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 491 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 Japan 4. Please explain what term your country regards as "a reasonable period within which the competent authorities shall inform the applicant whether or not they have accepted the Application" stipulated in Article 52 of the TRIPS Agreement.
Where the applicant has a prima facie case of infringement, the court would ordinarily issue an order without delay. Such applications are normally brought on and determined expeditiously, i.e. within a few days.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada Japan 5. Please explain the term during which the Application is effective.
The term during which goods are temporarily detained serves the purpose of enabling a right holder to bring an action for the final determination of the legality of the importation and would hence ordinarily be commensurate with the periods mentioned in the answer to question 4.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada Japan 6. Please explain whether a right holder is obliged to pay any fees to lodge the Application.
Before making an order on behalf of an applicant for protection against alleged copyright or trademark infringing goods, the court may require the applicant to furnish security, in an amount fixed by the court, to cover any duties, charges or damages that may by reason of the order be incurred by the owner, importer or consignee of the goods.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada Japan 7. Please indicate provisions of laws and ordinances which prescribe the "proceedings leading to a decision on the merits of the case" stipulated in Article 55 of the TRIPS Agreement. And please summarize their contents.
Under the Trade-marks Act, section 53.1, and the Copyright Act, subsection 44.1, there is a right of action for a "final determination by the court of the legality of the importation or distribution".
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada Japan 8. Please explain the specific procedure, if any, to be applied to the goods which are not evident whether or not they infringe intellectual property rights, in Article 55 of the TRIPS Agreement.
When the customs officials are directed by a court order to detain specific suspected infringing goods, they will attempt to detect and detain those goods. Once a detention has been made, the applicant and the importer will be notified. The applicant has two weeks after the notification to notify customs officials that the applicant has commenced a proceeding for a final determination by the court of the issues. If customs officials have not received such notification within that two week time period (or whatever time period that the court may specify), the goods will be released back into the regular flow of customs traffic. It should be noted that before the court will order the suspension of the goods, it must be satisfied that there is infringement. Therefore a prima facie case would have to be made out.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada Japan 9. Please explain the responsibility that the competent authorities and other related authorities take to the right holders when they fail to suspend the release into free circulation of goods which infringe intellectual property rights with regard to the suspension based on the Application or the Ex Officio Action stipulated in Article 58 of the TRIPS Agreement.
In Canada, customs authorities do not act on their own initiative, but only after a court order has been issued under section 53.1 of the Trade-marks Act, or subsection 44.1 of the Copyright Act. If the customs authorities take reasonable measures to detain the goods, they would ordinarily not be liable if any goods were inadvertently allowed to enter the channels of commerce.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada Japan 10. Please explain the responsibility that the competent authorities and other related authorities take to the right holders when they examine goods which infringe intellectual property rights and nevertheless release them into free circulation with regard to the suspension based on the Application or the Ex Officio Action stipulated in Article 58 of the TRIPS Agreement.
Both the Copyright Act and the Trade-marks Act require customs officials, under an order from the court, to take reasonable measures on the basis of information reasonably required by them and provided by the applicant to detain the goods. Customs officials do not make decisions on infringement of intellectual property rights, that is left to the courts. When customs officials receive a court order to detain certain goods, the officials will detect the goods by description, origin, importer, etc.. Describing the goods as counterfeit or pirated is not a useful description for customs purposes in detecting the goods. Once customs officials are satisfied that the goods are the subject of the court order, they will not release them without direction from the court to do so (or if the above two week time-limit expires).
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada Japan 11. Please explain the responsibility that the competent authorities and other related authorities take to the importers when they suspend the release into free circulation of goods which do not infringe intellectual property rights with regard to the suspension based on the Application or the Ex Officio Action stipulated in Article 58 of the TRIPS Agreement.
See the answer to question 10 above.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada Japan 12. Is the right holder informed of identities of the importers and consignors when the competent authorities "suspend" the goods which infringe on intellectual property rights or which are suspected to infringe intellectual property rights, as well as the case where the right holder is informed of identities of the importers and consignors stipulated in Article 57 of the TRIPS Agreement?
When goods are detained by customs officials in accordance with a court order, the applicant is notified that the goods described in the order had been detained. If the name of the importer or consignee was indicated in the order, that identity becomes part of the description of the goods, otherwise, the identities of importers or consignees are considered to be confidential information for customs purposes (unless disclosure of the names is ordered by the court).
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada Japan 13. Please explain the measures to protect confidential information in the course of the inspection stipulated in Article 57 of the TRIPS Agreement. And please indicate provisions of laws and ordinances which prescribe such measures.
See the answer to question 12. Also, the Customs Act provides that, unless ordered to do so by the court, or unless the Minister of National Revenue decides that circumstances require it, disclosure of information received for customs purposes is not allowed.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada Japan 14. Please explain the procedures of detentions and seizures to be ordered by the competent authorities based on Articles 51 and 55 of the TRIPS Agreement.
See the answer to question 8 above.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada Japan 15. Please explain the procedures to appeal against any decisions ordered by the competent authorities based on Articles 51 and 55 of the TRIPS Agreement.
Canada complies with Article 55 of the TRIPS Agreement. Under subsection 53.1 of the Trade-marks Act, suspension measures ordinarily become null and void after two weeks, unless an action to determine the legality of the importation has been commenced and the Minister of National Revenue has been so notified. Once an action has been commenced, as part of the judicial process, the importer, as an interested party, would have the right to be heard. It should be noted that, before the court will order the suspension of the goods, it must be satisfied that there is infringement. Therefore, a prima facie case would have to be made out. Under Section 44.1 of the Copyright Act, a similar procedure applies to goods which are imported where there is a prima facie copyright infringement. Under Section 27 of the Federal Court Act, an appeal on any final or interlocutory judgement of the Federal Court lies to the Federal Court of Appeal.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada Japan 16. Please explain the basis for calculating the security or equivalent assurance stipulated in Article 53 of the TRIPS Agreement that the competent authorities may require an applicant when they suspend the release into free circulation.
Subsection 53.1 (3) of the Trade-marks Act provides as follows: "Before making an order under subsection (1), the court may require the applicant to furnish security, in an amount fixed by the court, (a) to cover duties, storage and handling charges, and any other amount that may become chargeable against the wares; and (b) to answer any damages that may by reason of the order be sustained by the owner, importer or consignee of the wares." Subsection 44.1 (5) of the Copyright Act is similarly worded.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada Japan 17. Please explain who shall pay the cost of detentions based on Article 51 of the TRIPS Agreement or destruction stipulated in Article 59 of the TRIPS Agreement.
The person seeking an order for detention and destruction of infringing goods under Section 53.1 of the Trade-marks Act would prima facie be liable for the costs associated therewith, in accordance with the security which that person provides. However, the court may also order the defendant to pay such costs, in appropriate cases.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada Japan 18. Please explain what kind of cases are regarded as "the exceptional circumstances" in which the competent authorities may allow re exportation of counterfeit trademark goods stipulated in Article 59 of the TRIPS Agreement.
We are not aware of any cases in which the courts have considered this issue.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada Japan 19. Please explain kinds and contents of documents which shall be provided by the applicant to lodge the Application.
By "Application" in this question, we assume what is meant is an application for the temporary detention of infringing goods under Section 53.1 of the Trade-marks Act or Section 44.1 of the Copyright Act. In the Federal Court, such applications would be commenced by notice of motion served on the defendant, although they may also be initiated on an ex parte basis, where appropriate. In support of such applications would ordinary be filed a certificate of registration of the trademark or copyright, as well as an affidavit which compared the trademark or copyrighted work with the infringing product, where the infringement was self-evident. Where the infringement was not obvious, however, expert testimony may be required. In addition, evidence of the imminent importation of the infringing product would ordinarily be required.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada Japan 20. Article 75 of the Canadian Patent Act provides that the maximum penalty for offence is a fine of $200, or imprisonment for three months, or both. Please explain whether these criminal remedies are consistent with Article 61 of the TRIPS Agreement which requires provisions for a sufficient deterrent, consistently with the level of penalties applied for crimes of a corresponding gravity.
It is noted that the provision of criminal remedies for patent infringement in Article 61 of the TRIPS Agreement is permissive only, not mandatory. In Canada, patent infringement is primarily deterred by the imposition of civil remedies.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada Japan 21. Please explain whether the Canadian Trade marks Act provides for the criminal procedures. Please explain whether the Canadian Act is consistent with Article 61 of the TRIPS Agreement.
Canada is compliant with Article 61 of the TRIPS Agreement. Criminal remedies for trademark offences are contained in the Criminal Code. Section 406 provides as follows: "For the purposes of this Part, every one forges a trademark who (a) without the consent of the proprietor of the trademark, makes or reproduces in any manner that trademark or a mark so nearly resembling it as to be calculated to deceive; or (b) falsifies, in any manner, a genuine trademark." Section 407 states that: "Every one commits an offence who, with intent to deceive or defraud the public or any person, whether ascertained or not, forges a trademark." The last section creates the offence of forging a trademark. That offence is committed where the acts described in Section 406 are done with the intention to deceive or defraud any person or the public. Other related offences are contained in Sections 407 to 411. Section 412 provides that that offence may be prosecuted by indictment, with a maximum punishment of imprisonment for two years, or by summary conviction. Anything by means of or in relation to which any of these offence is committed is forfeited upon conviction, unless the court orders otherwise.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada Switzerland 1. Please explain whether international treaties which contain detailed provisions addressed to the (judicial) authorities and not to the State itself are considered as self-executing in your system? If not, when there is a divergency between the intellectual property legislation/practices and the international agreement in your country, does the latter automatically prevail? If not, please explain the means allowing your country to fulfil the international obligations? Please cite the relevant texts or jurisprudence.
Canada follows the traditional British position that its laws are separate from its treaty obligations and that treaties do not automatically modify its laws. Should Canada's laws need to be changed, in order to comply with a treaty obligation, a legislative amendment would be required. Thus, if there were a divergence between Canada's intellectual property legislation and the TRIPS Agreement, that legislation would have to be amended by Parliament.
12/10/1998
IP/Q4/CAN/1/Rev.1 Canada Switzerland 2. Article 55 of the TRIPS Agreement provides that "...in appropriate cases, this time-limit [of ten days] may be extended by another ten days". Is such time extension foreseen in your laws? If yes, please cite the relevant provisions. If not, please explain how an applicant can avail himself of this possibility as provided by the TRIPS Agreement.
There is no express reference to an additional ten working days in either the Copyright Act or the Trade-marks Act. However, Subsection 44.1 (3) b of the Copyright Act and Subsection 53.1 (1) c of the Trade-marks Act allow the court to make an order "providing for such other matters as the court considers appropriate". These provisions, coupled with the inherent equitable jurisdiction of the superior provincial courts and, as concerns intellectual property, the Federal Court, would enable a court to provide for an additional ten working days, in appropriate cases.
12/10/1998

Page 491 of 677   |   Number of documents : 13533

 
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