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Enforcement

Jurisdiction

Which courts are empowered to hear trademark disputes?

The following courts are empowered to hear trademark disputes:

  • The Federal Court of Canada and the Federal Court of Appeal; and
  • Provincial or territorial courts of competent jurisdiction.

Actions

What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?

Proceedings for trademark infringement are within the concurrent jurisdiction of the Federal Court and the provincial superior courts. Proceedings are typically brought by way of an action, although it is also permissible to proceed by way of application. Proceedings before the Federal Court obtain a judgment that is enforceable across Canada. Judgments from superior courts will need to be enforced separately in each province and territory. However, it may be necessary to bring the proceeding in Superior Court if it also involves a claim that the Federal Court does not have jurisdiction to hear – such as tort or contract.

Although not technically infringement, a passing-off action is available to the owner of an unregistered trademark based on goodwill or reputation acquired through use. Similarly, there may be actions – albeit uncommon – that can be taken via the Criminal Code or the Competition Act.

Who can file a trademark infringement action?

The owner of a registered trademark.

With respect to the licensee of a registered trademark – subject to any terms in the licence agreement – a licensee may call on the trademark owner to take proceedings for infringement, and, if the owner refuses or neglects to do so within two months after being so called on, the licensee may institute proceedings for infringement in the licensee’s own name as if the licensee were the owner, making the owner a defendant.

What is the statute of limitations for filing infringement actions?

Limitation periods are not set out in the Trademarks Act. The applicable limitation period may depend on where the infringement took place and the court in which the action is initiated.

What is the usual timeframe for infringement actions?

Two to four years.

Injunctions

What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?

Permanent injunctions and interlocutory injunctions are available.

Interlocutory injunctions are rarely granted in trademark cases. The well-established test requires that a plaintiff establish:

  • a serious issue to be tried on the merits of the case;
  • that the moving party will suffer irreparable harm if the motion is refused; and
  • that the balance of convenience favours the granting of the injunction.

It has been difficult for plaintiffs to demonstrate that irreparable harm will result – rather than could result or may result.

Remedies

What remedies are available to owners of infringed marks? Are punitive damages allowed?

The following remedies are available to owners of infringed marks:

  • damages or an accounting of profits;
  • legal costs;
  • injunctions;
  • punitive damages; and
  • order for destruction or delivery of infringing materials.

Customs enforcement

What customs enforcement measures are available to halt the import or export of infringing goods?

The recently implemented Canada Border Services Agency (CBSA) Intellectual Property Rights Programme provides Canadian customs authorities with the ability to detain suspected counterfeit or pirated products and to exchange information with rights holders in order to confirm the counterfeit nature of the products.

A request for assistance must be filed with the CBSA. Trademarks must be registered before filing a request with the CBSA.

Defence

What defences are available to infringers?

Some of the most common defences to infringement include:

  • burden of proof not met by plaintiff;
  • no likelihood of confusion; and
  • invalidity of plaintiff’s registered trademark.

Appeal

What is the appeal procedure for infringement decisions?

An appeal of a decision by Federal Court is made to the Federal Court of Appeal; the notice of appeal is to be filed within 30 days of the date of the decision.

Provincial and territorial court matters are appealed to the court of appeal in that province or territory. Each province and territory has different procedural rules. Leave may be required in certain cases.

A further appeal can be taken from an appeal court to the Supreme Court, but one must first seek leave of that court for the appeal to proceed.

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