Review of TRIPS Implementing Legislation - Search

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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 490 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 European Union [Follow-up question from the EC] Is it the case that, under Section 53.2 of the Trade-marks Act, the courts will only order the release of goods upon the simple removal of the trademark unlawfully affixed in exceptions circumstances?
Yes.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada European Union If not, how is the requirement of Article 46 of the TRIPS Agreement met?
Not applicable.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada European Union 7. In what circumstances, if any, do Canadian judicial officials have the authority to order an infringer of intellectual property rights to inform the right holder of the identity of third persons involved in the production and distribution of goods and services found to be infringing and of their channels of distribution (Article 47 of the TRIPS Agreement)?
The Federal Court and the superior courts of the provinces have inherent authority to make such orders as are necessary for the administration of justice, in deciding intellectual property right infringement cases. (It is noted that Article 47 of the TRIPS Agreement is permissive, not mandatory.)
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada European Union [Follow-up question from the EC] Could the Government of Canada please specify the provisions under which the Federal Court and the superior courts of the provinces have authority to make these orders?
Please see answer to follow-up question to question 1.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada European Union 8. Under what statutory provisions are "public authorities and officials" such as members of the Copyright Board, the Trademark Opposition Board, or the Patented Medicine Prices Review Board made liable for actions taken otherwise than in good faith, in their administration of intellectual property laws? Does Canada interpret Article 48.1 of the TRIPS Agreement, to require liability of judicial decision makers as "public authorities"? If so, how are judicial decision makers liable for bad faith actions (Article 48.2 of the TRIPS Agreement)?
The Copyright Board, Trademark Opposition Board and Patented Medicine Prices Review Board are not engaged in the enforcement of intellectual property rights. The courts are.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada European Union 9. Given that Canada's Copyright Board may order a civil remedy (i.e. the payment of a tariff as compensation for the infringement of copyright), does the Copyright Board's constitutive Act, regulations or rules of procedure comply with Canada's obligation to ensure administrative authorities are empowered to: (a) identify and protect confidential information (Article 49 in conjunction with Article 42 of the TRIPS Agreement)? (b) order a party to produce relevant evidence (Article 49 in conjunction with Article 43.1 of the TRIPS Agreement)? (c) order the infringer to pay damages "adequate to compensate for the injury the right holder has suffered" (Article 49 in conjunction with Article 45.1 of the TRIPS Agreement)? (d) order the infringer to pay the right holder's expenses (Article 49 in conjunction with Article 45.2 of the TRIPS Agreement)? (e) to grant injunctions (Article 49 in conjunction with Article 44 of the TRIPS Agreement)?
The Copyright Board may not order a civil remedy. Rather, it establishes tariffs. Once a tariff is established, a right holder may have recourse to the courts, through judicial proceedings, to enforce its rights. Thus Article 49 of the TRIPS Agreement would not apply. By way of information, the Board: (a) is empowered to protect confidential information, in the exercise of the general powers of an administrative tribunal; (b) is empowered to order a party to produce relevant evidence, in the exercise of the general powers of an administrative tribunal; (c) may not order damages; (d) may not order costs; and (e) may not grant injunctions. The courts would have power to grant the remedies under (c), (d) and (e).
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada European Union 10. Given the existing standards for interlocutory (including interim) relief under Canadian law, are Canadian judicial authorities able to order effective provisional measures, particularly in the area of patents? How are Canadian courts obliged to discontinue provisional measures if prosecution of the infringement action is not initiated in an expeditious fashion (Article 50 of the TRIPS Agreement)?
The Federal Court and the superior courts of the provinces have inherent equitable authority to make such interim or interlocutory orders as are necessary for the administration of justice, in patent and other intellectual property right cases. Such orders may include quia timet injunctions and Anton Piller orders. Where delay is encountered in the prosecution of an infringement action, the equitable doctrine of laches would enable the court to vacate such orders, at the request of the moving party.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada European Union [Follow-up question from the EC] Please specify the provisions under which the Federal Court and the superior courts of the provinces have authority to make such interim or interlocutory orders.
Please see the answer to follow-up question to question 1.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada European Union 11. Do Canada's Trade-marks Act border measure provisions comply with Article 51 of the TRIPS Agreement in that they limit the right to apply for a border measure to persons with an interest in a registered trademark? Please explain.
It is noted that paragraph (a) of Note 14 of the TRIPS Agreement clarifies that "counterfeit trademark goods" refers to the infringement of a registered trademark.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada European Union 12. Are Canada's Copyright Act border measure provisions inconsistent with Article 51 of the TRIPS Agreement in that they limit the right to apply for a border measure to owners or exclusive licensees of the copyright? Please explain.
In the context of the TRIPS Agreement, "right holders" are considered to be owners (for copyright, owners include the authors of the works in question). By including exclusive licensees, Canada's legislation has, in fact, gone beyond the obligations in Article 51 of the TRIPS Agreement.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada European Union 13. In the context of border measures of counterfeit trademark goods, how is an importer’s right to be heard "within a reasonable period" (as to whether such a suspension should be modified, revoked or confirmed) protected under Canadian law (Article 55 of the TRIPS Agreement)?
Under subsection 53.1 (6) of the Trade-marks Act, Canada's customs authorities must release the imported goods within two weeks of their suspension, unless the Minister of National Revenue is served with notice of an action for a final determination by the court of the legality of the importation. Upon commencement of that action, as part of the judicial process, the importer, as an interested party, would have the right to be heard. In addition, upon notice of the detention and even prior to the commencement of the action, the importer may be heard in court in appropriate circumstances.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada European Union 14. With regard to cases that involve the infringement of intellectual property, could the Government of Canada provide data on the number of: - law suits that have been filed including their respective outcome and the average length from the filing of a complaint until the final judgement; - injunctions that have been issued (as defined in Article 44 of the TRIPS Agreement) and explain how such injunctions are being enforced; - provisional measures (as defined in Article 50 of the TRIPS Agreement) that have been granted and the average length to obtain such measures (from the request); - suspensions at the border of counterfeit trademark, pirated copyright goods or in relation to goods where other intellectual property rights are infringed; - criminal cases including the sentences that have been applied, whether they have been executed and please also explain what kind of infringement of an intellectual property right would be regarded as a violation of criminal law; - seizures and/or destruction of counterfeit trademark and pirated copyright goods. Furthermore, could the Government of Canada explain and give practical examples: - how the compensation for damages of the infringement of intellectual property rights is calculated (Article 45.1 of the TRIPS Agreement); - what would be regarded as "expenses of the right holder" which have to be reimbursed pursuant to Article 45.2, first half of the first sentence, of the TRIPS Agreement and how they would be calculated; - whether attorney's fees can be reimbursed and how such fees would be calculated; - whether Article 45.2, second sentence, of the TRIPS Agreement has been implemented in Canada and how such "damages" would be calculated?
The information requested in the first six sub-paragraphs of the question would not appear to be required by Article 63 of the TRIPS Agreement, nor is it readily available. As noted in Canada's replies to the Checklist of Issues on Enforcement Canadian courts award damages whenever they determine that a loss can be remedied by an award of money, and the purpose of damages is to put the plaintiff in the position in which it would have been had the loss not occurred. General damages are those which, although being the direct and natural consequences of the act which gave arise to the damage, are incapable of proof with any degree of precision. Special damages however are damages which are easily provable, e.g., out-of-pocket expenses. Punitive or exemplary damages may be awarded where the defendant has behaved with a callous disregard for the plaintiff's rights. Their purpose is to deter others from following such conduct. Subsection 55(2) of the Patent Act allows a patentee, and all persons claiming under him or her, to sue for damages for infringement. Section 15.1 of the Industrial Design Act, and s. 9 of the Integrated Circuit Topography Act, allow damages to be claimed, including for lost profits and punitive damages (and, in the case of topographies, for payment of royalties). However, where the defendant was not aware, and had no reasonable grounds to suspect, that the design or topography was registered, the plaintiff's remedies are restricted to an injunction (Industrial Design Act, s. 17; Integrated Circuit Topography Act, s.10). Section 53.2 of the Trade-marks Act authorizes orders for "the recovery of damages or profits". Subsection 41(1) of the Plant Breeders Rights Act provides that a court may make an order for compensation of an aggrieved person, and subsection 42 (2) gives authority to the court to determine costs. section 34 of the Copyright Act allows a copyright owner to sue for damages. However, section 39 limits the remedy to injunctions where the defendant is not aware of the existence of the copyright in the work. In addition, section 35 allows a copyright owner to sue for lost profits and requires that he or she only provide receipts or revenues derived from the publication, sale or other disposition of the infringing work. 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 (Copyright Act, Subsection 34 (2)). Also, rules of court may provide for factors, other than winning or losing, which may be considered. For example, where appropriate, the court may also impose costs against one invoking the aid of its process, i.e., where a proceeding was unnecessary or vexatious). However, attorney's fees are not ordinarily treated as a head of special damages, nor are they normally included in an order for costs. Where ordered, they are restricted to the schedule of costs contained in the rules of court procedure, which is ordinarily based on days in court only. In terms of the second sentence of Article 42.2 of the TRIPS Agreement, as part of Phase II of its major revisions to the Copyright Act, Canada enacted Bill C-32 on 25 April 1997, which includes a provision on pre-established damages. (Please note that this section has not yet been proclaimed in force).
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada Hong Kong, China 1. Is it correct to say that intellectual property infringement cases often end in the interim interlocutory stage? If yes, what seem to be the reasons? Is this desirable in the interest of justice?
By virtue of the costs associated with litigation, and other practical factors, it may happen that an interlocutory injunction will, from a practical point of view, dispose of an intellectual property right infringement action.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada Hong Kong, China 2. In civil proceedings, are there any proof facilitation provisions which could create legal presumptions of intellectual property subsistence and ownership and thus could excuse the right owner from appearing in court and to testify these issues? If not, why?
There are several provisions, such as Section 55.1 of the Patent Act and subsection 53 (2) of the Copyright Act, which provide rebuttable presumptions only. They would not have the effect of excusing the right owner from appearing in court.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada Hong Kong, China 3. Does any intellectual property enforcement agency have the legal power to seize and forfeit suspected infringing articles, whether or not a charge has been laid? If not, why?
In Canada, criminal procedures for the enforcement of intellectual property rights are under the supervision of the courts. Subsection 42 (3) of the Copyright Act allows the court, in the context of a prosecution for an offence under subsection 42 (1), to deal with infringing copies or plates as it sees fit, whether the alleged offender is convicted or not. As regards counterfeit trademarked goods, upon conviction of an offence under sections 407-411 of the Criminal Code, anything by which a person commits such an offence is forfeited.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada Hong Kong, China 4. Is there a specialized criminal intellectual property enforcement agency? If not, what is the rationale?
No.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada Hong Kong, China 5. In criminal proceedings, are there any proof facilitation provisions which could create legal presumptions of intellectual property subsistence and ownership and thus could excuse the right owner from appearing in court and to testify these issues? If not, why?
See Canada's response to question 2, above.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada Japan 1. Please indicate the "competent authorities" stipulated in Article 51 of the TRIPS Agreement.
Under the Copyright Act and the Trade-marks Act, the right holder will apply to the courts for an order directing Customs officials to detain suspected infringing goods. Thus, the "competent authorities" in Canada for the purposes of Article 51 of the TRIPS Agreement are the courts.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada Japan 2. Please explain whether "proceedings leading to a decision on the merits of the case" stipulated in Article 55 of the TRIPS Agreement, are judicial or administrative.
"Proceedings leading to a decision on the merits of the case" are judicial.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada Japan 3. Are there any ways other than the application stipulated in Articles 51 and 52 of the TRIPS Agreement (hereafter referred to as "the Application") which enable a right holder to request the competent authorities to suspend the release of the goods which infringe intellectual property rights or which are suspected to infringe intellectual property rights?
Yes - under section 14 of the Integrated Circuit Topography Act.
12/10/1998

Page 490 of 677   |   Number of documents : 13533

 
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