3. Trade-Mark, Copyright and Patent

The Federal Court and the provincial superior courts have jurisdiction over the litigation of intellectual property disputes in Canada. The Federal Court’s jurisdiction is purely statutory and generally exclusive relating to in rem proceedings (actions against things or property as opposed to persons) such as with respect to declaring the invalidity of a registered intellectual property right. Provincial superior courts may only rule on the validity of rights between parties. As well, appeals of decisions of the Commissioner of Patents and Registrar of Trade-marks are exclusively within the jurisdiction of the Federal Court. In appeals to the Federal Court from decisions of the Registrar of Trade-marks, fresh evidence can be filed on appeal.

Since the Federal Court’s jurisdiction is purely statutory, where the subject matter of a lawsuit involves elements both covered and not covered by an applicable federal statute, it may be necessary to sue in provincial court. For example, franchise disputes often involve claims relating to registered trade-marks, in respect of which the Federal Court has jurisdiction, as well as a contractual element, for which it may not.

Alternative dispute resolution (such as mediation and arbitration) is generally available for intellectual property disputes in Canada except in respect of those matters where the Federal Court has exclusive jurisdiction.

Disputes over Internet domain names can be adjudicated both by arbitrators pursuant to the dispute resolution procedures promulgated by the Canadian Internet Registration Authority (CIRA) or in the provincial superior courts (or in the Federal Court if a registered or applied for trade-mark is involved).

In certain cases, exclusive licensees have standing to sue. However, it may be necessary to name the owner of the applicable intellectual property right as a party to any such action.

Interlocutory injunctions, Mareva injunctions, Anton Piller orders and comparable extraordinary remedies are generally available if the appropriate thresholds are met.

Both the Trade-marks Act and the Copyright Act provide for the ability to obtain interim orders detaining goods imported into Canada that appear to infringe intellectual property rights. However, these provisions are rarely used generally because the extent of evidence required to obtain such order is high and parties who have such evidence can generally obtain an interlocutory injunction in the ordinary course in any event.

Bifurcation orders, that is, ordering separate trials on liability and if and only if liability is found, a separate trial on damages, are generally available on consent. Bifurcation orders are rarely granted in the absence of consent.

Special rules govern pharmaceutical litigation relating to the issuance of Notices of Compliance (NOCs) where the drug in question may be covered by a third party’s patent. Appeals from the decision of Minister of Health to issue an NOC are heard in Federal Court.

In Canada, unlike some other jurisdictions, there are no jury trials in intellectual property proceedings. As well, with respect to patent proceedings, there are no preliminary proceedings (sometimes known as Markman hearings) to determine the construction of a patent prior to trial.

• An injunction to restrain the continued infringement.


• Compensation for the infringement committed up to the date of the order, typically in the form of an election between the plaintiff’s damages and an accounting of the infringer’s profits; and, in the case of patents, reasonable compensation for activities between the date of publication of the application in Canada and the date of grant of the patent which, after grant, constitute patent infringement. The Copyright Act also provides for statutory damages.


• Destruction or delivery up of the infringing goods.


• Punitive damages (in rare cases only where the defendant’s conduct has been egregious).


• Pre-and post-judgment interest and legal costs.

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