Seizure before judgment
Louis Vuitton Malletier S.A. and Burberry Limited et al. v. Singga Enterprises et al., 2011 FC 776 – Louis Vuitton and Burberry were granted the highest award of damages and costs to date in Canada against purveyors of counterfeit goods, for a total of $2.48 million in damages, including punitive and exemplary damages, not including legal fees, which were awarded on a solicitor and client basis against each of the defendants. The defendants included three groups of individuals and shell corporations operating businesses engaged in the sale of counterfeit goods across Canada, with one business operating in the Greater Vancouver area and other businesses, based out of the Greater Vancouver and Greater Toronto areas, engaged in importation, distribution and sale across Canada, including Alberta and Quebec, of counterfeit Louis Vuitton and Burberry merchandise.
The judgment was rendered using the new Federal Court summary trial rules, which were modeled after the British Columbia Supreme Court summary trial "18A" rules and intended to give the Court greater flexibility in granting judgment on a summary basis. In awarding judgment against the defendants, Mr. Justice Russell adopted the leading British Columbia jurisprudence, which provides that if the judge can find the facts as he or she would upon a trial, the judge should give judgment based upon the affidavit evidence, unless to do so would be unjust, regardless of complexity or conflicting evidence.
Nevica Contracts Ltd. v. Gemini Fashions of Canada Ltd. et al. (12 May 1997, T-899-97 (F.C.T.D.)) — Successfully obtained a detention Order from the Federal Court of Canada under sections 27, 44 and 44.1 of the Copyright Act and seized and detained unauthorized ski jackets made according to the plaintiff’s novel designs.
Sanrio Company, Ltd. v. Shin Shu Enterprises Co. Ltd. (13 Jan 1997, T-39-97 (F.C.T.D.)) — Successfully obtained a detention Order from the Federal Court of Canada under sections 27, 44 and 44.1 of the Copyright Act and sections 53 and 53.1 of the Trade-marks Act and seized counterfeit HELLO KITTY merchandise; subsequently obtained judgment against the defendants.
Interlocutory injunctions
Thorne Research Inc. et al v. Thorne Research (Canada) Ltd. et al. (2003) (B.C.S.C.) — Obtained interim and interlocutory injunction in a trade-mark and copyright infringement case for U.S. manufacturer against Canadian distributor.
Canada Post Corporation v. Sunview Management Group (1998) T-1800-98 (F.C.T.D.) — Successfully obtained an injunction against a New York defendant for improper use of the plaintiff’s trade-marks as a domain name.
Canada Post Corporation v. Jeff Burger c.o.b. as Canada Post Club et al. (May 1998) T-768-98 (F.C.T.D.) — Successfully obtained an interim injunction and a judgment against the defendant for infringement of the plaintiff's trade-mark by illegal and improper use of plaintiff's mark on the Internet as a domain name.
Havana House Cigar and Tobacco Merchants Ltd. et al. v. Naeini et al. (1998), 79 C.P.R. (3d) 496 (F.C.T.D.) — Successfully resisted a second injunction application by the plaintiffs for alleged distribution and sale of counterfeit Cuban cigars in Canada and obtained $10,000 damage award from the Federal Court Judge at the hearing.
Havana House Cigar and Tobacco Merchants Ltd. et al. v. Naeini et al. (1997), 75 C.P.R. (3d) 306 (F.C.T.D.) — Successfully resisted an injunction on behalf of the defendants relating to alleged distribution and sale of counterfeit cigars in Canada.
Frank Brunckhorst Co. et al v. Gainers Inc. et al. (1993) 46 C.P.R. (3d) 421 (F.C.T.D.) — Successfully resisted an injunction on behalf of the defendants relating to alleged copyright and trade-mark infringement.
ETI Explosives Technologies International (Canada) Ltd. et al. v. Brian Thompson, Noka Software Systems Inc. et al. (1991) Ont. S.C. Action 2714-90 — Successfully resisted injunction for defendant involving breach of confidential information and copyright information.
Russell Harrington Cutlery, Inc. v. J.A. Henckels Zwillingswerk Canada Ltd. et al. (1989), 28 C.P.R. (3d) 333 (F.C.T.D.) — Successfully resisted an injunction on behalf of the defendant relating to white-handled knives in a trade-mark infringement case.
Summary judgments
Louis Vuitton Malletier S.A. v. 486353 B.C. Ltd et al., 2008 BCSC 799 — Louis Vuitton was granted what is believed to be the highest award of damages in Canada against purveyors of counterfeit goods. In a summary trial decision, Justice Boyd ordered a first group of defendants to pay a total amount of $980,000, including compensatory, punitive and exemplary damages, to the plaintiffs, Louis Vuitton Malletier S.A. and Louis Vuitton Canada, Inc. The Court also awarded special costs and adjourned its deliberation of damages against a remaining defendant until later this year. The defendants had defended the action and had been examined for discovery, yielding evidence that their turnover of inventory occurred approximately three times per year, enabling the Court to apply the $7,250 damages award on a per turnover of inventory basis. Moreover, as the traditional award of $7,250 was designed to reflect the activities at a single retail location for a single plaintiff, the Court also made this per inventory turnover award at each retail location and for each of the two plaintiffs. The Court also made an additional award of damages against the principal player and importer of the counterfeit goods, Wynnie Lee, using $29,000 ($24,000 adjusted for inflation) as a starting point for nominal damages against her as an importer/distributor. In addition, the Court awarded full statutory damages of $20,000 per work for the instances of copyright infringement by the various defendants. Further, the Court also granted an award of $200,000 in punitive and exemplary damages against Wynnie Lee and $100,000 in punitive and exemplary damages against the other three defendants acting in concert with Wynnie Lee. The Court also granted special costs against this group of defendants.
Louis Vuitton Malletier S.A. v. Yang et al., 2008 FC 45 —The defendants applied to set aside the decision in 2007 FC 1179 (see below). The motion was denied and 2007 FC 1179 was upheld.
Louis Vuitton Malletier S.A. v. Yang et al., 2007 FC 1179 — The defendants were recidivist counterfeiters trading in counterfeit Louis Vuitton goods. The plaintiffs brought an action in copyright and trade-mark infringement. As the defendants did not file a statement of defence, the plaintiffs brought a motion for default judgment. The Court held that the defendants were liable for both copyright and trade-mark infringement. Statutory damages for copyright infringement were awarded at the maximum of $20,000 per work. With regard to trade-mark infringement, loss of profits were awarded in the amount of $87,000. Punitive or exemplary damages were awarded in the amount of $100,000 and a permanent injunction was ordered. The plaintiffs were awarded solicitor-client costs and disbursements in the amount of $36,699.14. The total damages awarded to the plaintiffs totalled $263,699.14.
Albian Sands Energy Inc. v. Jeff Stibbard et al., 2005 FCA 332 — Successfully had plaintiff's case for passing off struck on appeal of summary judgement application on the basis that there could be no passing off or trade-mark infringement without use of the trade-mark in trade in Canada.
Park-ur-self (Canada) Ltd. et al. v. CSI Parking Systems Inc. (1997), 77 C.P.R. (3d) 174 (F.C.T.D.) — Successfully resisted summary judgment application by the defendant relating to alleged invalidity of the plaintiffs' patent for automated coin and credit card parking machines.
American Cyanamid Co. et al. v. Bio Agri Mix Ltd. (1997), 73 C.P.R. (3d) 277 (F.C.T.D.) — Successfully resisted summary judgment application by the defendant based on invalidity of patent relating to medicated animal feed mixes used in feed mill equipment.
Hayden Manufacturing Co. Ltd. v. Canplas Industries Ltd. (1996), 68 C.P.R. (3d) 186 (F.C.T.D.) — Successfully resisted a summary judgment application by the defendant relating to patent infringement and validity for electrified central vacuum valves.
Patented Medicines (Notice of Compliance) Proceedings
Bayer AG et al. v. Minister of National Health and Welfare et al. (1995), 65 C.P.R. (3d) 200 (F.C.T.D.) — Successfully obtained prohibition Order for Bayer AG in respect of drug ciprofloxacin, prohibiting Apotex from obtaining a notice of compliance.
Zeneca Pharma Inc. v. Minister of National Health and Welfare et al. (1994), 54 C.P.R. (3d) 538 (F.C.T.D.) — Successfully forced respondent to provide further and better particulars of allegation of non-infringement of patent.
American Cyanamid Co. v. Minister of National Health and Welfare et al. (1994), 55 C.P.R. (3d) 461 (F.C.T.D.) — Successfully resisted respondents’ motion to dismiss applicant’s originating notice of motion for an Order of prohibition in notice of compliance proceeding.
Glaxo Group Ltd. et al. v. Minister of National Health and Welfare et al. (November 24, 1993, T-1983-93, Gibson, J.) — Successfully forced respondent to file better and further particulars of notice of allegation of invalidity in notice of compliance patent case.
Procedural motions
David Lo, Health Guard Distributing Corp. et al. v. Beso Biological Research et al. (1998), B.C.S.C. Action C984220 — Obtained $85,000.00 as security for costs for defendant and successfully had plaintiff withdraw action against the defendant in biotechnology case.
Imperial Parking Ltd. v. Barrington et al. (1995), 66 C.P.R. (3d) 277 (F.C.T.D.) — Successfully argued to strike portions of a defence in a copyright action.
MacDonald's Corp. et al. v. Coffee Hut Stores Ltd. (1993), 47 C.P.R. (3d) 207 (F.C.T.D) — Successfully argued for the applicant for proper scope of cross-examination on affidavits before the Trade-mark Opposition Board.
Foseco Trading AG et al. v. Canadian Ferro Hot Metal Specialties Ltd. (1991), 36 C.P.R. (3d) 35 (F.C.T.D.) — Successfully argued one of Canada’s leading cases on scope of discovery in patent infringement cases.
Triboro Investments Ltd. v. Embassy Suites, Inc. (1991) 40 C.P.R. (3d) 193 (F.C.T.D.) — Succeeded in establishing that an application for expungement of a trade-mark requires personal knowledge set out in affidavit evidence and that information and belief evidence is improper.
Lubrication Engineers, Inc. v. Canadian Counsel of Professional Engineers (1990), 32 C.P.R. (3d) 327 (F.C.A.) — Successfully resisted application to rely on additional evidence on an appeal in a trade-mark case.
Procter and Gamble Co. et al. v. Nabisco Brands Ltd. (1988), 22 C.P.R. (3d) 365; reversed 24 C.P.R. (3d) 570 (F.C.A.) — Successfully overturned Trial Judge's order refusing production of inventor's record on the basis of privilege in patent infringement case.
