Fast-tracking litigation: enforcing trademark rights through summary applications

The recent decision of the Federal Court in Trans-High Corporation v Hightimes Smokeshop and Gifts Inc (2013 FC 1190) showcases a simple, summary and expeditious procedure for enforcing trademark rights in Canada.

In this case, the applicant, Trans-High Corporation, successfully moved by way of application for permanent injunctive relief, damages and legal fees in respect of its claims that the respondent, Hightimes Smokeshop and Gifts Inc, had engaged in trademark infringement, statutory passing off and depreciation of goodwill. The entire proceeding, from the date of service of the notice of application to the date of the court’s decision, took only five months.

In BBM Canada v Research in Motion Limited (2011 FCA 151), the Federal Court of Appeal had confirmed that trademark owners may bring proceedings for trademark infringement, passing off and depreciation of goodwill by way of a summary application to the Federal Court, based on affidavit evidence, in the right circumstances.

The circumstances in Trans-High Corporation were such that the applicant could avail itself of this cost-effective and expeditious procedure: the relief sought was simple and straightforward, and neither the credibility of the applicant’s affiants nor the facts upon which the applicant relied was in issue (as the respondent did not file any submissions in the proceeding or appear at the hearing, despite being properly served in June 2013). However, by deciding to proceed by way of application, the applicant necessarily chose to forego any opportunity for full pre-trial discovery, to compel further and better information concerning the depreciation of goodwill attaching to its trademark by reason of the respondent’s activities, to elicit facts relating to damages caused by these activities, and to adduce viva voce evidence at trial.

Thus, the mere fact that a litigant may choose to proceed by way of action or application does not mean that every case is amenable to adjudication by application. That said, not all proceedings for trademark infringement, passing off and depreciation of goodwill are so complex that they may not be resolved by application. In light of the court’s decision in Trans-High Corporation, it is clear that, in a simple case in which the strength of the “paper record” is sufficient to prove the unlawful activities alleged, trademark owners may enforce their rights against infringers in Canada and obtain permanent injunctive relief, damages and legal fees while saving time and money by bringing a summary application to the Federal Court.

Graham Hood, Smart & Biggar/Fetherstonhaugh, Toronto