Injunctions In Canadian Intellectual Property Law – An Overview

Protecting intellectual property (IP) in today’s digital era is more important than ever. If your trademarks, copyrights, patents, or trade secrets are at risk of infringement, injunctions can serve as a powerful tool for enforcement.

Why Are Injunctions Needed?

An injunction is a court order that prohibits a party from taking specific actions. In IP litigation, injunctions are often sought to prevent the unauthorized use of protected rights. For example, they may require the infringing party to cease selling counterfeit goods, or to stop using an unlicensed trademark, patent, or copyrighted material—either temporarily or permanently.

Test To Be Met For Injunctive Relief – Temporary Vs Permanent Injunctions

The two most common types of injunction are temporary (or “interlocutory”) injunctions, and permanent injunctions. Granted before the end of a trial, an interlocutory injunction prevents ongoing or imminent harm, and preserves the status quo. It remains in effect until the final resolution of the case. In contrast, a permanent injunction is issued after a trial concludes, and imposes an indefinite prohibition on the infringing party, preventing them from continuing the wrongful conduct. It’s important to note that the test for obtaining an interlocutory injunction differs from the test applied when seeking a permanent injunction.

For interlocutory injunctions, the applicant must meet the three-part test established by the Supreme Court of Canada in RJR-MacDonald Inc. v. Canada (Attorney General), [1994] 1 SCR 311. This test requires that the applicant demonstrate that there is a serious question to be tried; that there is evidence of irreparable harm; and that the balance of convenience favours the granting of the injunction pending a decision on the merits.

The first element of the test, if there is a serious question, is a low threshold and only requires the court to determine that the issue is not frivolous or vexatious. In its assessment, the court will not engage in an extensive review of the merits, due to the incomplete evidentiary record, and the time-sensitive nature of injunctive relief.

The second element considers whether refusal to grant injunctive relief will have a negative impact on the applicant’s interests and cause harm that cannot be compensated through damages. To meet this element, the applicant must demonstrate through clear and non-speculative evidence that the likelihood of harm is real, definite and unavoidable, and that monetary compensation will not remedy it.

The final element of the test requires the court to determine which party would suffer greater harm from the granting or refusal of the injunction, and whether granting the injunction would be just and equitable. The factors considered at this stage are contextual, and will vary on a case-by-case basis.

For permanent injunctions, the applicant must establish that their rights have been infringed; that damages or other remedies are not sufficient to address the infringement; and that there is no impediment to the Court’s discretion to grant an injunction. This test was outlined by the Federal Court of Canada in Rogers Media Inc. v. John Doe 1, 2024 FC 1082. Much like the factors considered at the third stage of the test applied for interlocutory injunctions, the factors considered here are highly contextual, and will vary on a case-by-case basis.

Other Types Of Injunctions

Beyond interlocutory and permanent injunctions, a party may also seek a mandatory injunction or an Anton Piller Order. These remedies serve specific purposes and are granted independently based on distinct legal criteria.

Unlike prohibitive injunctions, a mandatory injunction compels a party to perform a specific act. In IP cases, this could include halting the sale of infringing goods, or returning misappropriated confidential information.

An Anton Piller Order is a specialized type of injunction that permits the applicant to enter the defendant’s premises to search for and seize evidence of infringement. It is granted in exceptional cases where there is a risk that the defendant may destroy or conceal key evidence.

Contact The Lawyers At Ayaz Mehdi Professional Corporation!

Injunctions are a vital tool for enforcing and preserving your intellectual property rights. Obtaining one requires thorough preparation and strategic legal execution. If you need guidance on protecting your IP, our team offers tailored legal support to help you navigate this complex area of law.

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