Most IP infringement claims in Canada can be brought in either the Federal Court or a provincial superior court. The choice is not a formality. It decides which claims can be heard together, which remedies are available, and how far an order reaches.
What both courts can do
Parliament gave the two courts concurrent jurisdiction over infringement of patents, trademarks and copyright. Either can grant an injunction, award damages, or order an accounting of profits.
What only the Federal Court can do
Change the register. Only the Federal Court can strike a trademark registration from the register, declare a patent invalid as against the world, or order the patent and copyright registers corrected. A superior court can find a registration invalid as a defence between the parties in front of it, but the registration stays on the books.
If the goal is to clear a competitor's registration out of the way, the Federal Court is the only option.
Reach the whole country. The Federal Court's process runs throughout Canada. One injunction binds the defendant in every province, with no need to have the order recognized elsewhere.
Offer IP-specific procedure. Its judges and associate judges hear IP cases routinely. IP actions are typically case-managed. Trademark and copyright infringement can be brought by application on a paper record, and summary trial is used actively.
What only the Superior Court can do
The Federal Court is a statutory court. It hears only what a federal statute assigns to it. It cannot decide a free-standing claim for breach of contract, breach of confidence, breach of fiduciary duty or shareholder oppression.
It can interpret a contract where that is a step in deciding something within its jurisdiction, such as title to a patent (Salt Canada Inc v Baker, 2020 FCA 127). Where the dispute is contractual in substance, it is the wrong court.
The Superior Court has inherent jurisdiction. Suppose a former partner breached the shareholders' agreement, took confidential information, and is now using the company's trademark. Only the Superior Court can hear all of that in one proceeding.
Factors that tip the choice
The essence of the dispute. Is this an IP case with a contract in the background, or a contract case with IP in the background?
Validity. Do you need a registration removed, or expect the other side to attack yours?
Geography. Defendants and harm in several provinces point toward the Federal Court.
Urgent relief. Both courts apply the same three-part test for an interlocutory injunction. The Federal Court has traditionally insisted on clear, non-speculative evidence of irreparable harm.
Limitation periods. In the Federal Court, a provincial limitation period applies if the cause of action arose in a single province, and six years if it did not, unless the IP statute sets its own. Copyright has a three-year period. Patent remedies reach back six years.
Discovery. In the Federal Court, a corporate party is examined through a single representative. Ontario caps the time each party has for oral discovery.
A moving target. Ontario's civil rules are part-way through a staged overhaul. How an Ontario action unfolds may look different in a year.
The cost of choosing wrong
Splitting one dispute across two courts doubles the expense and invites motions to stay one case while the other runs. Starting in the Federal Court with a claim that is really contractual risks a motion to strike. Starting in the Superior Court when you needed a registration expunged means a second proceeding later.
The other side can choose too. A party who expects to be sued may file first, in the court it prefers. The time to decide on forum is before the demand letter goes out.
This post is general information about Canadian law. It is not legal advice about your situation.
