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When to Apply and When to File an Action—The Pros and Cons of Commencing Trademark Litigation in Canada’s Federal Court via a Notice of Application

Lorraine M. Fleck

©2017. Published in Landslide, Vol. 9, No. 6, July/August 2017, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

In 2011, Canada’s Federal Court of Appeal ruled in BBM Canada v. Research in Motion Ltd.1 that trademark litigation could be commenced via the Federal Court’s summary application process. Previously, trademark litigation was only commenced via the standard and considerably lengthier procedure for actions. The BBM appeal provided trademark owners with an option to enforce their rights in a potentially more expeditious and cost-effective manner. However, there are circumstances when launching an application may not be advantageous and the action route may be preferred. For example, recent grants of interim injunctions2 by the Federal Court in trademark disputes—reversing a long-standing trend where the court did not grant such relief—may make proceeding via an application less desirable in certain circumstances. This article examines the various factors to be considered in deciding whether to commence trademark litigation in Canada via an application or the more traditional route of an action.

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