A plaintiff is entitled to reply to any claims made by the defendant in their statement of defence and to file a defence to any counterclaim, if applicable. A defendant may then reply to the plaintiff’s defence to counterclaim. Parties will sometimes bring procedural motions in relation to each other’s pleadings where they might seek an order to strike some or all of the other side’s pleadings or for “particulars” or more details of their allegations.
After the close of pleadings, each party is obligated to exchange all documents that are relevant to the issues raised in the pleadings. Depending on the complexity of the case, the volume of documents can be considerable and take time to retrieve. Again, the parties may bring procedural motions at this stage, requesting, for instance, an order that the other party produce more documents.
Examinations for discovery
After documents are exchanged, each party is entitled to ask questions of the other(s) about facts that are relevant to issues in the litigation through examinations for discovery. Examinations for discovery are intended to allow each party to better understand the nature and strength of the other side’s case and to obtain admissions that can later be used at trial.
Pre-trial conferences are used to assess whether parties are prepared to go to trial, whether there is any possibility for settlement, and to assess how long the trial will take. For Federal Court proceedings, pre-trial conferences occur before the matter is set down (scheduled) for trial. In Ontario Superior Court, the pre-trial conference happens after a trial date has been requested.
At trial the parties will present evidence by calling witnesses who testify in open court. Lawyers for each side will deliver opening statements before calling witnesses and closing statements after all evidence has been presented. In Canada, IP disputes are decided by judged not juries.
What remedies can a plaintiff seek in IP infringement litigation?
The Federal Court of Canada or a Superior Court can award several kinds of remedies in an IP infringement action, including:
- Monetary awards, including damages for harm that has been suffered or an award of the infringer’s profits from the infringement
- Punitive damages where the defendant has demonstrated exceptionally egregious conduct
- An order for the destruction of the infringing goods, packaging, advertising materials, labels and equipment
- Interlocutory or interim injunctions
- Permanent injunctions
- Legal costs
What is an injunction?
An injunction is a remedy that restrains another person from engaging in certain activities. In an IP infringement case, the Court may issue an injunction against an infringer or alleged infringer on an interim, interlocutory or permanent basis. An interlocutory injunction will restrain a defendant from taking certain actions until the trial ends. To obtain an interlocutor injunction, a plaintiff must satisfy the court that its allegations raise a serious issue and the plaintiff would be irreparably harmed if the defendant were allowed to continue the complained of conduct until a trial is heard.
Is there a limitation period for infringement actions?
Under the Copyright Act, the limitation period is three years from when the plaintiff first knew or ought to have known about the infringement. The Trademarks Act does not specify a limitation period to bring a trademark infringement action. Therefore, the applicable limitations period will depend on where the proceeding is commenced. If an action is brought to the Federal Court, a six-year limitations period applies. The Provincial limitations period applies where the damage only occurred only within a single province. In Ontario, the basic limitations period is two years from the date the plaintiff discovered or ought to have known about the damage.