On April 12, 2013, Robert Kalanda, member of Heydary Hamilton PC (as well as a member of the affiliated intellectual property boutique firm Heydary Hayes PC), successfully obtained default judgment from the Ontario Superior Court of Justice which, in addition to a substantial damages award, as well as a permanent injunction, provided for a declaration stating that the plaintiff has not infringed on any of the defendants’ alleged trade-mark rights in Canada or the United States.
This decision marks one of the first cases where a declaration of non-infringement of trademark has been successfully granted by a Canadian court. Though a similar declaration was initially granted in relation to a Canadian trade-mark in the reported case of Philip Morris Products S.A. v. Malboro Canada Limited, that finding was ultimately reversed on appeal. Similarly, though the Ontario courts held in the reported case Research in Motion Limited v. Atari, Inc. that an Ontario court possesses the jurisdiction to make a declaration of non-infringement of United States copyright law, there are no reported decisions of any actual declarations in relation to any United States trade-mark rights having been previously granted by any Canadian court.
In addition to a successful result for the plaintiff, this decision also represents a step forward in consolidating a party’s ability to enforce trade-mark rights. Though the enforceability and determination of trade-mark rights are typically restricted to a single jurisdiction, this decision provides a cornerstone for potential trade-mark infringement defendants to preempt numerous foreign proceedings and have worldwide trade-mark disputes determined with a single piece of litigation.
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