Foundations of IP Strategy

While we will not provide specific details relating to IP litigation in respect of the various forms of IP, we will offer some general considerations for you to take into account in determining your best options, given your own particular circumstances. We will also reference certain other avenues, which may be available to you to enforce your IP outside of the courts.

If you do decide to go to court, you need to be prepared for any of the following outcomes.

1. WHAT COULD HAPPEN IF YOU GO TO COURT

   If you go to court, you have to be prepared for the other side to seek to invalidate some or all of your IP. In other words, even though you are the one who is suing, your infringer can turn around and attack the validity of your own IP as part of a defence strategy.

   Example

   A Canadian company, Remo Imports, held a registered trademark in the name Jaguar for luggage, bags and leather goods. It sued Jaguar Cars, the makers of the iconic Jaguar luxury automobile, for trademark infringement when the latter started to manufacture and sell leather goods in Canada under the trademark Jaguar. In the lawsuit, Jaguar Cars successfully attacked the validity of Remo Imports’ trademarks. Instead of winning against Jaguar Cars, Remo Imports lost control of its IP.

2. THE POSSIBILITY OF SETTLEMENT

   It is not uncommon for parties to find a compromise that they can both live with after a suit is filed because neither of them will want the uncertainty that a court ruling may mean for them.

3. POSSIBLE COURT RULINGS THAT MAY OR MAY NOT WORK IN YOUR FAVOUR

   One of the most important legal remedies you can ask for is the issuance of an injunction that will permanently prevent the infringing party from selling or using the infringing articles. However, injunctions are not always easily obtained.

   • If you are successful in your lawsuit, you will often receive an award for damages to compensate you for the losses you have suffered at the hands of the infringer.
   • If you are unsuccessful, you may find that you have to pay some of the other party’s legal costs.
   • In the worst-case scenario, as in the Jaguar case described above, the court may find that your IP is invalid or cannot be enforced for other reasons.