Recent Developments in Intellectual
Property Remedies in Canada
There have been a number of recent noteworthy deci- sions relating to remedies in Canadian intellectual property (IP) matters that will likely have an impact
on future cases in Canada. We discuss several such decisions
A New Willingness to Grant Interlocutory Injunctions?
For many years, it has been difficult to obtain interlocutory
(or pre-trial) injunctions in IP matters in the Federal Court
of Canada. The Court’s reticence to grant such injunctions
has been rooted in the “irreparable harm” element of the
applicable test, and the requirement that there be “clear and
not speculative” evidence of such harm. Although there have
been informal signs from the Court in recent times that it
is willing to grant interlocutory injunctions in appropriate
circumstances, to date there have been very few cases where
such injunctions were granted.
In February 2015, the Federal Court granted an interlocutory
injunction in a trademark infringement case.1 The plaintiff
had established “irreparable harm” in part by demonstrating
that it would be impossible to quantify the plaintiff’s damages from the loss of its trademark’s distinctiveness due to the
alleged infringement. The decision may ultimately open the
door for interlocutory injunctions in other appropriate trademark cases in Canada, and possibly IP cases more generally.
A Nuanced Approach to Permanent Injunctions in Cases of
Typically, a successful plaintiff in a patent infringement
action is entitled to a permanent injunction enjoining the
defendant from making, constructing, using and selling to
others the invention of the patent.
In a case involving a biologic drug product, the Federal Court
granted a limited permanent injunction restricting the de-
fendant’s marketing of the infringing drug, but allowing the
defendant to continue providing the drug to existing and new
patients and continue providing patient support.2 The Court
accepted evidence that removal of the infringing product
would deprive patients access to an effective medicine for
which there was no exact alternative. 3 In rendering the deci-
sion, the Court attempted to balance the plaintiff’s rights in
the patented medicine and the public’s medical need to have
continued access to the infringing product. 4
Accounting of Profits in Trademark Infringement Cases
An accounting of profits is an equitable remedy which may
be available to a successful plaintiff in Canada, at the discretion of the Court. The purpose of an accounting is to compel
the infringer to divest the unlawful earnings it received as a
result of the infringement. This is contrasted by an award of
damages, which is to put the plaintiff in the position it would
have been in but for the infringement.
In March 2015, the Federal Court held that a successful plaintiff was entitled to an accounting of the defendant’s profits in
a trademark infringement case. 5 For the first time in many
years, the Court conducted an in-depth assessment of the
issue of entitlement to profits in the trademark context. The
Court’s decision will likely become a significant precedent for
Canadian litigants in similar contexts.
As discussed above, there have been a number of recent
noteworthy decisions relating to legal remedies in Canada. It
will be interesting to see how these decisions will be applied
in future cases in 2015 and beyond.
1 See Reckitt Benckiser LLC v Jamieson Laboratories Ltd, 2015 FC 215, Brown J. The defendant has
appealed this decision to the Federal Court of Appeal, which has stayed the injunction pending the
outcome of the appeal.
2 See AbbVie Corp v Janssen Inc, 2014 FC 489, Hughes J, rev’d on different grounds 2014 FCA 241 and
2014 FCA 242. The Federal Court of Appeal set aside Hughes J.’s decision, and ordered a new trial, but
without comment on the scope of the injunction granted. The case later settled before a leave application
to the Supreme Court of Canada was decided or further trial took place.
3 The case demonstrates the unique nature of biologics, where products may compete with respect to
treatment, but do not contain identical active medical ingredients.
4 The Court noted that there were some patients for whom there is no alternative to the infringing
5 See Philip Morris Products SA v Marlboro Canada Ltd, 2015 FC 364, de Montigny J. The defendant has
appealed this decision to the Federal Court of Appeal.
JEREMY WANT is a partner in the Ottawa
office of Smart & Biggar where he has over
15 years of experience with intellectual
DANIEL WHALEN is an associate in the Ottawa office of Smart & Biggar where his practice
focusses on litigation relating to patents, trademarks, industrial designs and copyright.
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