Intellectual Property Enforcement & Litigation

At MLT Aikins, we understand the value of our clients’ intellectual property (IP) rights. Our IP litigation team is focused on the protection and enforcement of these rights.

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We serve a diverse client base and handle a wide spectrum of disputes involving the misuse or misappropriation of IP including copyright, internet domain names, patents, industrial designs, plant breeders’ rights, trademarks, trade secrets and confidential information.

IP litigation can be complex and often high-stakes – it requires a strong legal strategy. Members of our team have engineering, science and technology backgrounds, which provide the technical know-how for patent and trade secret cases.

Our lawyers, patent agents and trademark agents understand that IP assets need strategic, careful and constant management. When your IP or business reputation is at-risk, you need a law firm with the capacity to litigate and achieve results.

As a plaintiff asserting IP rights, MLT Aikins can represent you in the Federal Court or in provincial courts.
As an alleged infringer, we can assist you in responding to claims for injunctions, damages and other court orders that could have a profound impact on your business. We can also assist with attacking the validity the IP rights being asserted against you in a counterclaim.

From IP litigation that can make or break your company to the smallest domain name dispute, we collaborate with you to obtain outcomes that match your business goals.

Retaining an experienced team to assist is crucial anytime your IP rights are threatened or litigated. We have particular IP litigation experience in the agriculture, food and agtech, oil and gas, and information technology industries.

Copyright enforcement

Copyright law protects original musical, literary, artistic and dramatic works – typically for the lifetime of the author plus 70 years. While obtaining a copyright registration is not required in order to begin an action for copyright infringement, securing a copyright registration will create the rebuttable presumption that copyright subsists in the work and that the person registered is the work’s owner. In Canada, copyright infringement claims can be commenced in the Federal Court or in provincial courts.

Patent enforcement

Patents are statutory rights that protect inventions. In Canada, the Patent Act provides a patent owner with “the exclusive right, privilege, and liberty of making, constructing and using the invention and selling it to others to be used.” Any act that interferes with the full enjoyment of the rights granted to a patent owner constitutes patent infringement. A person who induces another to infringe a patent may also be liable to the patent owner if certain conditions are present. Patent infringement claims in Canada can be commenced in the Federal Court or in provincial courts. In contrast, a person seeking to impeach a patent, and have it declared invalid or void, must do so in Federal Court.

Trademark enforcement

Trademarks are words, designs and other signs that are used to distinguish the goods or services of an owner from the goods or services of others. According to the Trademarks Act, infringement occurs when another person uses an identical trademark to that registered in association with any of the goods or services listed in the registration. Trademark infringement also occurs when a confusing trademark is used by another person, even if the trademark is not identical or the goods or services offered by the infringer are not identical to those listed in the registration.

An owner can prevent others from using a registered trademark in a manner that is likely to have the effect of depreciating the value of the goodwill attached to it.

Unregistered trademarks may also be enforced in Canada under the common law tort of passing-off. In order to succeed in a claim for passing-off, a plaintiff must prove:

the existence of goodwill;
the deception of the public due to a misrepresentation; and
actual or potential damages to the plaintiff.

Trademark claims may be commenced in the Federal Court or in provincial courts. Trademark owners must monitor and enforce trademark rights, since permitting others to use the same or similar trademarks will result in a narrowed scope of rights, or possibly the loss of trademark rights.

Industrial design enforcement

Canadian industrial design registrations protect the aesthetic look or features of a product. As with copyright, patents and trademarks, the Federal Court and provincial courts have concurrent jurisdiction over industrial design infringement claims.

Trade secret enforcement

Trade secrets are a form of IP rights on confidential information. The information is commercially valuable because it’s secret, and therefore reasonable steps must be taken to keep the information secret (such as through the use of confidentiality agreements, encryption, or lock and key). Properly employed, trade secrets can be an important tool for companies that need an advantage in a competitive market. Canada does not have a trade secrets act or any formal registration process. Instead, trade secret law is based on common law. Provincial courts have jurisdiction over trade secret disputes.

Businesses and entrepreneurs suspecting a breach of IP rights are encouraged to contact an IP litigator at MLT Aikins.