Last year's case of Louis Vuitton Malletier S.A. v. 486353 B.C. Ltd. continues the recent trend by Canadian courts to grant substantial damages in counterfeit suits. In this case, the defendants operated stores across Vancouver under various names. Between January 2006 and January 2008 the plaintiff made numerous purchases and observations of counterfeit Louis Vuitton merchandise at the various locations, which led to the lawsuit for breach of contract, trade mark infringement, passing off and copyright infringement.
The Court estimated damages at over $7000 for each of the defendants' retail locations. The Court also awarded full statutory damages of $20,000 per work for the copyright infringement of the various defendants. The Court made an additional award of damages against the main defendant and importer, and also granted punitive and exemplary damages. In all, the defendants were ordered to pay $980,000 to the plaintiff flowing from their trade mark infringement and copyright infringement. A further $58,000 in damages for trade mark infringement and $25,000 in punitive damages was awarded against one of the defendants in a follow up hearing.
Criminal penalties are limited to those in the Canadian Copyright Act (Section 42) for copyright infringement or piracy and in the Criminal Code for forgery or passing off of a trade mark (Sections 406 to 412), for recording a movie for personal use (Section 432(1)) and for recording a movie for commercial purposes (Section 432(2)).
Civil remedies for counterfeiting are available at common law for trade marks, and also pursuant to IP legislation, and include:
- recovery and/or accounting of profits;
- destruction of the infringing goods (or the means by which they were made);
- recovery of legal costs; and,
- for copyright infringement, statutory damages.
A plaintiff may seek damages under multiple statutes (e.g., for both trade mark and copyright infringement), arising from the same activity.
If an infringement or passing off/depreciation action is started, the plaintiff can also bring an application for seizure of the goods, with or without notice to the defendant (known as an Anton Piller or John Doe seizure order).
In October 2007, Canada announced that it was participating in discussions towards an Anti-Counterfeiting Trade Agreement (ACTA), in association with several other countries including Japan and the United States. ACTA is intended to increase international cooperation in combating counterfeiting. To date only limited public consultation has occurred in Canada in respect of this Agreement. The next round of meetings on ACTA will be held in March 2009.