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?

Civil action

A party can sue for trademark infringement based on sections 19 and 20 of the Trademarks Act before the Federal Court or the relevant provincial superior court. Only a registered trademark can be infringed. Infringement is a defined legal term that typically includes the sale, distribution or advertisement of any goods or services in association with a confusing trademark or trade name.

The definition of infringement includes the manufacture, cause to be manufactured, possession, import, export or attempt to export any goods in association with a confusing trademark or trade name for the purpose of their sale or distribution. These same actions are not permitted where applied to labels or packaging intended to be associated with the goods or services of the owner of the registered mark.

The owner of a registered trademark may also bring an action for depreciation of goodwill of its trademark, under section 22 of the Trademarks Act.

An action for passing off under section 7 of the Trademarks Act can be brought before the Federal Court. An action for passing off at common law may also be brought before the relevant provincial Superior Court.

Criminal action

The Criminal Code targets the sale, offer for sale or distribution of counterfeit products on a commercial scale, as well as the manufacture, cause to be manufactured, possession, import, export or attempt to export any counterfeit goods and any label or packaging for the purpose of sale or distribution on a commercial scale.

Among other exceptions, in-transit shipments and personal-use goods are excluded.

Procedural format and timing

What is the format of the infringement proceeding?

In the Federal Court, a party can choose two different procedural tracks. The first, ‘by way of application’, is relatively quick, based on sworn affidavits with no examination for discovery. A party can expect to request a hearing within six months of launching proceedings, although court backlogs might delay the scheduling of the hearing. The application is heard by a single judge of the court where the proceeding is brought - typically the Federal Court of Canada.

The second, ‘by way of action’, is a more traditional litigation route with full discovery and live testimony. This procedural track is typically lengthier, with various motions along the way. A case can easily take several years to reach hearing and decision. The action is heard by a single judge of the court where the proceeding is brought, typically the Federal Court of Canada.

Burden of proof

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

The burden of proof in an action for infringement or depreciation of goodwill is the balance of probabilities.

Standing

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

Any interested person may file a trademark infringement action. This includes any physical or legal person, lawful trade union, lawful association engaged in trade or business or administrative authority that is affected or reasonably apprehends that it may be affected by any act, omission or contemplated act or omission contrary to the Trademarks Act.

Only the Crown through its designated officials may initiate a criminal complaint.

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?

Canada has adopted a request for assistance regime to halt the import or export of counterfeit goods, whereby the owner of one or more registered marks may register these rights with the Canada Border Services Agency (CBSA). The CBSA may then detain goods for five to 10 days and exchange information with trademark owners, allowing them to take civil action to extend the detention period. Brand owners will bear the costs of detention. There is no summary procedure allowing for the destruction of counterfeit goods.

In civil proceedings before a court, activities that take place outside the country of registration may support a claim of infringement or depreciation of goodwill (eg, infringement by export of goods to another jurisdiction).

Discovery

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

In infringement proceedings where the trademark owner proceeds by way of action in the Federal Court, the Federal Courts Rules provide that the adverse party is required to provide copies of all relevant documents in its possession, power or control, and is required to submit to examination for discovery. Examination for discovery and production of documents from third parties may be ordered with leave of the Court, and third parties may be subpoenaed to attend at trial. Adverse parties outside of Canada are required to provide copies of all relevant documents and submit to examination for discovery in the same manner as Canadian parties.

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?

A motion or application for a preliminary injunction (in the context of an action for infringement or depreciation of goodwill) may be brought at the outset of proceedings, or after the close of pleadings.

In a proceeding brought by way of application, a decision may be obtained in a few months. In a proceeding brought by way of action, a case can take several years to reach hearing and decision.

An appeal of a trial decision will generally be heard and decided within one year of filing of the appeal.

Limitation period

What is the limitation period for filing an infringement action?

The limitation period for trademark infringement is generally six years after the cause of action arose if the cause of action - including damages - arises otherwise than in a single province of Canada.

In some Canadian provinces, the limitation period has been reduced to two years.

Litigation costs

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

The costs of an action for infringement or depreciation of goodwill are difficult to predict in the abstract, and depend upon the pleaded issues, the manner in which the proceeding progresses, and the conduct of the parties in the litigation. Costs can range from less than $100,000 for a straightforward proceeding that is resolved in a summary manner, to more than C$1 million for complex actions that are hotly contested between the parties and the ultimate decision is appealed.

The successful party in an action for infringement or depreciation of goodwill is typically entitled to an award of costs.

Appeals

What avenues of appeal are available?

An appeal may be filed with the Federal Court of Appeal for Federal Court decisions and to the relevant provincial court of appeal where an action was brought before a provincial superior court. An appeal to the Supreme Court of Canada is permitted only with leave.

Defences

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

A defendant in an infringement case will typically argue that there is no confusing similarity between the marks at issue and attack the registered rights on which the plaintiff relies. A defendant in an action for depreciation of goodwill will typically argue that it had not used the plaintiff’s registered trademark, that the plaintiff’s registered trademark is not sufficiently well known to have significant goodwill attached to it, and that the plaintiff’s mark was not used in a manner likely to have an effect on and to depreciate the value of that goodwill.

There are also many ways in which a defendant with significant financial means can seek to delay the progress of proceedings (eg, seeking to strike portions of a pleading, seeking particulars or motions to compel disclosure).

Remedies

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

The successful plaintiff in an action for infringement or depreciation of goodwill may seek:

  • interim or interlocutory injunctions;
  • permanent injunctions;
  • damages;
  • an accounting of profits; and
  • the destruction or other disposition of any offending goods, packaging, labels and advertising material and any equipment used to produce the goods, packaging labels or advertising material.

Punitive damages and exemplary damages may be awarded in exceptional circumstances. The successful party is typically entitled to an award of costs.

Penalties for criminal offences include a fine of up to C$1 million and up to five years in prison for an indictment, and a C$25,000 fine and up to six months in prison for a summary conviction offence.

ADR

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

Parties to a dispute may voluntarily participate in mediation. The Federal Court of Canada makes available judges and case management officers to conduct mediations of disputes before the Federal Court, and such mediations often result in successful outcomes.

In some provincial jurisdictions, a party may serve an adverse party with a notice to mediate, which requires the other party to participate in mediation, failing that, their claim or defence may be dismissed.

A mediated settlement agreement is enforceable under provincial law as any other agreement.