Enforcement

Trademark enforcement proceedings

What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

Trademark infringement actions can be brought before the Federal Court of Canada or any provincial court of competent jurisdiction. An owner of a registered trademark may sue for trademark infringement, depreciation of goodwill, and/or unfair competition under section 7(b) of the Trademarks Act.

Procedural format and timing

What is the format of the infringement proceeding?

Trademark proceedings may be commenced by way of an action or application. An action allows for documentary and oral discovery and includes a trial with a live witness including expert testimony. Typically, discovery is quicker and more limited than is the case in the United States. In the case of a crime, the police or Royal Canadian Mounted Police may prosecute the criminal, but this is rarely done.

Burden of proof

What is the burden of proof to establish infringement or dilution?

The burden of proof to establish infringement or dilution is the civil standard of proof (ie, proof based on a preponderance of evidence, not reasonable doubt as in the case of a criminal proceeding).

Standing

Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

A trademark owner may seek a remedy for a trademark violation. A licensee may also seek a remedy, subject to the terms of the licence agreement but the trademark owner usually is a party to the action.

Border enforcement and foreign activities

What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

The owner of a registered trademark that considers its rights to be infringed by the importation and sale of counterfeit goods is given access to an assistance procedure under the Combating Counterfeit Products Act, whereby goods may be detained by customs officials.

Discovery

What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

Discovery – both documentary discovery and oral discovery – is governed by the rules of the court – either provincial or federal – in which the action or application is brought. In most provinces as well as in the Federal Court, both forms of discovery are available (in Quebec, document disclosure is only on specific request of the party seeking to obtain the documents). Documents provided during discovery are subject to the implied undertaking rule.

Documentary discovery should be constrained by proportionality considerations. In oral discovery, only one person is ordinarily examined for discovery on behalf of a corporate defendant. The result is that while discovery in Canada is typically more expansive than in, for example, European jurisdictions, it is much less expansive than in the United States and thereby is less expensive.

Third-party discovery is unusual in trademark actions in Canada. A request to a Canadian Court of letters rogatory is also unusual in Canada.

Timing

What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

The time frame can vary greatly depending on the complexity of the case. Generally, an action for infringement can take several years to get to trial.

Limitation period

What is the limitation period for filing an infringement action?

The limitation period depends on in which province the infringing act(s) took place. For cases where the trademark cause of action arose in a single province, the provincial limitation period of that province applies. Provincial limitation periods vary, but for most provinces is typically two or three years. For cases where the cause of action arises in more than one province, the federal limitation period of six years applies.

Litigation costs

What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

Litigation costs can vary widely depending on the length of the proceeding, its complexity and the number of witnesses, including possible expert witnesses, involved. Survey evidence is possible but appears to be falling out of favour.

Alternative approaches to obtaining a decision, such as proceeding by way of an application or the use of summary judgment and/or summary trial often reduce costs, as they shorten the time to decision and thereby the expense. Applications ordinarily require a day or two of hearing, as do summary judgment and summary trial. Trials often take two to three or more days of hearing.

The successful party typically receives an award of costs. Such costs awards usually fall in a range from 25 to 40 per cent of the actual professional fees incurred, together with reasonable disbursements.

Appeals

What avenues of appeal are available?

Decisions of the Federal Court may be appealed to the Federal Court of Appeal (FCA). Decisions of the FCA may be appealed to the Supreme Court of Canada, with leave.

Defences

What defences are available to a charge of infringement or dilution, or any related action?

Various defences are available to a defendant, including:

  • the trademark registration is invalid;
  • the trademark is not distinctive or has been abandoned by the plaintiff;
  • prior concurrent use of the trademark by the defendant in good faith;
  • good faith use of a personal name as a trade name;
  • good faith use of the geographic name of a place of business or of any accurate description of the character or quality of the goods or services; and
  • acquiescence and delay.
Remedies

What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

Various remedies are available to the successful party, most commonly:

  • a permanent injunction;
  • monetary remedies, an accounting of profits or damages; and
  • delivery up or destruction of the infringing goods.
ADR

Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

ADR is available through commercial service providers or through the court. Both mediation and arbitration are available, but mediation usually is favoured.