Jur-IP-diction: appropriate court jurisdiction for common IP dispute
Please note this article is for informational purposes only and does not constitute legal advice. This article does not create or intend to create a solicitor-client relationship between the reader and the initio Technology & Innovation Law Clinic.
There are three main venues for effectively addressing disputes related to Intellectual Property (“IP”): the Federal Court, the Provincial Superior Courts (e.g., the Nova Scotia Supreme Court), and the Small Claims Court. The Federal Court of Appeal and Nova Scotia Court of Appeal serve as the venues of appeal. There are also Tribunals such as the CIPO Patent Appeal Board and Trademark Opposition Board that are competent to handle some matters related to IP.
The three court venues
The Federal Court is established by statute and has clearly delineated jurisdiction that includes many IP matters. It has exclusive jurisdiction over IP registrations including appeals of refusals to grant, expunging, and modifying (e.g., transferring to the person who the court determines should own it.) Infringement (i.e., enforcement of the IP monopoly) can be done in either the Federal Court or the Provincial Superior Court; some provincial Small Claims Courts are able to hear infringement proceedings in damages (although generally not grant injunctions, which are often a key strategic goal in IP litigation), but the Small Claims Court lacks that jurisdiction in Nova Scotia. Disputes regarding contracts assigning IP have to be decided in a Superior Court or Small Claims Court (up to $25,000), except that contract disputes assigning ownership of patents, and presumably other registered IP, can also be decided by the Federal Court in order to decide whether to alter the registrations or as part of infringement proceedings.
Choice of venue for IP proceedings where such exists is ultimately a matter of trial strategy that should be decided with the help of competent litigation council.
What to keep in mind
Some factors to keep in mind include the ease of enforceability of Federal Court judgements throughout Canada and expert judiciary. Since provincial Superior Courts cannot expunge registered IP, starting proceedings in those courts may lower the risk of expungement if a defence based on lack of ownership or related counterclaim succeeds, allowing you to continue to attempt to enforce that IP against other parties. However, the proceedings could still be transferred, or a supplementary, separate application made to the Federal Court. The subject expertise of the Federal Court in IP matters does make it the venue of choice for most lawyers practicing in the space.
