Whether we are talking about patents, trademarks, copyright or other forms of intellectual property, they need to be enforced and protected. One outcome of IP litigation can be a monetary award, for example, an award of damages. Organizations sometimes find themselves in a position where a final award in an IP case must be enforced against an individual or a company located in Canada. This happens, for example, where the Canadian defendant has no meaningful assets located in the foreign jurisdiction. It happens more often than one might think.
Essentially, a foreign judgment is viewed as a contractual obligation that can be enforced by a court in Canada. The following six points outline the relevant steps and considerations associated with such enforcement.
- Generally, provincial courts have jurisdiction to enforce a foreign judgment against a person or a company with ties to the province. A provincial court may render its own judgment in an action to enforce a final and conclusive in personam judgment of a foreign court without reconsideration of the merits of that lawsuit. Unlike attempting to examine a witness in Canada, Letters of Request are not required to enforce a judgment.
- Enforcement is usually permitted where the foreign court had “jurisdiction” because: (a) the Canadian defendant was properly served with originating process; (b) the Canadian defendant attorned; or (c) there was a real and substantial connection between the claim and the foreign court.
- Importantly, an action to enforce must be commenced in the provincial court within any applicable limitation period.
- A provincial court may stay or decline to hear an enforcement action when the foreign judgment is under appeal or when there is another subsisting judgment in any jurisdiction relating to the same cause of action.
- If enforcement is granted, the Canadian judgment will be rendered in Canadian dollars.
- Defences to enforcement in Canada exist and include proof that the foreign judgment: (a) was obtained by fraud; (b) is for a claim that, under the law of the province, would be considered as having been based on penal or public law, taxation or government seizure of property; (c) is contrary to public policy; and (d) has been satisfied or is void or voidable.