The Federal Court of Canada, where most Canadian copyright and trademark litigation takes place, provides a number of opportunities for parties to have their dispute resolved without the need for a full trial. Litigation can be a long and expensive process, with some court actions taking three years or more to go to trial, costing hundreds of thousands of dollars. For these reasons, parties are increasingly taking advantage of procedures that are available in the Federal Court for more expedited resolutions of their disputes on the merits.
One way that parties can obtain a Court judgment without a full trial is through a summary trial. Rule 213 of the Federal Courts Rules allows either party to bring a motion to the Court for a summary trial, which can be used to resolve some, or all, of the issues in the action. Summary trial motions can be brought any time after a statement of defence has been filed and before the matter has been set down for trial. Since summary trial proceeds by motion, evidence is entered by way of affidavits and statements of expert witnesses in advance of the hearing, rather than by live, viva voce evidence as would be seen at a full trial. However, in a summary trial, the Court can still order that a deponent or expert who gave a written statement attend a live cross-examination before the Court. To grant judgment in a summary trial, the Court must be satisfied that it has all the evidence necessary to fairly adjudicate the dispute.
A recent Federal Court decision is a great example of where a summary trial was used to decide all issues in an action. In Enigmatus, S.R.O. v. Playtika LTD et al, 2024 FC 751., the Plaintiff brought an action for passing off of its unregistered trademark SLOTOPOLY against the Defendant who was using and had a trademark registration for SLOTOMANIA. Both the Plaintiff and Defendant offer online casino and slot-themed games. In its action, the Plaintiff also sought to expunge the Defendant's registered SLOTOMANIA trademark. The Court granted the Defendant's motion for summary trial in its entirety, dismissing the Plaintiff's claims.
In its decision, the Court provided a succinct discussion of the appropriateness of summary trial, making a few key findings. The Court stated that summary trial is appropriate where “the issues are well defined, the facts necessary to resolve the issues are already in evidence, credibility issues can be resolved, and the questions of law can be dealt with as they could be after a full trial”1. The Court also noted that the burden of establishing the appropriateness of summary trial lies with the party who brought the motion, in this case, the Defendant.
The Court found in this case that all the evidence provided by both parties was complete and that a full trial was not needed to gather or clarify facts or assess any witness's credibility. Both parties submitted affidavit evidence and cross-examinations were conducted. The Court couldn't imagine any additional evidence that the parties could bring forward at a full trial if the motion were unsuccessful, other than live testimony. The Court determined that the added time and expense that would be necessary or a full trial would not assist, and were not necessary to, just adjudication of the matter.
In this case, the Court concluded that based on the evidence, the Plaintiff did not establish significant goodwill in its unregistered mark to support an action for passing off nor could it establish that the Defendant's mark was invalid and ought to be expunged. The Defendant's registered mark served as a complete defence to allegations of infringement.
Summary trial is a great option for litigants looking to save time and expense of a full trial, but still have their case determined by the Court on the merits. Where parties are able to provide fulsome, comprehensive evidence by way of affidavits and sworn statements, without the need for live evidence, proceeding by way of a summary trial may be the right option. That said, courts have also cautioned against proceeding by way of summary trial where it is clearly inappropriate. If a motion for summary trial is unsuccessful, and Court determines the action cannot be disposed of without a full trial, the parties will have only added time and expense by proceeding with an unsuccessful motion. In a recent Federal Court of Appeal decision, the Court commented that
Summary trials are not a time for parties to engage in strategic behaviour as far as the evidence is concerned. They are not a time to hold back evidence for later. Instead, the parties must put their best foot forward. If there are evidentiary shortcomings in a party's case in the summary trial, that party may well lose.2
and went on to say
A summary trial is meant to be a single litigation event that, if possible on the facts and the law, will end the proceedings or one or more issues: quickly, one way or the other, once and for all. An unwarranted, improper and pointless re-do and rerun of a summary trial runs against its purpose—to determine disputes quickly and finally.3.
Footnotes
1. Enigmatus, S.R.O. v. Playtika Ltd, 2024 FC 751 at para 46, citing Eli Lilly v Apotex, 2022 FC 1398 para 5
2. Mud Engineering Inc v Secure Energy Services Inc, 2024 FCA 131 at para 7
3. Ibid at para 28
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
