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Intellectual Property Litigation

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  • Key Contacts
  • Recent Experience
  • Recent Recognition
  • Insights, News & Events
  • Related Services
  • Download PDF
  • Recent Experience
  • Recent Recognition
  • Insights, News & Events
  • Related Services

Litigation

We regularly appear before administrative tribunals, the Federal Court and Federal Court of Appeal regarding all types of intellectual property litigation, including proceedings relating to patents, trademarks, copyright and industrial designs. Our team of advocates is adept at pursuing infringers or defending against infringement allegations. Our lawyers also specialize in pharmaceutical litigation under the Patented Medicines (Notice of Compliance) Regulations, and appeared on the first motions, trial and appeal under the amended regulations. We have a clear understanding of our clients' business and objectives and represent clients in:

  • banking;
  • biotechnology;
  • fashion;
  • healthcare;
  • life sciences;
  • medical device;
  • mining;
  • oil and gas;
  • pharmaceutical; and
  • software.

Dispute Resolution

Bennett Jones assists clients with managing disputes before litigation commences. Our technical expertise allows us to help clients manage risk through opinions on freedom-to-operate, trademark clearance searches and pre-litigation market entry for pharmaceutical products. Our lawyers assist with assessing the strength of our clients' cases and, when appropriate, exploring the use of mediation or alternative dispute resolution. 

Chambers

"The team I deal with has a demeanour that allows me to bring them directly into conversations to meet our business representatives," said one client, adding: "We are impressed with their ability to distil issues understandably."

Regulatory Compliance

Bennett Jones provides strategic advice on complex regulatory matters for clients in the pharmaceutical, natural health product, medical device, cosmetic and cannabis sectors. Our lawyers frequently interact with regulatory authorities to ensure legal and reputational risks are managed. We assist in all matters relating to advertising and product regulation, including:

  • health and nutrition claims;
  • investigations;
  • medical device licensing;
  • natural Health Product licensing;
  • packaging and labelling; and
  • recalls.

IAM Top Patent Firms in Canada

Dominique Hussey is “a delightful and very well-known lawyer who is extremely active in the profession”; her mastery of regulatory issues also comes in handy when executing licensing agreements.

Key Contacts

  • Jeilah Y. Chan Jeilah Y. Chan, Partner, Trademark Agent
  • Dominique T. Hussey Dominique T. Hussey, Vice Chair and Toronto Managing Partner
  • Robert (Rob) D. McDonald K.C. Robert (Rob) D. McDonald K.C., Partner, Trademark Agent
  • Related Lawyers

Recent Experience

Canadian Natural Resources Ltd (CNRL), in a patent infringement/patent validity lawsuit by Maoz Betser-Zilevitch (Federal Court File No. T-919-21).
A defendant in the dismissal of a precedent-setting copyright action regarding The Black Donnelleys and whether copyright attaches to facts (Winkler v Hendley, 2021 FC 498).
Amgen Inc. and Amgen Canada Inc., in the first ever patent infringement/patent validity trial and appeal under the new Patented Medicines (Notice of Compliance) Regulations (Amgen Inc v Pfizer Canada, 2020 FC 522, 2020 FCA 188).
Amgen Inc. and Amgen Canada Inc., on a motion to dismiss a patent infringement action before the Federal Court of Canada, and on the appeal of that motion before the Federal of Appeal (Amgen Inc v Pfizer Canada, 2018 FC 1078, 2019 FCA 249).
Enviro-Pro Geosynthetics, Ltd., in successfully defending against a patent infringement action commenced by Tensar, and on appeal of that decision before the Federal Court of Appeal (Tensar Technologies, Limited v. Enviro-Pro Geosynthetics, Ltd., 2019 FC 277, 2021 FCA 3)
Ferrero S.p.A, in a trademark dispute against Roshen involving the famous ROCHER trademark (2017 TMOB 166, 2017 TMOB 167, 2018 TMOB 38; Federal Court File Nos. T-305-18 and T-306-18).
Auro Pharma, in navigating the Patent Act and Patented Medicines (Notice of Compliance) Regulations to get drugs to market.
The Intellectual Property Institute of Canada (IPIC), as an intervener in the Federal Court of Appeal, in a case regarding whether non-compliance with the Public Servants Inventions Act can be grounds to invalidate a patent (Brown v Canada, 2016 FCA 37)

Recent Recognition

Chambers Global
Ranked, Intellectual Property Litigation
IAM Patent 1000
Ranked, Litigation
Chambers Canada
Ranked, Intellectual Property Litigation

Insights, News & Events

Announcements

Bennett Jones Top 10 Trademark and IP Firms in Canada

August 25, 2022
       

Announcements

Dominique Hussey and Cheryl Woodin in Benchmark's Top 100 Women in Litigation

August 03, 2022
       

Announcements

Dominique Hussey Named in Top 250 Women in IP 2022

June 02, 2022
       

Related Services

Data Governance Protection & Cybersecurity
Intellectual Property Advisory
Intellectual Property Law
Intellectual Property Transactions
Patent & Trademark Prosecution
Privacy & Data Protection
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