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Red Riding Hood v. Big Bad Wolfe

Red Riding Hood v. Big Bad Wolfe. Federal Court Procedure in IP Cases A.2 Federal Court Workshop. CBA Legal Conference 2014 St. John’s Newfoundland. The Story. Red Riding Hood v. Big Bad Wolfe – The Story.

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Red Riding Hood v. Big Bad Wolfe

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  1. Red Riding Hood v. Big Bad Wolfe Federal Court Procedure in IP Cases A.2 Federal Court Workshop CBA Legal Conference 2014 St. John’s Newfoundland

  2. The Story

  3. Red Riding Hood v. Big Bad Wolfe – The Story • Red Riding Hood owned trade-mark registration for a logo incorporating red hooded cape and basket lined with red gingham-printed cloth • Big Bad (BB) Wolfe obtained trade-mark registration for logo that incorporated blue hooded cape and basket lined with blue gingham-printed cloth • Both operated a bakery and baked goods delivery service

  4. Red Riding Hood v. Big Bad Wolfe – The Story • Red Riding Hood retained Three Little Pigs LLP to bring action in Federal Court (FC) for • declaration that BB Wolfe infringes Red’s trade-mark • damages for trade-mark infringement • destruction, or in the alternative, delivery up, of all advertising and promotional materials that contain the infringing trade-mark • preliminary and permanent injunctions requiring BB Wolfe to immediately cease the use of the infringing trade-mark and to prevent continued use in the future

  5. Red Riding Hood v. Big Bad Wolfe – The Story • BB Wolfe was uncooperative • delayed delivery of statement of defence • refused to cooperate in scheduling of various procedural motions • refused to cooperate in scheduling the trial dates at the outset of the case instead of waiting until the case was set down for trial

  6. Red Riding Hood v. Big Bad Wolfe – The Story • Issue #1: What steps can Red Riding Hood take to better facilitate the progress of her case? • Issue #2: Is a preliminary injunction available to Red?

  7. Issue # 1: Facilitating Case Progression

  8. Red Riding Hood v. Big Bad Wolfe – Issue #1 • Federal Courts Rules, R. 384 permits Red to seek to have her case specially managed (otherwise known as case management) • Manages the progress of cases in most efficient manner and not necessarily in strict adherence to timelines or order of steps set out in Rules • Case Management Judge (CMJ) or Prothonotary (CMP) assigned to case and provides active guidance and direction

  9. Red Riding Hood v. Big Bad Wolfe – Issue #1 • IP cases rarely refused case management. In fact, FC expects IP cases to be case managed • Case management especially useful • scheduling trial date(s) early and setting schedule for intervening steps from there • early resolution of procedural disputes • easy access to CMJ/CMP through simple phone call or by letter • When in doubt, pick up the phone and call!

  10. Issue #2: Interlocutory Injunction

  11. Red Riding Hood v. Big Bad Wolfe – Issue #2 • RJR McDonald (SCC) established the well-known test for interlocutory injunction in which the applicant must establish: • there is a serious issue to be tried • there is a risk of irreparable harm • balance of convenience favours the applicant

  12. Red Riding Hood v. Big Bad Wolfe – Issue #2 • “Serious issue” is typically the easiest of the 3 prongs to prove • does not require serious examination of the merits of the case • Red would have to show that BB Wolfe operates in the same marketplace and the use of his logo will likely lead to confusion by consumers/customers

  13. Red Riding Hood v. Big Bad Wolfe – Issue #2 • “Irreparable harm” is the most challenging of the 3 prongs to establish, especially in IP cases • FC tends to consider harm to be monetarily quantifiable or speculative • damage to goodwill, brand equity and permanent loss of market share have been considered quantifiable • evidence that the applicant may be damaged is not sufficient • Expert evidence will not suffice • Evidence of actual harm or harm reasonably inferred from market-based data is required

  14. Red Riding Hood v. Big Bad Wolfe – Issue #2 • “Balance of convenience” requires weighing of all circumstances to assess • effect on applicant if the injunction is not granted • effect on respondent if the injunction is granted • Would one party be prejudiced more than the other? • If equally inconvenienced then status quo will be maintained

  15. Conclusion

  16. Red Riding Hood v. Big Bad Wolfe – Conclusion • Likelihood of success on interlocutory injunction is very low • Therefore save your money, Red! • Instead, use case management to the fullest • press for early trial date • schedule all anticipated procedural motions early in case • request CMJ/CMP’s availability for “real time” resolution of refusals during oral discovery • don’t hesitate to reach out to CMJ/CMP at any time

  17. Thank you! Kamleh Nicola Baker & McKenzie LLP kamleh.nicola@bakermckenzie.com

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