Baker & McKenzie LLP, an Ontario limited liability partnership, is a member firm of Baker & McKenzie International, a Swiss Verein with member law firms around the world. In accordance with the common terminology used in professional service organizations, reference to a "partner" means a person who is a partner, or equivalent, in such a law firm. Similarly, reference to an "office" means an office of any such law firm. © 2014 Baker & McKenzie LLP Red Riding Hood v. Big Bad Wolfe Federal Court Procedure in IP Cases A.2 Federal Court Workshop CBA Legal Conference 2014 St. John’s Newfoundland

The Story

© 2014 Baker & McKenzie LLP 3 Red Riding Hood v. Big Bad Wolfe – The Story ‒ Red Riding Hood owned trade-mark registration for a logo incorporating red hooded cape and basket lined with red gingham-printed cloth ‒ Big Bad (BB) Wolfe obtained trade-mark registration for logo that incorporated blue hooded cape and basket lined with blue gingham-printed cloth ‒ Both operated a bakery and baked goods delivery service

© 2014 Baker & McKenzie LLP 4 Red Riding Hood v. Big Bad Wolfe – The Story ‒ Red Riding Hood retained Three Little Pigs LLP to bring action in Federal Court (FC) for  declaration that BB Wolfe infringes Red’s trade-mark  damages for trade-mark infringement  destruction, or in the alternative, delivery up, of all advertising and promotional materials that contain the infringing trade- mark  preliminary and permanent injunctions requiring BB Wolfe to immediately cease the use of the infringing trade-mark and to prevent continued use in the future

© 2014 Baker & McKenzie LLP 5 Red Riding Hood v. Big Bad Wolfe – The Story ‒ BB Wolfe was uncooperative  delayed delivery of statement of defence  refused to cooperate in scheduling of various procedural motions  refused to cooperate in scheduling the trial dates at the outset of the case instead of waiting until the case was set down for trial

© 2014 Baker & McKenzie LLP 6 Red Riding Hood v. Big Bad Wolfe – The Story ‒ Issue #1: What steps can Red Riding Hood take to better facilitate the progress of her case? ‒ Issue #2: Is a preliminary injunction available to Red?

Issue # 1: Facilitating Case Progression

© 2014 Baker & McKenzie LLP 8 Red Riding Hood v. Big Bad Wolfe – Issue #1 ‒ Federal Courts Rules, R. 384 permits Red to seek to have her case specially managed (otherwise known as case management) ‒ Manages the progress of cases in most efficient manner and not necessarily in strict adherence to timelines or order of steps set out in Rules ‒ Case Management Judge (CMJ) or Prothonotary (CMP) assigned to case and provides active guidance and direction

© 2014 Baker & McKenzie LLP 9 Red Riding Hood v. Big Bad Wolfe – Issue #1 ‒ IP cases rarely refused case management. In fact, FC expects IP cases to be case managed ‒ Case management especially useful  scheduling trial date(s) early and setting schedule for intervening steps from there  early resolution of procedural disputes  easy access to CMJ/CMP through simple phone call or by letter  When in doubt, pick up the phone and call!

Issue #2: Interlocutory Injunction

© 2014 Baker & McKenzie LLP 11 Red Riding Hood v. Big Bad Wolfe – Issue #2 ‒ RJR McDonald (SCC) established the well-known test for interlocutory injunction in which the applicant must establish:  there is a serious issue to be tried  there is a risk of irreparable harm  balance of convenience favours the applicant

© 2014 Baker & McKenzie LLP 12 Red Riding Hood v. Big Bad Wolfe – Issue #2 ‒ “Serious issue” is typically the easiest of the 3 prongs to prove  does not require serious examination of the merits of the case  Red would have to show that BB Wolfe operates in the same marketplace and the use of his logo will likely lead to confusion by consumers/customers

© 2014 Baker & McKenzie LLP 13 Red Riding Hood v. Big Bad Wolfe – Issue #2 ‒ “Irreparable harm” is the most challenging of the 3 prongs to establish, especially in IP cases ‒ FC tends to consider harm to be monetarily quantifiable or speculative  damage to goodwill, brand equity and permanent loss of market share have been considered quantifiable  evidence that the applicant may be damaged is not sufficient ‒ Expert evidence will not suffice ‒ Evidence of actual harm or harm reasonably inferred from market-based data is required

© 2014 Baker & McKenzie LLP 14 Red Riding Hood v. Big Bad Wolfe – Issue #2 ‒ “Balance of convenience” requires weighing of all circumstances to assess  effect on applicant if the injunction is not granted  effect on respondent if the injunction is granted ‒ Would one party be prejudiced more than the other? ‒ If equally inconvenienced then status quo will be maintained

Conclusion

© 2014 Baker & McKenzie LLP 16 Red Riding Hood v. Big Bad Wolfe – Conclusion ‒ Likelihood of success on interlocutory injunction is very low ‒ Therefore save your money, Red! ‒ Instead, use case management to the fullest  press for early trial date  schedule all anticipated procedural motions early in case  request CMJ/CMP’s availability for “real time” resolution of refusals during oral discovery  don’t hesitate to reach out to CMJ/CMP at any time

Baker & McKenzie LLP, an Ontario limited liability partnership, is a member firm of Baker & McKenzie International, a Swiss Verein with member law firms around the world. In accordance with the common terminology used in professional service organizations, reference to a "partner" means a person who is a partner, or equivalent, in such a law firm. Similarly, reference to an "office" means an office of any such law firm. © 2014 Baker & McKenzie LLP Thank you! Kamleh Nicola Baker & McKenzie LLP