• (230) 4278861, 4260399

Enforcement of IPRs in Canada


Enforcement of IPRs
One of the major reasons why counterfeits are found in Canada is because they are not destroyed at the first instance since Canada requires the owners of trademarks and copyright to assume sometimes-onerous legal and other costs, and to be proactive in registering with CBSA ahead of time. Apart from that, online intermediaries operating without appropriate surveillance is also another reason for their unfettered presence.
Luxury garments, accessories, and electronics are the goods that most often face counterfeiting and piracy in Canada.
They are as follows:
  • The Patent Act (R.S.C., 1985, c. P-4)
  • The Patent Rules (SOR/2019-251)
  • The Trademarks Act (R.S.C., 1985, c. T-13)
  • The Trademarks Regulations (SOR/2018-227)
  • The Olympic and Paralympic Marks Act (S.C. 2007, c. 25)
  • The Copyright Act (R.S.C., 1985, c. C-42)
  • The Copyright Regulations (SOR/97-457)
  • The Industrial Design Regulations (SOR/2018-120)
  • The Industrial Design Act (R.S.C., 1985, c. I-9)
  • The Integrated Circuit Topography Act (S.C. 1990, c. 37)
  • The Integrated Circuit Topography Regulations (SOR/93-212)
Canada has complementary (but generally mutually exclusive) systems of protection for creative subject matter (copyright), inventions (patents), ornamental designs (industrial designs), marks and guises to distinguish wares and services (trademarks), integrated circuit designs/topographies and plant breeds. Broadcasting, telecommunications, and other regulatory regimes may also offer peripheral protection. Protection of unregistered IP rights is available through copyright and trademarks and concerning the disclosure of trade secrets.
Cease and desist letters are commonly sent to alleged infringers before the commencement of legal action; although this is not mandatory. In Canada, because the vast majority of trade mark disputes are decided in the Federal Court, a unitary court not divided into districts or circuits, there is relatively little risk of defendants forum shopping or seeking a declaratory judgment after receiving a cease and desist letter.
However, unfounded accusations of trademark infringement, particularly to a party's customers, should be avoided. This can give rise to:
  • Damages under section 7(a) of the TMA, which prohibits making a false or misleading statement tending to discredit the business, goods or services of a competitor; and
  • Liability under section 52 of the Competition Act, which similarly prohibits a party from knowingly or recklessly making a representation to the public that is false or misleading in a material respect.
Yes - The statute of limitation for trademark infringement is generally 06 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 02 years.
A) Government Authorities - Yes
B) Police Officials - Yes
C) Judiciary - Yes
D) Customs - Yes
A) Injunctions - Yes
B) Monetary Compensation - Yes
C) Raids - Yes
D) Seizures - Yes
E) Destruction - Yes
In Canada, the time required for an IP case to reach final determination (including the exhaustion of all appeals) varies widely from as little as 02 to as many as 19 years, with an IP infringement action taking an average of 03 to 05 years to reach trial. The Appeal of the Rial results may require at least 01 more year to be determined.
The principal factors that determine the length of a dispute are:
  • The nature and complexity of the dispute;
  • The specific procedures invoked;
  • The intensity with which the plaintiff prosecutes the matter;
  • The frequency with which interim decisions are appealed;
  • The degree of cooperation shown by the parties and their counsel (particularly with regard to scheduling); and
  • The possible delay, of up to 02 years in securing a trial date.
A) Responsible Authority - Supreme Court of Canada, the Federal Court of Appeal, the Federal Court of Canada, and in the Provincial Courts
B) Imprisonment Term - Trademarks: 06 months to 05 years; and Copyright: 06 months to 05 years
C) Monetary Fine - Copyright: C$5,000 50 C$20,000 per work infringed, or up to $25,000 on summary conviction or on conviction on indictment to a fine not more than $1,000,000, Trademarks: up to C$ 1 million; Patent: $200
As IP litigation is time intensive and draining on the parties’ resources and finances, parties may wish to consider using alternative dispute resolution techniques to resolve IP disputes. Mediation and arbitration involve participation by a neutral third party (often a retired judge) chosen by the parties to reach a resolution outside the court system. Mediation involves the third party acting as a facilitator of consensual discussions and negotiations, whereas an arbitrator can ultimately impose a binding resolution upon the parties (with or without appeal rights).
Some Canadian courts require parties to attempt mediation before proceeding to trial. Mediation and arbitration offer procedural flexibility and reduced costs, permitting the parties to choose their mediator or arbitrator, set the evidentiary rules, and schedule the steps in the proceeding. Mediation and arbitration often make it easier for the parties to preserve a business relationship. However, as IP disputes often involve claims of market exclusivity, compromise is often impossible and binding judicial determinations may be preferred to alternative dispute resolution techniques.
If a court is satisfied on application of any interested person that an act has been done contrary to the Trademarks Act, the court may make any order that it considers appropriate in the circumstances, including an order providing for relief by way of injunction and the recovery of damages or profits, for punitive damages and for the destruction or other disposition of any offending goods, packaging, labels and advertising material, and of any equipment used to product the goods, packaging, labels, or advertising material.
The applicant must bear the costs of customs intervention during enforcement.
The court may award damages against the rights holder who commences proceedings pursuant to these provisions and where those proceedings are dismissed or discontinued.
Court proceedings