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Article 63.2 of the TRIPS Agreement requires Members to notify the laws and regulations made effective by that Member pertaining to the subject matter of the Agreement to the Council for TRIPS in order to assist the Council in its review of the operation of the Agreement.

This page allows you to search Members' questions and answers on notified laws and regulations. You can consult search results on screen, download and print them in Excel format. You can also download individual documents.

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Page 492 of 677   |   Number of documents : 13533

Document symbol Notifying Member Member raising question Question Answer Date of document distribution  
IP/Q4/CAN/1/Rev.1 Canada United States of America 1. Articles 41.1 and 42 of the TRIPS Agreement require that procedures be available for the effective enforcement of the intellectual property rights covered by the Agreement. Please describe the structure of the judicial and administrative procedures in Canada in which parties can enforce their intellectual property rights, at local, provincial and national levels, explaining the interrelationships, if any, of the various types of courts and administrative bodies. How are any differences in interpretation of laws resolved?
The civil judicial enforcement of intellectual property rights takes place, for the most part, at the Federal Court, or the superior courts of the provinces (which have concurrent jurisdiction). Where low monetary damages are sought, actions may also be initiated in the provincial (i.e., small claims) courts of the provinces. Differences in interpretation would be resolved by the application of the principle of stare decisis, with the ultimate authority being the Supreme Court of Canada. (Since intellectual property rights are private rights of action, they are not enforced by administrative tribunals).
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada United States of America 2. Please identify any requirement that a foreign party must meet to initiate a proceeding in the courts and administrative bodies identified in answer to question 1 that is not required of a national or resident of Canada and cite the legal authorities providing for those differences.
There are no requirements that a foreign party must meet beyond those required of a national or resident of Canada, when initiating proceedings.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada United States of America 3. Articles 41.1 and 48 of the TRIPS Agreement require establishment of safeguards against abuse of judicial and administrative enforcement procedures, including provision for adequate compensation for injury suffered because of such abuse. Please describe the means available under the law of Canada to prevent abuse of judicial and administrative procedures or to remedy damages suffered as a result of such abuse and cite the legal authorities for those means.
Under the Federal Court Rules (and comparable rules in the courts of the provinces), there are three common means whereby abuse of the judicial process by a plaintiff would be deterred: (a) terminating the availability of the court process; (b) security by way of an undertaking in damages; and (c) costs. (a) Rule 419 provides for the striking of pleadings, which has the effect of terminating the availability of the judicial process for the enforcement action. It provides as follows: "(1) The Court may at any stage of an action order any pleading or anything in any pleading to be struck out, with or without leave to amend, on the ground that (a) it discloses no reasonable cause of action or defence, as the case may be; (b) it is immaterial or redundant; (c) it is scandalous, frivolous or vexatious; (d) it may prejudice, embarrass or delay the fair trial of the action; (e) it constitutes a departure from a previous pleading, or (f) it is otherwise an abuse of the process of the Court, and may order the action to be stayed or dismissed or judgement to be entered accordingly." It should be noted that the court will only strike pleadings in plain and obvious cases, e.g., where they disclose no reasonable cause of action. (Operation Dismantle Inc. v. The Queen, [1985] 1.S.C.R. 411). An action is considered to be vexatious where the claim does not sufficiently reveal the facts upon which the action is based, such that it is not possible for the defendant to answer or the court to regulate the action. An example of abuse of process is an action where arose out of the same facts as an action instituted four years earlier and which would involve repetition of a substantial amount of evidence and argument from that earlier case. (b) Rule 469 allows for interim and interlocutory injunctions, including Anton Piller orders. These injunctions are normally granted only where the plaintiff provides an undertaking in damages to the defendant, and where the plaintiff is not in a financial position to make good the undertaking as to damages, the court will refuse the injunction. Moreover, the court has authority to order interest on damages sustained as a result of an interlocutory injunction. (Algonquin Mercantile Corp. v. Dart Industries Can. Ltd., [1988] 2 F.C. 305 (Fed. C.A.)). (c) Canadian courts award costs as an indemnification of the expenses of litigation, i.e., fees plus disbursements. Hence, the winning party may be entitled to be compensated for the expense of bringing or defending the action. Such awards, however, are in the discretion of the court and are never automatic. The rules of court indicate which factors may be considered in awarding costs, e.g., the court may impose costs against one invoking the aid of its process where a proceeding was unnecessary or vexatious. Attorney's fees, when ordered, are restricted to the schedule of costs contained in the rules of court, which is ordinarily based on days in court only. (See also the answer to question 13).
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada United States of America 4. Please explain any provisions in the enforcement system in Canada that ensure expeditious remedies. In addition, please explain what provisions are available to prevent deliberate delays by the parties to a proceeding and indicate the circumstances in which such provisions will be applied.
Rule 469 of the Federal Court Rules reads as follows: "(1) An application for an interlocutory injunction may be made by any party, before or after the commencement of the trial of the action whether or not a claim for an injunction was included in that party's statement of claim or declaration, counterclaim or cross-demand, or third party notice, as the case may be; and any such application shall be supported by an affidavit establishing the facts that render the injunction necessary and shall be made by motion upon notice to all other parties. (2) Notwithstanding paragraph (1), in case of urgency, an application under that paragraph may be made without notice and that Court may, on any such application, grant an interim injunction for a period not exceeding ten days. (3) The plaintiff may not make an application under this rule before commencement of the action except in the case of urgency, and in that case the injunction may be granted on terms providing for the commencement of the action and such other terms, if any, as seem just. (4) An application for an interlocutory or interim injunction may, in the court's discretion, be refused on terms. (5) Every interlocutory or interim injunction is, whether or not it contains such an express term, subject to recession, suspension or amendment by order of the Court (which may, in case of urgency, be made ex parte at any time after the order granting the injunction was made)." Similar rules in the superior courts of the provinces also allow for interim and interlocutory injunctions, including Anton Piller orders and Mareva injunctions. Where delays are encountered, the courts may order sanctions against the dilatory party.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada United States of America 5. Article 41.2 addresses, among other things, the cost of judicial and administrative enforcement proceedings. Please describe any fees charged by judicial or administrative officials for filing legal actions involving intellectual property or for pursuing such actions once initiated, cite the legal authorities for such fees, and provide copies of the documents used to inform the public of such fees.
The fees for filing legal actions involving intellectual property are contained in the tariff of fees of the Federal Court Rules (and the tariffs of the rules of court in the provinces). The rules of court are subordinate legislation and, accordingly, have the force of law in Canada (or, in the case of provincial rules of court, in the province). In the Federal Court, the fees are indicated in Tariff A, which provides as follows: "2(1) The following fees shall be paid to the Registry by the party indicated at the time indicated: (a) by the party who commences a proceeding in the Trial Division, at the time of commencement: … $150 …; (b) by the party who takes steps to have a proceeding (other than an interlocutory application) heard by the Trial Division, at the time of setting the matter down for hearing at a general sitting or of filing the application for an order fixing a date and place for hearing: . . . $300 and, where any such hearing lasts more than 3 days, by each of the parties taking part in the hearing, forthwith after the end of the hearing, an amount equal to one-half of the aforesaid amount for each additional day…; (…) "(3) A party shall pay the fees indicated upon filing the following documents: (a) a notice of appeal from a final or interlocutory judgement of the Trial Division … $50 … (c) a notice of an application for leave to appeal or leave to commence an application for judicial review … $50 … "3(1) A witness, other than a witness who appears to give evidence as an expert, is entitled to be paid by the party who arranged for his attendance $20 per day, plus reasonable and proper transportation and living expenses, or, if it is larger, the fee or allowance in similar circumstances in a superior court of the province where the witness appears."
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada United States of America 6. Article 41.3 of the TRIPS Agreement requires that decisions on the merits of a case preferably be in writing, the better to determine the reasoning on which the decision is based. Please state, with regard to each type of court and administrative body identified in question 1, whether judges or administrative officials must render their decisions in writing and cite the legal authorities requiring such written opinions.
All judgements and orders of the Federal Court, with the exception of interlocutory ones, must be in the form of a separate document signed by the presiding judge (Rule 337(2)). Interlocutory judicial and orders may be endorsed on the notice of motion or other document on the court file (Rule 337(7)). Similar rules exist for the superior courts of the provinces. Since intellectual property rights are private rights of action, they are not enforceable by administrative agencies. (It is noted that the stipulation in Article 41.3 of the TRIPS Agreement, that reasons for judgement be in writing, is directory, not mandatory).
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada United States of America 7. Article 41.3 also requires that decisions on the merits of a case be based only on evidence in respect of which parties had an opportunity to be heard. Please state, with regard to each type of court and administrative body identified in question 1, what factors may be considered by a judge or administrative official in rendering a decision and cite the legal authorities establishing the basis on which judges and administrative officials may reach decisions.
It is a fundamental principle of justice that judges render their decisions on the basis of the law and the facts, as contained in the evidence before them. Also, the principles of justice require that a person whose rights are affected by a decision of the court must have the right to be heard. To do otherwise would be a reviewable error.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada United States of America 8. Article 41.4 obligates WTO Members to provide for judicial review of certain judicial and administrative decisions in intellectual property enforcement proceedings. Please describe any legal limitations placed upon the ability of a party to an intellectual property enforcement proceeding to have both procedural rulings and final decisions reviewed by a separate judicial authority, and cite the legal authorities providing for such reviews.
It is also a fundamental principle of justice that decisions of the courts are reviewable, on appeal, for errors of law or jurisdiction.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada United States of America 9. Article 42 requires that defendants be notified of judicial and administrative intellectual property enforcement proceedings brought against them. Please describe the procedures followed by each type of court and administrative body identified in question 1 for notifying defending parties regarding proceedings that have been initiated against them, indicate the information provided regarding the proceeding and cite the legal authorities establishing these procedures.
For most intellectual property rights, the Federal Court has a concurrent jurisdiction with the superior courts of other provinces for infringement cases (Federal Court Act, Subsection 20(2); Patent Act, Subsection 54(1); Industrial Design Act, Section 15.2; Trade-marks Act, Section 55; Plant Breeders Rights Act, Subsection 42(1), 43(1). Trade secrets, on the other hand, are protected through the application of the law of contract and tort and the principles of equity, or in Quebec Articles 1472, 1612 and 2088 of the Civil Code of Quebec, and are thus enforceable only in the superior courts of the provinces. Under Rule 400 of the Federal Court Rules, actions in the Federal Court are commenced by statement of claim, the purpose of which is to give the defendant notice of the legal and factual basis upon which the plaintiff brings its case. Under Rule 304, the statement of claim must be served personally upon the defendant. Under Rule 469 an application may be made for an interlocutory injunction, or for the interim reservation of property, etc.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada United States of America 10. Article 42 also requires that parties to intellectual property enforcement proceedings must be able to be represented by counsel and must not be subject to overly burdensome requirements to appear personally. Please describe any requirements imposed on the party to appear personally in a proceeding and cite the legal authorities such requirements.
There are no requirements for a party to appear personally. Parties may appear by counsel.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada United States of America 11. Under Article 42, parties are to be entitled to substantiate claims and present relevant evidence. Please describe any limitations under the law of Canada on a party’s ability to substantiate a claim or to present relevant evidence and cite the legal authority providing such limitations.
The courts follow the common law rules of evidence and, in Quebec, the Civil Code of Quebec and related legislation. Section 40 of the Canada Evidence Act makes the laws of evidence in the province where the proceedings are taken applicable to all actions over which Parliament has legislative authority. Section 53 of the Federal Court Act recognizes the admissibility of evidence and, in addition, provides a saving clause for evidence which, although not admissible under the Canada Evidence Act, would be admissible under the relevant provincial evidence act. It provides as follows: "1) The evidence of any witness may by order of the Court be taken, subject to any rule or order that may relate to the matter, on commission, on examination or by affidavit. 2) Evidence that would not otherwise be admissible shall be admissible, in the discretion of the Court and subject to any rule that may relate to the matter, if it would be admissible in a similar matter in a superior court of a province in accordance with the law in force in any province, notwithstanding that it is not admissible by virtue of Section 40 of the Canada Evidence Act." The Federal Court Rules also deal with evidence: Rule 332 (affidavits), Rule 468 (pre-trial admission of facts and documents), Rules 477 to 479 (evidence de bene esse), Rule 481A (plans, models and photographs). and Rule 494 (procedure for introducing evidence at trial).
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada United States of America 12. Article 44.2 provides an exception to the requirement in paragraph 1 for government use or use by third parties authorized by the government, limiting the remedy for infringement to payment of adequate remuneration as provided in Article 31(h). Please describe any such limitations on remedies in the laws of Canada and cite the legal authorities providing for those limitations.
By virtue of section 19 of the Patent Act and Section 7.2 of the Integrated Circuit Topography Act, no action would lie against the use by the government of a patented invention or registered topography, if authorized by the Commissioner of Patents, who would award adequate remuneration.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada United States of America 13. Article 45.2 requires that judges and administrative officials be authorized to order payment of a right holder's expenses, including legal fees. In IP/N/6/CAN/1, Canada states that attorney’s fees are not normally included in an award of costs and that, when they are awarded, the amount is based upon the days in court only. Please describe the circumstances under which such an order will be given, the factors considered in establishing the expenses.
Rule 344 of the Federal Court Rules provides as follows: "(1) The Courts shall have full discretionary power over payment of the costs of all parties involved in any proceeding, the amount and allocation of those costs and determining the persons by whom they are to be paid. ( … ) (3) In exercising its discretionary power pursuant to Subsection (1) the Court may consider (a) the result of the proceeding; (b) the amounts claimed and the amounts recovered; (c) the importance of the issues; (d) the apportionment of liability; … (f) any payment of money into Court . . . and the amount of that payment; (g) any offer of settlement in writing; (h) any offer of contribution …; (i) the volume of work; (j) the complexity of the issues; (k) the conduct of any party that tended to shorten or to lengthen unnecessarily the duration of the proceedings; (l) the denial of or the neglect or refusal of any party to admit anything that should have been admitted; (m) whether any stage in the proceedings was, (i) improper, vexatious, or unnecessary, or (ii) taken through negligence, mistake or excessive caution; (n) whether or not two or more parties should be allowed more that one set of costs, where they defended the proceedings by different counsel or where, although they defended the proceeding by the same counsel, they separated their defence unnecessarily; (o) whether two or more parties, represented by the same counsel, initiated separate proceedings unnecessarily; and (p) any other matter relevant to the question of costs."
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada United States of America 14. Article 46 requires that judges and administrative officials be authorized to order, in certain circumstances, other remedies, including disposal of goods outside commercial channels or destruction of goods and destruction of materials and implements the predominant use of which is the creation of infringing goods. In IP/N/6/CAN/1, Canada describes provisions in connection with industrial designs, integrated circuits, trademarks, plant breeders rights, and copyrights. Please describe the additional remedies available in connection with patents and trade secrets and describe the circumstances in which any of these authorities would be exercised and the factors considered in determining the nature of the remedies provided.
The superior courts of the provinces have inherent equitable jurisdiction to make such orders as are necessary for the administration of justice, in respect of patent infringement and breach of trade secrecy obligations. (The Federal Court has concurrent jurisdiction for patent infringement but not trade secrets).
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada United States of America 15. Article 47 provides that WTO Members may authorize judges and administrative officials to order infringers to identify for right holders third parties involved in the production and distribution of infringing goods or services and their channels of distribution. In IP/N/6/CAN/1, Canada states that there is no specific authority for such a remedy. Under the broad inherent discretion granted judges are they able to order that such information be provided right holders in order to enable the latter to enforce their rights? If so, please describe what factors would be considered in determining whether to order such a remedy.
Such a remedy might be ordered if necessary for the administration of justice. It would depend on the facts of the individual case. (It is noted that the requirement in Article 47 of the TRIPS Agreement is permissive not mandatory).
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada United States of America 16. Article 48.2 permits WTO Members to exempt public authorities and officials from liability from remedies only where their actions were taken or intended in good faith in carrying out their responsibilities under the law. Please explain any exemption provided public authorities and officials from liability for abuse of enforcement procedures, describe the circumstances in which such limitations would not apply, and cite the legal authorities granting such exemptions.
Canada has no ex officio enforcement procedures at the hand of its public authorities. Rather, as private rights of action, intellectual property rights are enforced by the right holders themselves through the judicial process.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada United States of America 17. Articles 50.2 and 50.8 require Members to authorize judicial and administrative authorities to adopt provisional measures inaudita altera parte. In IP/N/6/CAN/1, Canada states that such actions are possible in urgent situations in order to allow for the filing of material. Please describe the conditions that must exist for a court to consider a situation "urgent".
A finding of urgency would depend on the facts of the individual case. It is a rare case that involves urgency of the type that warrants an ex parte injunction (M.C.A. Can. Ltd. v. Robert Simpson Productions [1971] F.C. 445, 3 C.P.R. (2d) 240 (Fed. Ct. T.D.)).
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada United States of America 18. Articles 50.2 and 50.8 require Members to authorize judicial authorities and administrative bodies to grant provisional remedies when a delay is likely to cause "irreparable harm" to the right holder. In IP/N/6/CAN/1, Canada verifies that such authority exists. Please describe briefly what factors are considered by authorities to in determining whether "irreparable harm" to the right holder will occur. Likewise, what factors are considered in determining the "balance of convenience".
Irreparable harm cannot be adequately compensated by an award of damages, e.g., where there is serious doubt that the defendant would be able to pay any damages that might be awarded; where the loss of business would be devastating to the plaintiff and an accounting for profits would be an inadequate remedy; where the defendant enjoyed a disparate market power; or where damages would be unquantifiable. In determining the balance of convenience, the court may consider additional equitable factors, such as the effects an injunction would have on non-parties. Where the inconvenience to the plaintiff is equal to that of the defendant, the status quo should be maintained.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada United States of America 19. Articles 50.2 and 50.8 also require that Members authorize judicial authorities and administrative bodies to grant provisional remedies when there is a "demonstrable risk of evidence being destroyed". Please describe briefly what factors are considered by the competent authorities in determining when there is a "demonstrable risk of evidence being destroyed".
Under Rule 469 of the Federal Court Rules, the Federal court has jurisdiction, as part of its power to control its own process, to issue a Mareva injunction where there is a genuine risk that the defendant's assets would be removed or disposed of prior to judgement. Such an order requires affidavit evidence supporting the conclusion, on a prima facie basis, that further orders of the court would be frustrated if the injunction did not issue. Under Rule 470, the court may issue an Anton Piller order where the plaintiff establishes a strong prima facie case, that the potential damage would be very serious in the absence of an order, and that there is clear proof that the defendants would destroy the evidence, e.g., that there was a quantity of infringing goods which was about to be sold by the defendant to prospective buyers.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada United States of America 20. Articles 50.3 and 50.8 authorize judicial and administrative authorities to require applicant to provide evidence to establish with a sufficient degree of certainty that the applicant is the right holder and that infringement has occurred or is imminent. With respect to each intellectual property right defined in Article 1.2 of the TRIPS Agreement, please describe the evidence right holders must present to establish ownership.
Ordinarily, ownership of intellectual property rights is proven by registration certificates, which are admissible in court (Patent Act, Section 14; Plant Breeders Rights Act, Section 65; Trade-marks Act, Section 54; Copyright Act, Section 53; Industrial Design Act, Section 7; and Integrated Circuit Topography Act, Section 15). Such certificates create a rebuttable presumption that the information contained therein is accurate.
12/10/1998

Page 492 of 677   |   Number of documents : 13533

 
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