A recent decision of the Federal Court illustrates that the jurisdiction of the Federal Court can be limited.

Recent cases in both England and in the Ontario Superior Court have confirmed that Superior Courts of record have jurisdiction to grant a declaration of non-infringement. Unfortunately, the reasoning of these cases may not be helpful in the Federal Court.

Federal Court Jurisdiction  

The Federal Court is without inherent jurisdiction. Its jurisdiction is statutory and exceptional and must be positively shown. In order to support a finding of jurisdiction, the following three elements must exist:

  1. There must be an express statutory grant of jurisdiction by the Federal Parliament;
  2. There must be an existing body of Federal law which is essential to the disposition of the case and which nourishes the statutory grant of jurisdiction; and
  3. The law on which the case is based must be a “law of Canada” as the phrase is used in section 101 of the Constitution Act, 1867.

In this case the plaintiff brought an action which claimed, among other things, a declaration of non-infringement of an industrial design registration. The Prothonotary granted an order striking out the relevant paragraphs of the statement of claim on the basis that a declaration of non-infringement is not a cause of action within the jurisdiction of the Federal Court. The plaintiff appealed to a Judge of the Federal Court.

The Industrial Design Act  

The Court reviewed the provisions of the Industrial Design Act and noted that causes of action are established for infringement and expungement. However, the Act does not establish a cause of action for non-infringement. In light of this, and in spite of the plaintiff’s strenuous argument to the contrary, the Court concluded that it did not have jurisdiction over a cause of action for non-infringement of an industrial design and dismissed the appeal with costs.


Since the Trade-mark Act and the Copyright Act do not contain causes of action for non-infringement, it is preferable to bring such actions in the Superior Court of record of the relevant province.