The United States

As mentioned in the February edition of the Cassels Brock report, the Secretary of Commerce of the United States recently launched a study on the extent to which small businesses may be harmed by the litigation tactics of trade-mark owners attempting to enforce trade-mark rights beyond a reasonable interpretation of the scope of those rights.

A Report has been released and is available by clicking here. The Report provides a useful summary of US trade-mark law relating to policing and enforcing trade-mark rights.

It was observed that abusive litigation tactics, in the sense of those tactics employed in litigating a civil action through to trial, did not appear to be a significant problem, since historically only approximately 1.5% of all trade-mark cases filed ever reach trial and the majority are disposed of before a case reaches the pre-trial phase.

To the extent trade-mark owners engage in tactics unwarranted by a reasonable interpretation of the scope of the rights they actually possess, it was said that the root of any problem that may exist were the tactics engaged in during pre-litigation or pre-trial enforcement efforts.

The Report concluded that it was unclear whether small businesses were disproportionately harmed by enforcement tactics that are based on an unreasonable interpretation of the scope of an owner’s rights. The answers received in response to request for comments reflected a diverse range of views.

Ultimately it was said because trade-mark enforcement is a private property rights litigation issue, if abusive tactics are a problem, such tactics may best be addressed by the existing safeguards in the litigation system and ensuring that aggrieved parties to the extent possible obtain appropriate legal advice.

Comment

The Report has been criticized for not providing any useful solutions. However Canadian Courts do seem to have sufficient jurisdiction to control abuses in litigation in pre-trial proceedings and at trial.

It remains to be seen whether anything can or should be done concerning tactics engaged in during pre-litigation. I recall the comment of an experienced trial Judge made during the course of hotly contested proceedings that the commercial world is a hard world. Perhaps it would be best to leave it at that and not intervene in any formal way.