Summary Trial And Other Means Of Adjudicating Intellectual Property Disputes Without A Full Trial

• Law Firm: Gowling WLG
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Trademark, Trials & Appeals & Compensation
• Author: Ms Sarah Li and R. Nelson Godfrey
• Published date: 29 May 2023

It has now been almost 10 years since the Supreme Court of Canada's decision in Hryniak v. Mauldin, 2014 SCC 7, wherein the Supreme Court of Canada unanimously called for a "culture shift" in the way that disputes are litigated in Canada, in favour of summary resolution and other mechanisms that resolve disputes without a full trial.Since that decision, the majority of intellectual property infringement disputes heard by our courts are still litigated with the machinery of a full trial, and viva voce evidence presented to the Court.

While litigants before the Federal Court have not yet firmly embraced the "culture shift" sought by the Supreme Court of Canada, the Federal Court of Canada offers numerous options for parties to litigate their disputes without the machinery of a full trial.

In Techno-Pieux Inc v Techno Piles Inc et al, 2023 FC 581, a comprehensive decision authored by Chief Justice Crampton of the Federal Court of Canada, the Court adjudicated claims for trademark infringement, copyright infringement, depreciation of goodwilland passing-off. Thisrecent decision illustrates the utility of motions for summary trial as a means of litigating intellectual property disputes, and presents a good opportunity to review summary trial and other options available to litigants to resolve intellectual property disputes in the Federal Court of Canada, without the need for a full trial.

Application proceeding

Rather than proceeding by way of action for infringement of its intellectual property rights, an IP owner (called the "applicant" in this context) may instead choose to proceed by way of application served on the alleged infringer (called the "respondent" in this context). Proceeding by way of application is restricted to Affidavit evidence, and there is no documentary or oral discovery available to the litigants.

In BBM Canada v. Research in Motion Limited, 2011 FCA 151, the Federal Court of Appeal held that trademark infringement proceedings could be brought by application rather than by action, overturning a decision of the Trial Division on this issue. While the plaintiff in that case was ultimately unsuccessful in its application for trademark infringement, the decision shows that infringement proceedings may be brought by application rather than by action in appropriate cases.

Proceeding by way of application may be an option where all necessary evidence on all relevant issues is available to the applicant without the need for documentary or oral...