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Intellectual Property Litigation

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  • Key Contacts
  • Recent Experience
  • Recent Recognition
  • Insights, News & Events
  • Download PDF
  • Recent Experience
  • Recent Recognition
  • Insights, News & Events

Protecting and enforcing intellectual property rights is a critical business imperative to our clients. Our litigation team is regularly retained to assist a diverse client base with disputes arising from the misuse or misappropriation of intellectual property across a broad spectrum of the arts and sciences. We act as counsel in matters involving confidential information, trade secrets, patents, trademarks, passing off, copyrights and registered designs. We also litigate matters which deal with anti-piracy issues, personality rights, defamation and commercial disputes which involve, at their core, the ownership and exploitation of intellectual property.

IAM Top Patent Firms in Canada

"... the IP litigation department knows what it takes to prevail in even the most fraught pharmaceutical and biotech disputes"

In patent matters, our team has particular expertise in the areas of pharmaceuticals, telecommunications and all manner of mechanical devices ranging from household appliances to complex technology used in the petro-chemical and oil sands sectors. In copyright matters, our clients rely on us to solve disputes involving software, music, artwork, film and television rights and copyright issues arising from the Internet. In trademark and unfair competition matters, we litigate infringement issues in numerous goods and services fields, including issues arising from the registration of conflicting domain names and website misuse.

We blend extensive intellectual property expertise with renowned litigation skills to address the full spectrum of intellectual property litigation. We appear as counsel before all levels of the Canadian courts and before international tribunals to effectively protect our clients' intellectual property assets.

Our intellectual property litigators work closely with our solicitors and patent and trademark agents, many of whom possess advanced degrees in the precise fields in which our clients operate. Recognizing that many litigation disputes are settled prior to trial, our commercial expertise in technology transactions provides yet another valuable set of skills to the negotiation and settlement of litigation. Our team approach to litigation ensures that we provide the most timely, effective and innovative support to our clients.

We view litigation as one of the many means available to achieve our clients' objectives. We are always conscious of those objectives and seek to explore other alternatives to litigation that may be available so as to arrive at the quickest and most economical solution. However, when litigation appears to be the best option, we are fierce advocates for our clients.

Key Contact

  • Dominique T. Hussey Dominique T. Hussey, Vice Chair and Toronto Managing Partner
  • Related Lawyers

Recent Experience

Canadian Natural Resources Ltd (CNRL), in a patent infringement/patent validity lawsuit by Maoz Betser-Zilevitch.
A natural foods products company, in a multi-million dollar claim against a multinational food company for misuse of confidential information and breaches of product development and license agreements. New Era Nutrition Inc. v. Balance Bar Company, 2010 ABCA 169
Agropur Cooperative, in an application to the Ontario court to enforce a restrictive covenant involving Parmalat's trademark.  Agropur Cooperative v. Parmalat Dairy & Bakery Inc. (Court File No. 07-CV-328949 PD2).
An oilfield service company, in successful arbitration proceedings dismissing claims arising from a patent license dispute concerning certain downhole technology.
Application involving patent infringement and invalidity on behalf of respondent culminating in discontinuance in Boehringer Ingelheim (Canada) Ltd. v. Novopharm Limited Court File No. T-196-05
Auro Pharma, in patent litigation proceedings commenced by GlaxoSmithKline. Court File No. T-1766-13
Canadian Motion Pictures Distributors Association, in an application to the Federal Court to expunge copyright registrations. Court File No. T-1534-08
CFM Corporation, alleged infringer, in a trial and appeal in a patent covering electric fireplaces. Dimplex North America Limited v. CFM Corporation 2006 FC 586; 2007 FCA 278
Driangle Inc., alleged infringer, in a patent covering architectural mouldings, resulting in dismissal of the action and subsequent appeal. Canamould Extrusions Ltd. v. Driangle Inc. (2003), 25 C.P.R. (4th) 343; Canamould Extrusions Ltd. v. Driangle Inc. (2004), 30 C.P.R. (4th) 129
Ferrero S.p.A, in a trademark opposition against Cantarella Bros Pty Limited regarding the trademark NUTINO (1353327). Ferrero Spa v Cantarella Bros Pty Limited 2012 TMOB 45
GWP Branding Inc., in successfully obtaining Norwich orders to compel disclosure of IP addresses and identity and contact information associated with the IP addresses.
Hemosol Corp., acted for the licensor, ProMetic BioSciences, Inc., in the Companies' Creditors Arrangement Act restructuring of Hemosol Corp. Hemosol Corp. (Re), 2007 ONCA 124
Lionhead Engineering and Consulting Limited, the applicant, in the protection of their real time regulatory compliance software system.
Marc Anthony Cosmetics, Inc., in a trademark and trade dress infringement, passing off and unfair competition Federal Court action launched by Moroccanoil.
MGM Well Service, Inc., patentee, in obtaining default judgment for patent infringement against a competitor in respect of a plunger lift system.
Monsanto Company, the patentee, in the enforcement of a gene patent against an infringer, in a landmark decision in the field of biotechnology by the Supreme Court of Canada which confirmed that gene modifications are patentable subject matter. The proceedings attracted significant legal and social commentary, culminating in the staging of Seeds (Schmeiser v. Monsanto), a documentary play authored by Annabel Soutar which dramatized the legal dispute using actual transcripts from the Court proceedings. Monsanto Canada Inc. v. Schmeiser, 2004 SCC 34
Monsanto Company, the patentee, in the quantification of an accounting of profits award which was assessed at a sum greater than the technology licensing fee, thereby providing a disincentive to infringe Monsanto's patents. Monsanto Canada Inc. v. Rivett, 2009 FC 317; 2010 FCA 207
Novopharm Limited in successfully resisting an application for judicial review of actions taken by the Minister of Health. Novopharm retained regulatory approval to sell drug in Canada. Ferring Inc. v. Canada (Health) 2007 FC 300
Novopharm Limited, respondent drug manufacturer, in connection with applications by a competitor to prohibit the Minister of Health from issuing a Notice of Compliance to Novopharm for the drug raloxifene. Application dismissed and the Notice of Compliance issued. Eli Lilly Canada Inc. v. Novopharm 2009 FC 235; 2009 FC 301
Novopharm Ltd., in a breach of contact Ontario Court action involving Apotex Inc. and the drug Nizatidine.  Apotex Inc. v. Novopharm Inc. (Court File No. 98-CV-160140)
Novopharm Ltd.,  in two patent infringement and unfair competition Federal Court actions involving Eli Lilly and Company and Apotex Inc..  These disputes related to the drug Nizatidine. Eli Lilly and Company v. Apotex Inc. and Novopharm Ltd. (Court File No. T-1697-01); Eli Lilly and Company v. Apotex Inc. and Novopharm Ltd. (Court File No. T-1100-97)
Paradigm Software, in an infringement action, which utilized an Anton Piller-style injunction application, against a software company that was selling copyright-infringing software, based on Paradigm's system.
Raydan Manufacturing Ltd., alleged infringer, in a patent covering truck suspensions, resulting in dismissal of the action. Emmanuel Simard & Fils (1983) Inc. v. Raydan Manufacturing Ltd. 2005 FC 973.   
Research In Motion Limited (RIM) in successfully defeating an application for damages and an injunction relating to RIM's use of BBM in association with its BlackBerry Messenger service. BBM Canada claimed trade-mark infringement, passing off and depreciation of goodwill against RIM. All claims against RIM were dismissed, with costs awarded to RIM. BBM Canada v. Research In Motion Limited, 2012 FC 666
Research In Motion Limited, in an application to the Federal Court to vary entries in the records of the Canadian Patent Office for two purchased patents.
Research In Motion Limited, in successfully obtaining an interim and interlocutory injunction to restrain the sale of counterfeit replacement parts.
Sawmill Creek Golf and Country Club Ltd., alleged infringer, in copyright claims relating to photographs, resulting in dismissal of the action and subsequent appeal. Ritchie v. Sawmill Golf and Country Club Ltd. (2003), 27 C.P.R. (4th) 220; Ritchie v. Sawmill Golf and Country Club Ltd. (2004), 35 C.P.R. (4th) 163
Sears Brands, LLC, in a trademark opposition brought by GetThere L.P. regarding trademark HELPING YOU GET THERE FASTER. GetThere LP v. Sears Brands, LLC 2013 TMOB 3
Sears Canada Inc., in a copyright infringement action brought by L.A. Printex Industries. L.A. Printex Industries, Inc. v. Sears Canada Inc. et. al. (Court File No. T-1716-10)
Sears Canada Inc., in a copyright infringement action brought by Northern Reflections. Northern Reflections Ltd. v. Sears Canada Inc. (Court File No. T-408-11)
Sears Canada Inc., in a trademark opposition against With You, Inc. regarding trademark JS BY JESSICA. Sears Canada Inc. v. With You, Inc.  2012 TMOB 81
Sears Canada Inc., in defending a trademark infringement action, culminating in discontinuance. Caplan Industries Inc. v. Sears Canada Inc. et. al. Court File No. T-2012-09
Sobeys Inc., defendant/respondent, in an infringement claim made by a registered trade-mark owner, resulting in the dismissal of the action and subsequent appeal primarily because plaintiff's survey evidence was successfully challenged. Tradition Fine Foods Limited v. Oshawa Group Limited, 2005 FCA 342; Tradition Fine Foods Ltd. v. The Oshawa Group Ltd.,2004 FC 1011
Swamp Mats Inc. and Sterling Lumber Company, defendants in a patent infringement action, in a patent infringement claim made by a competitor in respect of bolted three-ply temporary road mats. Summary judgment was granted on the basis of the evidence obtained during cross-examination of one of the plaintiffs. Sterling Lumber Company v. Harrison, 2010 FCA 21
TELUS Corporation, in trademark oppositions brought by Shaw Telecommunications Inc. regarding the trademarks OPTIK and OPTIK TV DESIGN.
Teva Canada, in a structural obviousness case (Ezetimibe) Merck-Frosst Schering Pharma GP v. Canada (Health), 2010 FC 933 (with an aggressive chemical structural invalidity obviousness position which, at the time, had not succeeded anywhere in the world); succeeded on all pre-hearing motions.
Teva Canada, on novel argument for patent invalidation on behalf of respondent in G.D. Searle & Co. v. Novopharm Limited 2007 FC 81 Date (January 24, 2007); overturned on factual grounds in 2007 FCA 173, but novel ground remained intact until overturned in a subsequent, unrelated case.
The Canadian Copyright Licensing Agency, in copyright infringement actions against various individual and corporate defendants. The Canadian Copyright Licensing Agency v. Apex Copy Centre et al. (Court File No. T-1788-04),  Canadian Copyright Licensing Agency v. Keele Copy Centre Inc. et al. (Court File No. T-1333-09), Canadian Copyright Licensing Agency v. Triple Sound Investments Ltd. et al. (Court File No. T-1328-09), Canadian Copyright Licensing Agency v. 1758543 Ontario Inc. et al. (Court File No. T-1329-09) and Canadian Copyright Licensing Agency v. Duc Tinh Nguyen (Court File No. T-2214-07)

Recent Recognition

Chambers Canada: Canada's Leading Lawyers for Business
Ranked, Intellectual Property: Litigaiton
Ranked, Intellectual Property
Chambers Global The World's Leading Lawyers for Business
Ranked, Intellectual Property
The Legal 500 Canada
Ranked, Intellectual Property
The Canadian Legal Lexpert Directory
Consistently recommended, Intellectual Property, Calgary
Consistently recommended, Intellectual Property, Edmonton
Repeatedly recommended, Intellectual Property, Toronto
Global 100 Most Sustainable Corporations in the World
Recognized as Intellectual Property Law Firm of the Year - Canada
IAM Patent 1000 The Worlds Leading Patent Practitioners
Ranked in the categories of prosecution and transaction/litigation

International Legal Alliance Summit Awards (ILASA)
Recognized as Best Canadian Law Firm
Managing Intellectual Property
Ranked, leading Canadian firm, Trade Mark Contentious & Trade Mark Prosecution
WTR 1000 The World's Leading Trademark Professionals
Recognized as a leading firm in Trademark Law - Canada

Insights, News & Events

Announcements

Bennett Jones in Chambers Global 2021

February 22, 2021
       

Articles

Dominique Hussey and Jeilah Chan in WTR's Trademark Litigation 2021

January 14, 2021
       

Announcements

Bennett Jones Sponsors Women in Litigation Forum Toronto 2020

October 27, 2020
       

Speaking Engagements

Introduction to Intellectual Property: Theoretical Frameworks

September 30, 2020
       

Announcements

Bennett Jones is Recognized in Chambers Canada 2021

September 10, 2020
       

Announcements

Bennett Jones’ 2020 MIP IP STARS

June 01, 2020
       

Announcements

Bennett Jones in WTR 1000

June 01, 2020
       

Announcements

Fifteen Bennett Jones Lawyers in Lexpert's Special Edition on Technology

May 13, 2020
       

Blog

COVID-19: What Deadlines Apply for the Protection of Intellectual Property Rights Now

April 29, 2020
       

Speaking Engagements

Jeilah Chan on Trademark Litigation: How to achieve fast and effective results

April 24, 2020
       

Blog

Suspension of Limitations Periods in British Columbia in Response to COVID-19

March 28, 2020
       

Announcements

Dominique Hussey Wins Outstanding Patent Practitioner for Americas

March 27, 2020
       

Blog

Ontario Suspends Limitation Periods and Litigation Time Limits During COVID-19 Crisis

March 24, 2020
       

Blog

COVID-19: What Deadlines Apply for the Protection of Intellectual Property Rights Now?

March 20, 2020
       

Announcements

Bennett Jones in Chambers Global 2020

February 13, 2020
       

Announcements

Bennett Jones: Canada’s Leading Litigation Lawyers

November 29, 2019
       

Blog

FTC Crackdown on Health Claims for CBD Products and the Canadian Side of the Story

September 19, 2019
       

Speaking Engagements

Martin Sorensen on Tax and Intellectual Property Transactions

September 13, 2019
       

Speaking Engagements

TAP Session: Acquiring Intellectual Property

September 10, 2019
       

Speaking Engagements

TAP Session: Exporting from Canada: Legal Considerations

September 10, 2019
       

Articles

Best Practice in Litigation Strategies: Global Perspectives

August 01, 2019
       

Announcements

Dominique Hussey a Top 250 Women in IP for Fourth Year in a Row

May 24, 2019
       

Speaking Engagements

Jeilah Chan on Trademark Litigation: Applications and Interlocutory Injunctions

May 02, 2019
       

Speaking Engagements

How to Protect Your IP

March 2019
       

Announcements

Bennett Jones Continues to Impress in WTR 1000 Rankings

January 31, 2019
       

Blog

OSFI Advisory of Interest to Federal Credit Unions—Incident Reporting

January 29, 2019
       

Blog

It’s Finally Happening—Major New Trademark Law Takes Effect in Canada on June 17, 2019

January 17, 2019
       

Articles

Breach Notification Rules Under GDPR, PIPEDA and PIPA

December 2018
       

Articles

Understanding the GDPR - Comparing Consent Provisions to PIPEDA, PIPA and CASL

December 2018
       

Speaking Engagements

Advocates Society 2018

November 29, 2018
       

Updates

Introducing the U.S.-Mexico-Canada Agreement (USMCA)

October 04, 2018
       

Speaking Engagements

Introduction to Intellectual Property: Theoretical Frameworks

September 15, 2018
       

Speaking Engagements

Introduction to Intellectual Property: Theoretical Frameworks

September 13-15, 2018
       

Announcements

Robert McDonald, Q.C. Joins Bennett Jones as Partner in Edmonton

June 13, 2018
       

Speaking Engagements

Intellectual Property Institute of Canada CLE on Trademark Review: Summary Judgment and Interlocutory Injunctions

May 04, 2018
       

Announcements

Dominique Hussey a Top 250 Women in IP for Third Year Running

May 01, 2018
       

Announcements

Four Bennett Jones Lawyers 2018 MIP IP STARS

April 19, 2018
       

Speaking Engagements

Protecting Your Intellectual Property Interests and Finding Opportunities in Insolvency

April 09, 2018
       

Speaking Engagements

Tips and Tricks for Drafting Invention Disclosure Forms

March 2018
       

Blog

Intellectual Property Meets Real Property: Recent Copyright Infringement Cases

November 02, 2017
       

Speaking Engagements

Primer on Copyright Law

September 30, 2017
       

Blog

Open Court Principle Means No Secret Proceedings If They Would Directly Affect a Competitor's Rights

September 29, 2017
       

Blog

Funding Arrangements in Private Litigation Are Private Matters—Not to Be Scrutinized by the Federal Court or the Defendant

September 22, 2017
       

Blog

Pharma and Biologic Disputes in Canada – New Regulations Take Effect September 21, 2017

September 14, 2017
       

Blog

Stand and Deliver—Federal Court Enforces Trademarks For "Stork" Lawn Signs Announcing New Births

August 30, 2017
       

Blog

No Second Chance: Default Judgment Stands Against Infringers without a Reasonable Explanation for their Delay

August 18, 2017
       

Blog

AT&T's GO PHONE Trademark Registration Saved by Roaming Services Offered in Canada

August 11, 2017
       

Blog

The Best Defence Is a Good Offence: How to Get Rid of Threatening Trademark Registrations

August 04, 2017
       

Blog

Going to California—Google Asks U.S. Court to Declare Supreme Court of Canada's Global Injunction Unenforceable

July 28, 2017
       

In the News

Dominique Hussey in Bloomberg on Canada's Pharmaceutical IP Rules

July 26, 2017
       

Blog

Pharma and Biologics Disputes in Canada—Big Changes for Big and Small Molecule Litigation

July 20, 2017
       

Blog

University's Infringing Reproductions Fall Short of Fair Dealing

July 14, 2017
       

Updates

Now You See It, Now You Don't: SCC Upholds Worldwide Injunction That Alters Google Search Results

July 12, 2017
       

Blog

Procure and Enforce—Canada's Highest Court Hands IP Owners Two Wins in Three Days

July 07, 2017
       

Blog

United Airlines Grounds Complaint Website

June 28, 2017
       

Blog

Captain Morgan Defeats Admiral Nelson in a Rum Branding Battle

June 22, 2017
       

Blog

Federal Court Strikes Patent Infringement Action Where Plaintiff Could Not Articulate How Its Rights Were Infringed

June 16, 2017
       

Blog

Tips to Set Your Business up for Successful IP Litigation

June 09, 2017
       

Announcements

Bennett Jones Shines in IAM Patent 1000

June 06, 2017
       

Blog

US Supreme Court Ruling on Exhaustion of Patent Rights is Welcome News for Canadian Exporters of Refurbished Goods

June 02, 2017
       

Announcements

Dominique Hussey Again Named to Top 250 Women in IP in the World

June 02, 2017
       

Speaking Engagements

Intellectual Property Institute of Canada CLE on Trademark Litigation: Applications and Injunctions

June 02, 2017
       

Blog

Evidence of Actual Confusion Is Not Determinative in Trademark Infringement Cases

May 26, 2017
       

Blog

Unique but Not Distinctive–Colour and Shape Trademark Applications Rejected for Asthma Inhalers

May 18, 2017
       

Speaking Engagements

Sébastien Gittens speaks at ANHIX 2017 Spring Symposium & AGM

May 17, 2017
       

Blog

Higher Costs Awards for the Winning Party in Federal Court IP Cases

May 12, 2017
       

Blog

IP Trials with Less Tribulation: New Federal Court Guidelines Promote Cooperation and Efficiency

May 03, 2017
       

Blog

An Obligation to Compensate a Patentee for Infringement May Not End When the Patent Expires

April 28, 2017
       

Speaking Engagements

Intellectual Property Institute of Canada CLE on Confidentiality, Conflicts and Ethical Advertising

April 25, 2017
       

Blog

Just How Predictable Must the Invention Be to Lose Patent Protection? Depends on the Inventive Concept

April 21, 2017
       

Blog

Yes—Copying Photographs from the Internet Can Get You into Trouble

April 12, 2017
       

Publications Section

Yes—Copying Photographs from the Internet Can Get You into Trouble

April 12, 2017
       

Blog

Why Brand Owners Need to Keep a Paper Trail

April 07, 2017
       

Blog

When Will Expert Evidence Be Excluded?

March 30, 2017
       

Announcements

Four Bennett Jones Practices Ranked Band 1 by Chambers Global 2017

March 16, 2017
       

Updates

Federal Court Cracks Down on Intentional Infringement with $1 Million Punitive Damages Awards

March 08, 2017
       

Blog

Canadian Playground Fight Highlights the Importance of Industrial Design Protection

January 26, 2017
       

Articles

Canada - Trademark Litigation 2017

December 19, 2016
       

Speaking Engagements

Primer on Remedies in IP Infringement Cases

November 30, 2016
       

Articles

Chambers Practice Guides Life Sciences

November 25, 2016
       

Speaking Engagements

Introduction to Intellectual Property - Theoretical Frameworks 2016

September 15-17, 2016
       

In the News

Dominique Hussey in National Post Top 250 Global IP StarsPublication or News and Event

June 06, 2016
       

Announcements

Dominique Hussey named to Top 250 Women in IP in the world

May 24, 2016
       

Articles

Intellectual Property Litigation: Forms and Precedents

April 19, 2016
       

Speaking Engagements

Canadian Corporate Counsel Association National Meeting 2016

April 04, 2016
       

Speaking Engagements

National Privacy and Data Governance Congress

March 31, 2016
       

In the News

Two Bennett Jones Lawyers Recognized as Outstanding Canada IP Practitioners for 2016

March 30, 2016
       

Speaking Engagements

Intellectual Property Law in a Business Context

March 17, 2016
       

Speaking Engagements

University of Alberta Faculty of Engineering Intellectual Property Law Presentation

March 10, 2016
       

Speaking Engagements

Intellectual Property Institute of Canada - CLE on Appeals to the Federal Court

March 09, 2016
       

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