Intellectual Property Law - SCJ

The plaintiff brought a motion under Rule 60.12 of the Rules of Civil Procedure seeking to strike the defendants’ statement of defence for failure to comply with a consent order requiring production of extensive documents and answers to refusals arising from discovery.

Evidence showed the defendants produced only eight irrelevant invoices and had not conducted a search to comply with the order.

On cross‑examination the individual defendant admitted the searches referenced in his affidavit were conducted earlier and not for the purpose of complying with the consent order, and that potentially relevant documents may exist with the company’s accountant and bookkeeper.

The court found the defendants had effectively done nothing to comply and criticized the affidavit evidence as clearly erroneous under oath.

However, the court declined to immediately strike the defence and instead granted a final opportunity to comply within 30 days, coupled with substantial indemnity costs and a security for costs requirement.

The defendants moved to strike the plaintiff’s statement of claim or alternatively to stay the action pending the outcome of related Federal Court litigation concerning damages arising from delayed market entry of a generic pharmaceutical product.

Although the defendants ultimately focused their submissions on striking the claim, the court considered whether a temporary stay should be imposed under s. 106 of the Courts of Justice Act.

The court found substantial overlap between the Ontario action and the Federal Court proceedings, including factual background and issues related to calculation of damages arising from the delayed entry of the generic drug.

A stay would prevent duplication of judicial resources and reduce the risk of inconsistent findings, while causing no significant prejudice to the plaintiff beyond delay.

The court therefore exercised its discretion to stay the action pending the outcome of the appeal in the Federal Court proceedings and any further appeals.

The defendants brought a motion seeking enforcement of an alleged settlement agreement arising from negotiations following a trademark dispute between competing food businesses.

The plaintiffs argued that the correspondence between counsel constituted only ongoing negotiations and not a finalized settlement.

Applying principles of contract formation governing settlements, the court considered whether there was a mutual intention to create a binding agreement and whether all essential terms had been agreed upon.

The court concluded that the correspondence demonstrated continuing negotiations and unresolved essential terms, including timing for the disposal of inventory.

As there was no meeting of the minds on essential terms, no binding settlement contract was formed and there was nothing for the court to enforce.

The defendants brought a motion under Rule 56.01(1)(a) of the Rules of Civil Procedure seeking security for costs against a foreign corporate plaintiff with no assets in Ontario or Canada.

The plaintiff argued it had substantial assets in the United States and that any Ontario costs order could be enforced in California, a reciprocating jurisdiction.

The court held that the defendants met their initial burden because the plaintiff was ordinarily resident outside Ontario.

The plaintiff failed to provide sufficient financial evidence demonstrating its ability to satisfy a potential costs award.

The court therefore exercised its discretion to order staged security for costs while reducing the amount sought by the defendants.

The plaintiff brought a motion seeking findings of contempt against a former employee and his company for failure to comply with prior court orders requiring cessation of competitive activities, return of confidential information, and attendance for mediation and examination.

The evidence showed the individual repeatedly ignored court orders, failed to attend examinations, continued competing using confidential information, and attempted to evade the court’s jurisdiction by travelling abroad.

The court found beyond a reasonable doubt that the defendants were in contempt and that the conduct was deliberate, ongoing, and aggravated by attempts to destroy evidence.

The court imposed significant sanctions including a $50,000 fine, struck the individual’s statement of defence, ordered attendance for discovery, and authorized issuance of a warrant of committal for incarceration if compliance was not achieved.

The plaintiff brought a motion for leave to amend its statement of claim to clarify relief, plead reliance on the Copyright Act, and advance an alternative claim of equitable ownership of copyright.

The defendants opposed the amendments, arguing that the litigation timetable had already been established and that equitable ownership of copyright was not recognized in Canadian law.

The court applied Rule 26.01 of the Rules of Civil Procedure and held that amendments should be permitted absent non-compensable prejudice.

Given that discoveries had not yet occurred and the amendments arose from the same factual matrix as the original breach of contract claim, the court found no prejudice.

The court further held that the novel equitable ownership argument was not clearly incapable of success and therefore should not be struck at the pleading stage.

Innovator pharmaceutical companies brought a motion for partial summary judgment seeking dismissal of a generic manufacturer’s claim for disgorgement of revenues or profits based on unjust enrichment.

The claim arose from alleged wrongful invocation of the Patented Medicines (Notice of Compliance) Regulations, which had delayed the generic manufacturer’s market entry for a drug containing lansoprazole.

The court held that s. 8 of the NOC Regulations constitutes a complete statutory code governing compensation for delayed market entry and excludes equitable remedies such as disgorgement of innovators’ profits.

The Federal Court of Appeal’s decision in Apotex v. Eli Lilly Canada Inc. was followed as highly persuasive authority confirming that Parliament deliberately excluded profit disgorgement through the 2006 amendments to the Regulations.

In any event, the statutory framework and the parties’ settlement agreement each constituted juristic reasons defeating the unjust enrichment claim.

The plaintiffs brought a motion seeking an interlocutory injunction restraining the defendants from allegedly passing off their gym business as affiliated with the plaintiffs' boxing and fitness business.

They also sought declarations regarding an alleged website sabotage, orders compelling third‑party production relating to a domain name, and further document production.

Applying the three‑part test for interlocutory injunctions from RJR‑MacDonald Inc. v. Canada (Attorney General), the court found there was a serious issue to be tried but concluded that the plaintiffs failed to establish irreparable harm and that the balance of convenience favoured the defendants.

The court held that the plaintiffs’ evidentiary record relied heavily on hearsay from a marketing consultant rather than affidavits from individuals with direct knowledge.

The court dismissed the motion in its entirety, including the requests for declaratory and production relief.

Following earlier interlocutory proceedings involving an injunction and Anton Piller order in a dispute concerning confidential engineering information and alleged misuse of intellectual property, the court determined the appropriate costs awards.

The responding party sought costs for obtaining the ex parte injunction and Anton Piller order and for successfully resisting a motion to set them aside.

Applying the factors in Rule 57 of the Rules of Civil Procedure, including success, complexity, proportionality, and reasonable expectations of the losing party, the court found the hourly rates and claimed time generally reasonable.

Although the moving parties achieved limited success in varying certain terms of the Anton Piller order, the injunction and order were maintained.

The court awarded partial indemnity costs to the responding party for the initial ex parte motion and the motion to set aside, with costs of a later motion left in the cause.

The plaintiff surveying firm sought certification of a proposed class action alleging that the operator of Ontario’s electronic land registry system infringed surveyors’ copyright in registered plans of survey by scanning, storing, and selling digital copies through online portals.

The motion was brought under s. 5 of the Class Proceedings Act, 1992.

The court held that although a cause of action for copyright infringement was adequately pleaded (with the exception of allegations based on “translation” into digital formats), the plaintiff failed to satisfy the remaining certification criteria.

The proposed class definition was merits‑based and there was no evidence that two or more persons wished to pursue the claim.

The court also found that the proposed common issues were largely individualized, particularly regarding ownership of copyright and consent, and that a class proceeding would not be the preferable procedure.

Following judgment finding the defendant liable for passing off and awarding $10,000 in compensatory damages, the court determined the issue of costs.

The plaintiff sought over $40,000 in partial indemnity costs while the defendant sought costs in its favour due to the plaintiff’s failure to obtain punitive damages.

The court emphasized that costs in simplified procedure actions under Rule 76 must remain significantly lower than those in ordinary procedure and proportionate to the recovery.

Considering the modest damages award, settlement offers, and Rule 57.01 factors, the court found both parties’ proposed costs excessive.

The plaintiff’s costs were fixed at $15,000 inclusive of taxes and disbursements.

The plaintiffs sought interlocutory injunctive relief restraining a former shareholder, director, and employee from using confidential information and soliciting customers following the sale of his shares in a closely held corporation.

The evidence indicated the departing fiduciary took electronic files containing proprietary customer information and immediately solicited key customers after the share sale.

The court found a strong prima facie case of breach of fiduciary duty and unfair competition, notwithstanding the absence of a non‑competition agreement.

Given the likelihood of irreparable harm through loss of goodwill and customer relationships, and the balance of convenience favouring the plaintiffs, injunctive relief was granted.

The injunction restrained the former fiduciary and his corporation from using confidential information and soliciting customers for a limited period pending trial.

The defendants brought motions to set aside an Anton Piller order and to exclude evidence obtained under it, and also sought summary judgment dismissing the action on limitation grounds.

The action alleged an unauthorized SMATV scheme distributing encrypted satellite television programming to hundreds of tenants using residential subscriber accounts, contrary to the Radiocommunication Act, contract, and tort principles.

The court held that the plaintiff established a strong prima facie case and that the Anton Piller order was properly granted, finding no failure of full and frank disclosure.

The court also found that complex factual disputes, credibility issues, and allegations of fraudulent concealment prevented determination of limitation defences on summary judgment.

Both the motions to set aside the Anton Piller order and the motions for summary judgment were dismissed.

Former employees and a competing corporation moved to set aside or vary an interim injunction and Anton Piller order obtained ex parte by their former employer.

The employer alleged the employees copied large volumes of confidential engineering files relating to proprietary sonar technology before leaving to establish a competing business.

The court found strong prima facie evidence of copying confidential files in breach of confidentiality agreements, a risk of serious commercial harm, and a real possibility that electronic evidence could be destroyed.

The balance of convenience favoured maintaining the injunction and preservation measures.

The injunction remained in effect and the Anton Piller order was varied largely on consent while preserving seized materials under the supervision of an independent supervising solicitor.

Following a prior decision granting declaratory relief for infringement under the Trade-Marks Act and Competition Act, the court addressed whether costs should be awarded before the quantification of damages on a reference.

The respondent argued that costs should be deferred until damages were determined in order to respect the principle of proportionality.

The court held that s. 131 of the Courts of Justice Act and Rule 57 of the Rules of Civil Procedure confer discretion to award costs for a proceeding or a step in a proceeding even before damages are quantified.

Given the applicant’s substantial success on liability and the final nature of the declaratory relief, the court ordered that costs be payable forthwith on a partial indemnity basis, while allowing the respondent to make written submissions on the quantum of costs.

The Crown sought an interlocutory injunction preventing the defendant language training business from copying or distributing materials substantially similar to federal Second Language Evaluation tests used for public service hiring.

The court applied the test for interlocutory injunctions and found a serious issue to be tried regarding copyright infringement in Crown-created examination materials.

It concluded that prior access to official test questions would undermine the integrity of the federal language testing regime and cause irreparable harm to the public interest and the Public Service Commission’s mandate.

The balance of convenience favoured protecting the confidentiality of the tests while allowing the defendant to continue operating her business using other materials.

An injunction was granted restraining further use of the protected test content pending trial.

The plaintiff moved to dismiss the action against a settling defendant following a partial settlement in a copyright and passing off action between two artists and an art gallery.

The non-settling defendant opposed dismissal unless the court imposed a term requiring the plaintiff to undertake damages for alleged interference with the defendant’s contractual relationship with the gallery.

The court held that partial settlements must be reviewed for fairness and potential prejudice to non-settling defendants, even if formal approval is not required.

On the evidence, the settlement term restricting the gallery from selling certain works did not prejudice the non-settling defendant because the gallery had already ceased selling those works prior to the settlement due to the allegations in the litigation.

The court dismissed the action against the settling defendant and refused to impose the undertaking sought by the non-settling defendant.

The plaintiff and defendant are competitors in the industrial safety products business, owned by two brothers.

The defendant registered the domain name 'dentecsafety.ca', which was highly similar to the plaintiff's 'dentecsafety.com', and redirected internet traffic to its own website for 5.5 months.

The plaintiff sued for passing-off, seeking compensatory and punitive damages.

The court found that the defendant committed the tort of passing-off, as it possessed goodwill, made a misrepresentation causing likely confusion, and caused actual or potential damage.

The court awarded $10,000 in compensatory damages but declined to award punitive damages.

The applicant sought an anti-suit injunction restraining the respondents from continuing a patent and contract dispute before a United States federal court in Illinois.

The respondents alleged that the applicant, as successor to a corporation that had entered a settlement agreement containing an Illinois forum selection clause, was bound by the agreement and had engaged in conduct infringing U.S. patents.

Applying the test in Amchem Products Inc. v. British Columbia (Workers’ Compensation Board), the court held the applicant failed to show that the foreign court assumed jurisdiction inconsistently with forum non conveniens principles or that substantial injustice would result if the foreign proceeding continued.

The Illinois court had jurisdictional connections including U.S. patents, Illinois governing law, and attornment by other defendants.

The application for an anti-suit injunction was dismissed.

The defendants moved to strike parts of the plaintiff's statement of claim, which sought damages for the delay in marketing its generic drug caused by the defendants' actions under the Patented Medicines (Notice of Compliance) Regulations.

The plaintiff claimed damages under s. 8 of the Regulations, unjust enrichment, and the Trade-marks Act after the defendants' patent was declared invalid.

The court dismissed the motion to strike these claims, finding they had a reasonable prospect of success and raised unsettled legal questions, but struck a bald claim for remedies 'otherwise available at law'.