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Which courts are empowered to hear trademark disputes?
The Federal Court has both concurrent and exclusive jurisdiction to hear trademark disputes – the jurisdiction is exclusive where statutory registration, expungement or the grant of trademark rights is at issue. Jurisdiction is concurrent when the claim is one of infringement of those rights. A party can elect to bring these claims before the Federal Court or before the provincial superior courts.
What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?
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 which 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 was recently broadened to include 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.
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.
In-transit shipments and personal-use goods are excluded.
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.
Who can file a trademark infringement action?
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.
What is the statute of limitations for filing infringement actions?
The statute of limitation 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.
What is the usual timeframe for infringement actions?
In the Federal Court a party can choose procedural tracks. The first – ‘by way of application’ – is relatively rapid, 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 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.
What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?
A party seeking an interim or interlocutory injunction must move swiftly to seek relief and establish:
- a serious issue to be tried;
- irreparable harm; and
- that the balance of convenience favours the moving party.
The courts may be reluctant to grant interlocutory injunctions where the moving party can be compensated in damages.
What remedies are available to owners of infringed marks? Are punitive damages allowed?
The owner of an infringed mark may seek:
- interim or interlocutory injunctions;
- permanent injunctions;
- an accounting of profits; or
- 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.
What customs enforcement measures are available to halt the import or export of infringing goods?
Canada has adopted a new request for assistance regime to halt the import or export of counterfeit goods, whereby the owner of 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.
What defences are available to infringers?
A defendant will typically argue that there is no confusing similarity between the marks at issue and attack the registered rights on which the plaintiff relies. 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).
What is the appeal procedure for infringement decisions?
An appeal can 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.
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