David McLauchlan is an associate within the Intellectual Property Practice Group. He works chiefly in the areas of health and life sciences. He advises clients on drafting and negotiating research agreements, as well as on issues related to regulatory responsibility, ethics and compliance.
Cease and desist letters are an important part of a lawyer’s tool kit: they notify the recipient of a claim, and ideally lead to the client resolving an issue without litigation. However, receiving such a letter can be unpleasant. They may even seem excessive, as if they were intended to achieve the maximum possible threatening effect. In Fluid Energy Group Ltd. v. Exaltexx Inc. (“Fluid v. Exaltexx”), Justice McHaffie of the Federal Court found that that indeed appeared to be the intention of Fluid’s letters, taking the unusual step of issuing an injunction ordering Fluid not to communicate with Exaltexx’s suppliers with respect to such suppliers’ alleged infringement of Fluid’s patents.
Where is the line between an appropriate cease and desist letter and one worthy of an injunction? In the case of letters alleging patent infringement, strangely enough, the answer may lie in section 7(a) the Trademarks Act, which was the basis for Exaltexx’s motion for the interlocutory injunction. That section reads: “No person shall … make a false or misleading statement tending to discredit the business, goods or services of a competitor…” This provision, however, must be read down so as to include only statements relating to the competitor’s intellectual property.
and trade-mark owners whose IP is infringed may seek a variety of remedies
against the perpetrators, including damages, injunctive relief and legal costs.
Psychologically though, destruction and delivery up may provide the most
satisfaction. Specifically provided for in the respective statutes, these remedies allow the successful plaintiff
to either compel the infringer to destroy the counterfeit items under oath or
actually take possession of them. In this post, we survey destruction and
delivery up orders granted and denied in 2019. Overall, the year’s rulings are
mixed, demonstrating that even as the victim of infringement, “you can’t always
get what you want.”
goods are common targets for counterfeiters, as this year’s crop of destruction
and delivery up orders illustrates. Appearing four times before the Federal
Court was Nathalie Marie Tobey, aka Nathalie Henrie. Operating out of a
clandestine retail establishment on Old Yonge Street, Ms. Tobey was accused of
selling counterfeit Givenchy, Louis Vuitton, Dior and Celine merchandise. Her defence was essentially that a
well-informed member of the public would not confuse the goods she was selling
with the plaintiffs’. Justice Norris dismissed this defence as having “no hope
of success whatsoever,” before ordering the delivery up of all goods bearing
the plaintiff’s subject trademarks, at least, those not already seized by the
Toronto Police Service.
Can Canadian Courts Issue Site-Blocking Orders? Prior to last Friday, it would have been unprecedented. With the Federal Court’s decision in Bell Media Inc v GoldTV Services (2019 FC 1432), that is no longer the case.
is a single trial court decision, owners of Canadian copyrights and their
lawyers now have an affirmative answer and even a test to apply to the issue.
relates to two websites, GoldTV.biz and GoldTV.ca, which offered an
unauthorized subscription service allowing users to stream copyrighted content.
The copyright owners and exclusive licensees (Rogers Media Inc., Groupe TVA
Inc. and Bell Media Inc.) objected to this, alleging infringement.
by his, her, or their absence were John Doe 1 and John Doe 2, the respective
operators of the sites. Despite the plaintiff’s diligent efforts, identifying
these entities proved impossible, with the judges in earlier stages of the
proceedings commenting that this was likely due to “obvious efforts to remain
anonymous and avoid legal action by rights holders…”
between were the nation’s internet service providers (ISPs). Indeed, in the
absence of the defendant and faced with ongoing infringement of their rights,
the plaintiffs sought site-blocking orders against eleven major ISPs. Of these,
four consented to the order and four took no position. Distributel and Cogeco
sought to vary the language of the order, and only TekSavvy opposed the order
on the merits.