Canada: Injunctions In The IP Context: Managing The Process

Last Updated: May 26 2011
Article by Kamleh Nicola

Originally published in the Commercial Litigation Review

When one seeks injunctive relief in an IP case, it is crucial to evaluate and obtain sufficient evidence to answer the tripartite test: evidence of loss of goodwill, reputation, permanent loss of market share and depreciation of a trademark's value and distinction are among the types of loss or damages that have been accepted as being "irreparable" and therefore enable counsel to obtain this rare but effective injunctive relief.

The phone rings. It is a potential client with a question regarding enforcement of intellectual property (IP) rights: "A competitor is infringing [or, about to infringe] my IP rights [substitute patent, trademark or design, here]. What can I do?" This is a question that many IP (and commercial) lawyers will receive during the course of their careers. It is a vexing one since the remedies available in the IP tool kit do not always provide a simple answer to this question, nor a quick and easy result.

A few remedies are available to assist you, as the IP lawyer, in the situation described above. Due to space limitations, this article will focus on only one of these — interlocutory injunctions — and explore what this remedy can offer to the injured client and the concerned IP lawyer. Alternative remedies to the injunction, such as summary judgment, summary trial, Anton Pillar orders, to name but a few, warrant their own dedicated review and are better left for future articles.

Appropriate Jurisdiction

Before we dive deeper into the specific requirements for obtaining an interlocutory injunction, you would need to consider the jurisdiction in which to file the application.

You have two possible routes to follow in seeking injunctive relief. The most appropriate route depends upon the location of the infringing activity. If this activity is local or has not extended beyond provincial borders, the best route may be to bring the application to the applicable provincial superior court. If there is no need to enforce the resulting injunction outside that province, you need not look beyond the provincially based rules and procedures that govern the granting and enforcement of this remedy. On the other hand, if the infringement is taking place in more than one province, it would be most efficient to bring the application to the Federal Court, which has jurisdiction for enforcement across Canada. The benefit here is that the Federal Court becomes a "one-stop shop" and enables the injured client to potentially curb the infringing activity in all provinces and territories.

The consequences may not be too dire if you commence an application seeking injunctive relief in Federal Court and the activity is restricted to one province. It is quite another situation if the application is commenced in a provincial superior court, but the infringing activity extends beyond that province's borders. In that case, your client will not be pleased to discover that the injunction that it fought hard to obtain can be enforced only in that one province. In the meantime, the infringing activity in other provinces can continue unabated.

Once you have determined the appropriate jurisdiction to bring the injunctive application, you would turn to the test that must be satisfied. The three-part test has been interpreted in the same way by provincial superior courts and the Federal Court.

The Test to Meet

The test for obtaining an interlocutory injunction is now well-known and often cited. It has three prongs, all of which must be considered in light of the available evidence:

  1. Is there a serious issue or question to be tried?
  2. Will your client (the applicant seeking the injunction) suffer irreparable harm if the injunction is not granted?
  3. Does the balance of convenience favour your client?1

In addition, your client must consider the potentially costly consequences of having an injunction granted but subsequently overturned at trial. Serious financial consequences may result because an applicant seeking an injunction must undertake to compensate the respondent for any damages incurred if its activities are restricted during the period from the granting of the injunction through to the trial at which the injunction is dissolved.

Serious Issue or Question to Be Tried

Simply put, the issues at play in the case in which injunctive relief is requested must have merit. They cannot be frivolous or vexatious.2 The low threshold3 of this prong is relatively easy to meet as long as the evidence required to satisfy this part of the test is not too substantial or complex.

Because applications seeking injunctive relief are made at an early stage, the courts are not required to go too deeply into the merits of the overall case. That is better left for the trial judge, who will ultimately determine such questions as validity and infringement of the IP right in issue. In the context of an IP case, meeting the requirement of a serious issue could include establishing that (i) a presumption of validity of the infringed IP right exists;4 and (ii) sufficient evidence exists to reasonably conclude at this preliminary stage that there is, or will be, infringement.

The difficulty lies in determining how much evidence is sufficient to meet this prong of the test. The low threshold of this prong belies the need to put sufficient evidence before the court to establish a reasonable conclusion that there is or will be infringement. Not surprisingly, establishing a serious issue is easier when infringement already exists and is tangible, than when the offending activity has not yet happened. In attempting to establish a serious issue, you would be advised to investigate the basis for the injured client's belief or understanding of the extent of the infringing activity, or potential activity.

The threshold level of this prong of the tripartite test would rise if the injunction would effectively determine the issues in contention without the necessity for a trial. In that case, the threshold is increased to a strong prima facie case. In other words, the applicant will be required to establish that there is a strong likelihood of success if the matter proceeds to trial.5

Irreparable Harm

Establishing that your client, the applicant, will suffer irreparable harm unless the injunction is granted is the Achilles heel in IP cases, especially in patent cases, and has a high threshold. For harm to be considered irreparable, it either cannot be monetarily quantifiable or, if it can be quantified, the respondent is unable to pay.6 It is the nature of the harm that is the relevant consideration, not its magnitude. In other words, if your client can be financially compensated for damages flowing from the respondent's infringing activity and the respondent has the ability to pay, an injunction will not be issued. The battleground then shifts to the trial for the ultimate consideration of infringement and resulting damages.

This prong of the test is challenging. The typical result of infringing activity tends to be loss of market share, which translates into loss of profit. Even if the loss of market share is permanent, it can be quantified.7 Hence, it is not typically the type of harm to qualify for the granting of injunctive relief, at least at the interlocutory stage.

The type of harm that the courts have generally accepted as being irreparable includes loss of goodwill or reputation;8 permanent loss of market share so that the very existence of the business is threatened;9 depreciation of a trademark's value and distinction,10 especially where the competing mark or business is of a lower quality than your client's;11 dilution or loss of control of brand;12 loss of actual and potential customers and loss of industry opportunity.13

Adding to the difficulty in satisfying this prong of the test is the requirement that the evidence establish more than a mere inference or the speculation of harm. There must be "clear evidence"14 — meaning, a clear, factual basis to establish that your client would suffer actual irreparable harm.15 The applicant must show how the harm would occur and why it is irreparable. To likely suffer irreparable harm in the absence of the injunction is not enough.

Often, the only means of providing this factual record, especially when the harm has not yet occurred, is the submission of expert evidence. For instance, accountants can provide opinions on commercial loss; survey experts can provide opinions on destruction of trademark distinction and branding reputation; industry experts can provide opinions on reputational loss.

Balance of Convenience

The third prong of the tripartite test requires balancing the parties' interests to determine which party will suffer the greater harm if the injunction is granted or, alternatively, refused, pending a decision on the merits at trial. Whereas the irreparable harm prong of the tripartite test is focused on the harm suffered by the applicant, this prong requires a review of the harm suffered by both parties.

This balancing of convenience necessarily imports a level of proportional risk. Will the applicant seeking the injunction suffer greater harm if the injunction is not granted? Or will the respondent suffer greater harm if it is?

If the proportionality of risk suffered is the same for both parties, the courts will tend to preserve the status quo pending trial.16 This may not benefit your client if the respondent is in the market or already doing what it is that now harms your client. In such a case, the status quo may be maintained only through refusal of the injunction. On the other hand, your client may benefit if the harm has not yet occurred or the respondent has "springboarded" into the marketplace (that is, the infringer has entered the market by taking advantage of your client's reputation, presence or brand, etc.). If the respondent has not yet entered the market, the status quo may be maintained by requiring the respondent to remain out of the market until a final determination of the parties' rights has been made at trial. Similarly, the status quo may be determined to be that point in time before the respondent entered the marketplace if the respondent entered to obtain a competitive advantage with full knowledge of the applicant's IP rights.17

Clearly, these last two prongs — irreparable harm and balance of convenience — are interconnected. The courts will weigh the harm incurred by each party and consider whether one can be compensated for its harm, either through damages payable to the applicant at trial or through the applicant's undertaking to the respondent. The balance will tilt in favour of the party with the stronger case in this respect — that is, the party that will suffer the greater inconvenience and harm.

Undertaking Regarding Damages

As previously discussed, your client must undertake to compensate the respondent for damages incurred if the injunction is dissolved at trial and the merits are ruled in favour of the respondent. This undertaking must be formally made and should be included in the injunction materials at first instance. In the absence of special circumstances, the failure to provide such an undertaking or providing it after the filing of the injunction materials may be fatal.18

The importance of engaging your client in a full and frank discussion on the consequences of this undertaking and the ability to pay cannot be overemphasized. The risk to your client of having to pay not only your fees and the costs ordered by the court but also a sum of money to compensate the respondent for damages must be weighed thoughtfully in light of the available evidence and may ultimately influence your client's instructions.


Aside from your and your client's careful consideration of the aspects discussed above regarding injunctive relief, a couple of notable procedural matters should also be considered.

Once the decision is made to pursue interlocutory relief and the evidentiary record becomes your focus, it is important not to lose sight of the drafting of the underlying, originating document (statement of claim or notice of application). Considering the compressed time frame within which to complete the record for injunctive relief, preparing the originating document (required to be filed at or near the time of the filing of the injunction application) becomes less of a priority. Taking time to review the originating document to ensure it is complete and robust is imperative. Failure to include a claim for permanent injunctive relief, for instance, could be fatal to the success of the application for interlocutory injunctive relief.19

In addition, failure to act expeditiously either to request an injunction or move toward the trial on the merits can also prove to be fatal. In the former instance, the injunction may not be granted if the applicant continues its business with minimal impact despite the infringing activity20 or simply delays commencing with the interlocutory injunction proceeding.21 In latter instance, it is assumed that a successful applicant will proceed to trial promptly. Failure to do so may result in dissolution of the injunction.22

It is therefore essential to seek the right information during the initial phone call from the injured client. It is also imperative to treat the resulting injunctive proceedings with urgency, whether you are embarking on the process to obtain interlocutory relief or, having obtained interlocutory relief, moving toward a trial on the merits.


1 RJR-MacDonald Inc. v. Canada (Attorney General), [1994] S.C.J. No. 17, [1994] 1 S.C.R. 311 [RJR-MacDonald].

2 RJR-MacDonald, supra note 1 S.C.R. at 337.

3 Ibid.

4 In cases involving a registered patent, trademark or copyright, this may be as simple as establishing the statutory right giving rise to the presumption of validity. A passing-off case may require something more to show the existence of circumstances giving rise to a proprietary right owned by the client.

5 Quizno's Canada Restaurant Corporation v. 1450987 Ontario Corp., [2009] O.J. No. 1743, 176 A.C.W.S. (3d) 1016 at paras. 38-40 (Ont. Sup. Ct. J.).

6 RJR-MacDonald, supra note 1 S.C.R. at 341; see also Carbo Ceramics Inc. v. China Ceramics Proppant Ltd., [2004] F.C.J. No. 1451, 2004 FCA 283 at para. 11 [Carbo Ceramics].

7 See Bayer HealthCare AG v. Sandoz Canada Inc., [2007] F.C.J. No. 585, 2007 FC 352 at paras. 61-64.

8 Centre Ice Ltd. v. National Hockey League, [1994] F.C.J. No. 68, 53 C.P.R. (3d) 34 at 47 (F.C.A.) [Centre Ice].

9 Shaw v. Shaw, [2007] O.J. No. 2758, 158 A.C.W.S. (3d) 989 at para. 27 (Ont. Sup. Ct. J.); Procter & Gamble Inc. v. Colgate Palmolive Canada Inc., [1995] F.C.J. No. 719, 61 C.P.R. (3d) 160 at 177 (F.C.T.D).

10 Imax Corp. v. Showmax, Inc., [2000] F.C.J. No. 69, 5 C.P.R. (4th) 81 at paras. 70-73 (F.C.T.D.).

11 See, for example, 826129 Ont. Inc. v. Sony Kabushiki Kaisha, [1995] F.C.J. No. 1709, 65 C.P.R. (3d) 171 (F.C.T.D.); S.C. Johnson & Son, Inc. v. Reckitt & Colman (Overseas) Ltd., [1995] F.C.J. No. 46, 59 C.P.R. (3d) 317 at 329 (F.C.T.D.).

12 Toronto Cricket Skating & Curling Club v. Cricket Club Townhouse Inc., [2003] O.J. No. 6261, 2003 CarswellOnt 8408 at paras. 41-43 (Ont. Ct. Gen. Div.).

13 Telewizja Polsat S.A. v. Radiopol Inc., [2005] F.C.J. No. 1435, 2005 FC 1179.

14 Centre Ice, supra note 8 C.P.R. at 54.

15 Syntex Inc. v. Novopharm Ltd., [1991] F.C.J. No. 424, 36 C.P.R. (3d) 129 at 135 (F.C.A.).

16 Carbo Ceramics, supra note 6; see also Apotex Inc. v. Sanofi-Aventis Canada Inc., [2007] F.C.J. No. 24, 2007 FCA 7 at para. 33.

17 Carbo Ceramics, supra note 6 FCA at paras. 9-10.

18 See the following non-IP cases: Soowahlie Indian Band v. Canada (AG), [2001] F.C.J. No. 1885, 2001 FCA 387; Randall v. Caldwell First Nation of Point Pelee & Pelee Island Band Council, [2000] F.C.J. No. 524, 189 F.T.R. 182 (F.C.T.D.).

19 Cellular Rental Systems Inc. v. Bell Mobility Cellular Inc., [1995] O.J. No. 1535, 23 O.R. (3d) 766 at 779 (Ont. Div. Ct.).

20 See, for example, Nestlé Enterprises Ltd. v. Edan Food Sales Inc., [1991] F.C.J. No. 801, [1992] 1 F.C. 182 (F.C.T.D.).

21 Hyundai Auto Canada v. Cross Canada Auto Body Supply (West) Ltd., [2008] F.C.J. No. 25, 2008 FCA 12.

22 See CIBA-Geigy Ltd. v. Novopharm Ltd., [1997] F.C.J. No. 1836, [1998] 2 F.C. 527 (F.C.T.D).

Torys has offices in Toronto, New York and Calgary

The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.