Issue Of Personal Jurisdiction Over Crown Defendants Still In Play (Intellectual Property Weekly Abstracts Bulletin: Week 0f July 1, 2013)

Edited by Chantal Saunders and Beverley Moore IN THIS ISSUE

Patents

Issue of Personal Jurisdiction over Crown Defendants Still in Play

Safe Gaming Systems Inc. v. Atlantic Lottery Corporation, 2013 FC 217 Safe Gaming Systems commenced a patent infringement action in the Federal Court in respect of a patent that, according to the statement of claim, relates to methods in a computer system for monitoring, regulating and terminating the gambling activities of an individual. Two of the defendants brought a motion to strike out the action on the ground that the Federal Court lacks personal jurisdiction over them as agents of the Crown in right of the province of Nova Scotia, and the Nova Scotia's Proceedings Against the Crown Act requires that the action be brought in the Supreme Court of Nova Scotia. The Court noted that the Federal Court requires a statutory grant of power to exercise jurisdiction, and that the question of whether the Federal Court has jurisdiction over particular subject matter (e.g., patent infringement actions) is distinct from the question of whether it has jurisdiction over a particular party. With respect to the latter, the Court held that section 20 of the Federal Courts Act, section 2.1 of the Patent Act and section 54(2) of the Patent Act, read together, provide a grant of jurisdiction over patent remedies sought against the provincial Crown. The decision was appealed. On May 14, 2013, the appeal was dismissed on the basis that the issue of personal jurisdiction over the Crown defendants is still in play, and may be dealt with at trial, or earlier as a motion for summary judgment or summary trial.

Trade-marks

Summary Judgment Granted in Light of Affidavit Evidence

Moroccanoil Israel Ltd. v. Lipton et al., 2013 FC 667 Moroccanoil brought a motion for summary judgment relating to the infringement of its registered trade-marks (the "Trade-marks") in respect of hair care products against one of the Defendants, Edward Sivitilli. Settlement was reached with the other Defendants. Sivitilli filed a Statement of Defence, denying the allegations. The Court found that Moroccanoil established the claims through affidavit evidence, including that the product sold in association with the Trade-marks was counterfeit, and that harm and damage was caused by the offer for sale of the counterfeit product. In particular, the Court noted that the Defendant was required to put its "best foot forward" and not rely on unsupported statements...