IP Litigation and Opposition

Samples of contentious proceedings in which principals of our firm have acted include:

  • Dutch Industries Inc. v. Commissioner of Patents – Challenged the validity of patents asserted in infringement action on the basis that the patentee had claimed small entity status and paid maintenance fees at a small entity level when not entitled to do so. One of the patents was invalidated on this basis in the Trial Division.  This decision is precedential and resulted in the complete overhaul of the Canadian patent maintenance fee and entity system.
  • Columbia Pictures Industries Inc. v. Wang et al. – Acted as counsel to rightsholders in dispute between two movie production companies over acquisition of production and other rights in certain copyright works in the series of Crouching Tiger, Hidden Dragon novels.
  • Pyrrha Design Inc. v. 623735 Saskatchewan Ltd. – Represented Defendant alleged to have infringed the copyright interests of the plaintiffs in numerous jewellery designs. Succeeded in obtaining a first instance summary judgment in the Federal Court Trial Division dismissing the action on the basis of application of Section 64 of the Copyright Act.
  • Mattress Mattress Inc. v. Mattress Mattress (Sask) Inc. – Represented the defendant/respondent in successfully defending against an interim injunction application – dispute arose between two parties exercising rights in the same brand in parallel geographic markets.
  • Automated Tank Manufacturing Inc. v. Bertelsen et al. – Successfully represented defendant/respondent where an interim injunction was sought against them for theft of trade secrets.

The following represent a sampling of trademark opposition matters our team have handled on various grounds:

  • Trailtech Inc v Labbé (Usinage François Landry), 2008 CanLII 88264 (CA TMOB) – Successfully represented opponent in consumer confusion based opposition – TRAILTECH/TREUILTECH;
  • Lofaro v. Esurance Inc., 2010 TMOB 216 (CanLII) – Successfully defended against opposition based on alleged prior usage rights of the same trademark;
  • Buksesnedkeren APS v. Toray Kabushiki Kaisha (Toray Industries, Inc.), 2010 TMOB 222 (CanLII) – Successfully opposed application on consumer confusion grounds – H2O/H2OFF in clothing channel;
  • Hillerich & Bradsby Co v X-Technology Swiss GmbH, 2012 TMOB 212 (CanLII) – Successful in first instance in representing opponent in opposition re BIONIC/X-BIONIC for use in sporting goods.