Written by Anthony L. Friend, Q.C., and Michael P. Theroux
If a third party breaches intellectual property rights, it is often not satisfactory to wait for a trial several years later to recover damages. Intellectual property owners usually prefer to stop the third party from infringing their rights to protect the value of the intellectual property. Our courts offer a variety of injunctive remedies that can assist the holders of intellectual property rights in such circumstances.
Interim or Interlocutory Injunction Preventing Infringement of Intellectual Property
A common remedy for breach of intellectual property rights is a prohibitive injunction, a court order that prohibits a third party from continuing to use the intellectual property of the plaintiff . An interlocutory injunction is an order granted before the trial that will ultimately determine the rights between the parties.
There is a three-part test used in applications for interlocutory injunctions. First, a preliminary assessment must be made of the merits of the case, to ensure that there is a “serious question to be tried”. The court must be satisfied that the plaintiff 's claim is not frivolous and that there is at least a reasonable chance that the plaintiff will succeed at trial.
Second, the plaintiff must show that it would suffer irreparable harm if the court refused to grant the injunction. “Irreparable” in this context refers not to the magnitude or size of the harm that would be suffered, but its nature.
Third, the court assesses which of the parties would suffer greater harm from the granting or refusal of the injunction. This part of the test is referred to as the “balance of convenience”.
Since the plaintiff must show irreparable harm to obtain the injunction, it is usually critical that the plaintiff apply for an injunction quickly after learning of the defendant's conduct. If a plaintiff delays its application for an injunction for many months after the defendant's conduct has commenced, the court may infer that the plaintiff will not suffer irreparable harm from the continued conduct of the defendant.
Permanent Injunction Preventing Infringement of Intellectual Property
A permanent injunction is a remedy that can be granted after trial, once the court has heard all the evidence and concluded that the defendant has infringed the plaintiff 's intellectual property rights. Canadian courts have usually been inclined to grant permanent injunctions to remedy infringement of intellectual property rights. The courts reasoning is that, because the plaintiff has proven that it is entitled to the monopoly represented by the intellectual property rights, the defendant should be prevented from infringing those rights for as long as they continue to exist.
Preventing Infringing Conduct Before it Starts – “Quia timet” Injunctions
Quia timet injunctions are designed to prevent harm that has not yet happened but is about to occur.
A plaintiff seeking quia timet injunction must first meet the three-part test for an interlocutory injunction, described above. In addition, the party seeking the injunction must also show a strong probability that the feared conduct and resulting damage will in fact occur.
In the intellectual property context, courts may grant quia timet injunctions if it is apparent that the defendant is about to embark on a course of action that would infringe a plaintiff 's intellectual property rights.
The courts will particularly be inclined to grant quia timet injunctions where there appears to be a clear breach of intellectual property rights, or where the potential harm that could flow should a court order not be granted is difficult or impossible to calculate.
Anton Pillar Injunctions: The Civil Search Warrant
Anton Pillar injunctions are unique in that they are not aimed at preventing infringement of intellectual property rights. Rather, these injunctions are designed to assist the plaintiff in gathering and preserving evidence in support of a claim that intellectual property rights are being breached. In intellectual property cases in particular, a defendant may be in a position to conceal, destroy or alter evidence that otherwise would have served to establish the plaintiff 's claim against the defendant.
The Anton Pillar application is brought without notice to the defendant out of concern that the defendant, if warned about the application, would dispose of incriminating evidence. As a result, the defendant is not given any opportunity to challenge the order sought until after the order has been made and seizure of documents or property has taken place.
There are three requirements to be met for the court to grant an Anton Pillar injunction. First, the plaintiff must demonstrate a very strong case on the merits.
Second, the damage to the plaintiff from the defendant's conduct must be very serious. An Anton Pillar injunction will not be granted for conduct that would result only in trivial harm, or harm that could be remedied by a damages award after trial.
Third, the plaintiff must put forward convincing evidence that the defendant possesses evidence that is clearly relevant to the plaintiff 's claim and that there is a strong possibility that the defendant would hide or destroy the evidence if given notice of the application.
Canadian courts have developed a broad range of injunctive remedies that can be of assistance to intellectual property owners whose rights are being infringed. In the right circumstances, these remedies can prevent infringement of intellectual property rights and protect the value of intellectual property.