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Intellectual Property Litigation

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

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 Contacts

  • Dominique T. Hussey Dominique T. Hussey, Vice Chair and Toronto Managing Partner
  • Robert (Rob) D. McDonald QC Robert (Rob) D. McDonald QC, Partner, Trademark Agent
  • Jeilah Y. Chan Jeilah Y. Chan, Partner, Trademark Agent
  • 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: Litigation
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

Lorelei Graham Joins Bennett Jones

May 17, 2022
       

Articles

Ted Yoo and Krishen Singh in PCT Network on Broad Specifications in Canada

December 30, 2021
       

Announcements

Dominique Hussey a Finalist for Canadian Patent Litigator of the Year

July 29, 2021
       

Related Services

Intellectual Property Law
Technology Law
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