Intellectual Property | 23
Kierans, Patrick E.
Norton Rose Fulbright
Canada LLP
(416) 216-3904
patrick.kierans@
nortonrosefulbright.com
Mr. Kierans is an IP
litigation lawyer based in
Toronto and the Global
Co-Head of Life Sciences
and Healthcare for
Norton Rose Fulbright.
His clients include
pharmaceutical and
technology companies.
Koehnen, Markus
McMillan LLP
(416) 865-7218
markus.koehnen@
mcmillan.ca
Mr. Koehnen's practice
focuses on corporate
governance, cross-border
and investment disputes.
He has appeared before
all levels of courts in
Canada, including
the Supreme Court of
Canada, as well as before
international arbitration
panels.
Kroft, QC, Edwin G.
Blake, Cassels &
Graydon LLP
(604) 631-5200
ed.kroft@blakes.com
Mr. Kroft's tax litigation
and transfer-pricing
practice for major
Canadian and
multinational companies
includes appearances
before the Supreme
Court of Canada, the
Tax Court of Canada, the
Federal Court and the
Federal Court of Appeal.
Kimmel, Jessica A.
Goodmans LLP
(416) 597-4219
jkimmel@goodmans.ca
Ms. Kimmel's practice
extends to corporate/
commercial, class-action
defence, securities,
professional negligence,
product liability and
insolvency litigation at all
levels of court in Ontario
and the SCC, and before
provincial securities
regulators.
Kolers, Eliot N.
Stikeman Elliott LLP
(416) 869-5637
ekolers@stikeman.com
Mr. Kolers's practice
concentrates on complex
corporate commercial,
competition, securities
and insurance litigation.
He has been involved in
numerous class actions
and has extensive
experience on matters
involving Canadian
corporations legislation.
Kryworuk, Peter W.
Lerners LLP
(519) 640-6317
pkryworuk@lerners.ca
Mr. Kryworuk has trial
and appellate experience
in personal injury,
insurance, medical
and professional
liability, health law and
commercial litigation.
He is a certifi ed specialist
in civil litigation and
an ACTL Fellow.
LEXPERT®Ranked Lawyers
are litigated in Canada, concerns timing and scheduling."
" e Federal Court of Canada is very user-friendly for IP
litigation. e court will give you a trial date, generally with-
in two years, very early on in the litigation, which only re-
cently the court has started doing," says Dimock. In addition,
he says, "you're pretty much guaranteed case management of
a patent case in the Federal Court," making it increasingly
diffi cult to engage in a plethora of motions, pleadings and
other tactics designed to frustrate opponents.
But when the case does go to trial, says Dimock, "judges
are now willing to deal with not only the issues on the mer-
its, but also decide the quantum of monetary remedies at the
same time, also a new trend in patent cases. You can have a
judgment on money sooner than you've had in the past."
Garland also fi nds a greater emphasis by the court over
the last few years to assist litigants in getting to trials sooner,
rather than having proceedings that sit on the federal court
docket for long periods of time as deadwood.
For Canadian business this means, he says, "if they're going
to be potential litigants, whether it's a plaintiff or defendant,
IP rights owners now, I think, are looking at the federal court
as a good forum within which to litigate their IP rights." So
no more dragging your heels, which helps to explain the in-
crease in the number of trials. Still, many, many cases outside
of pharma, he says, are being settled.
In fact, Dimock is seeing an upswing in the amount of al-
ternate dispute resolution and mediation, and, in many situ-
ations, a subsequent settlement in IP litigation. Although it
has always been necessary for lawyers to advise and encour-
age clients to settle, he says, the judges are increasingly put-
ting pressure on litigants to talk settlement.
According to Dimock, "ADR is now an important aspect
of any litigious dispute, but especially in areas like patent liti-
gation where legal fees run high, litigation is expensive, case
management is intensive and trials are long in duration."
For his part, Aitken "hasn't seen a signifi cant move toward
ADR in high-stakes IP litigation, where the position of the
litigants o en becomes fi rmly entrenched and there are few-
er opportunities to pursue a negotiated settlement."
In June, the federal government passed the omnibus Bill
C-31, the Economic Action Plan 2014 Act, No. 1. e Act
contained sweeping new amendments to the Trade-marks
Act, aimed at bringing Canada more in line with internation-
al trade-mark application processes and standards.
As to the broader implications for IP litigation under
the amendments, Dimock says one of the key changes is
that "use" will no longer be required to obtain a trade-mark
registration. " e controversial removal of the use require-
ment may open the door to 'trade-mark trolls' in Canada,"
says Dimock, "who may now be able to register trade-marks
without initially having to show use of this mark in Canada
or elsewhere."
Further, without the use requirement, Dimock suggests
trade-mark applicants will tend to over claim goods and ser-
vices, which may block others from legitimately using the
same mark with diff erent and non-confusing goods.
While use of a trade-mark in Canada will remain the guid-
ing principle for the recognition of trade-mark rights, says
Dimock, the amendments will likely create initial uncertain-
ty regarding entitlement. " is has the potential to result
in an upswing in opposition, expungement and litigation
proceedings to prevent or cancel third party registrations
for confusing marks that are not in use or have overly broad
goods and services," he says.
