Canada: 2023 Year In Review: Intellectual Property Litigation In Canada

2023 saw several important developments in Canadian intellectual property litigation. Below, we discuss sev eral of these topics, including the court placing limits on summary trials, counsel's involvement in drafting expert reports, the availability of a permanent injunction, and others.

Weather Encountered in Summary Proceedings

2023 brought mixed outcomes in summary proceed ings, with the Federal Court questioning the availability of summary proceedings in two patent cases, but not in two trademark and copyright cases.

In Meridian Manufacturing v. Concept Industries¹ – a proceeding claiming patent infringement and coun terclaiming invalidity – both parties sought summary judgment. The Federal Court concluded that the infringement question could not be determined without a trial as, in part, there was a fundamental disagree ment between the parties on the essential elements of the claim. Moreover, the Court saw the differences on both infringement and invalidity between the parties' witnesses, and the credibility of those witnesses, as bet ter explored at trial.

In Noco v. Guangzhou Unique Electronics,² a summary trial seeking judgment that the patent was not infringed was dismissed. The Federal Court found that the mov ing party had not met its burden of demonstrating that the Court should decide the issues summarily. The issues raised by the moving party were regarded as not suit able for summary trial, and the Court was not satisfied that summary disposition would assist with the efficient resolution of the action. The Court found that there was insufficient evidence for adjudication of the issues raised, and, accordingly, that it would be unjust to decide the issues summarily. The Court recognized that reserving multiple days for a summary trial in patent cases to allow the Court to hear viva voce evidence from experts could, in some cases, result in delay and expense that would not be in keeping with the objectives of Rule 3 – that inter pretation of the Court's procedural rules be applied so as to secure the just, most expeditious, and least expen sive determination – and in keeping with the principles of proportionality.

In Dermaspark v. Patel,³ the Defendants sought, by summary trial, an order dismissing the counterfeit trademark and copyright claims advanced. The Federal Court found that summary trial was appropriate and determined the infringement claims on their merits. The Defendants' motion was dismissed, and judgment was granted in favor of the Plaintiffs. In doing so, the Court observed that conflicting evidence and credibility issues do not preclude summary trial unless it would be unjust to decide the issues without trial.

In Techno-Pieux v. Techno Piles,⁴ earlier summary judgment motions in relation to infringements of the Plaintiff's trademark rights and copyright had been brought by both parties, and, in respect of the appli cable factors to be considered on trademark confusion, the Federal Court had found on most, but not all of the factors, seeing the unresolved factors as appropriate for summary trial. The parties thereafter agreed that a summary trial was the appropriate manner in which to resolve the Plaintiff's claims.

Footnotes

1. Meridian Manufacturing Inc. v. Concept Industries Ltd., 2023 FC 20.

2. Noco Company, Inc. v. Guangzhou Unique Electronics Co., Ltd., 2023 FC 208.

3. Dermaspark Products Inc. v. Patel, 2023 FC 388.

4. Techno-Pieux Inc. v. Techno Piles Inc., 2023 FC 581

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Previously published in the March/April 2024 edition of IP Litigator.

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