The jurisdiction of the Federal Court (and the superior court of each province) to require an undertaking in damages or equivalent security exists as part of the court's power to control its own process.

Please see the answer to question 4, wherein Rule 469 of the Federal Court Rules is quoted in full. Subsection (2) of that Rule stipulates that any ex parte order lapses after ten days. In addition, subsection (5) makes such orders subject to recession, suspension or amendment by the court, including, in case of urgency, on an ex parte basis as well. The ordinary requirement would be for the party obtaining an order ex parte to notify the other party immediately. Under Rule 469 (2) of the Federal Court Rules, interim injunctions which have been obtained on an ex parte basis are only valid for ten days.

Under Rule 330 of the Federal Court Rules, the court may rescind ab initio an ex parte order of the court, where the party who moves for such an order establishes that it is proper for the order to be rescinded. Such motions are made on notice to the other party and are supported by affidavit evidence. In addition, under Section 27 of the Federal Court Act, an appeal lies to the Federal Court of Appeal from any interlocutory judgement of the Federal Court (Trial Division). Such an appeal would be brought by filing a notice of appeal within ten days after the pronouncement of the Trial Division.

Provisional measures such as an interim or interlocutory injunction are normally ordered only upon the plaintiff providing an undertaking in damages to the defendant. Such damages are assessed in the same manner as other assessments of damages, i.e., upon proof of losses sustained.

Customs does not apply border measures against the export of suspected intellectual property right infringing goods. We note that the provision in the last sentence of Article 51 of the TRIPS Agreement is permissive, not mandatory.

A certificate of registration of a trademark or copyright, together with an affidavit comparing the allegedly infringing good with that trademark or copyright would, where the infringement was self-evident, ordinarily constitute prima facie evidence of infringement. Where the infringement was not self evident, expert evidence may be required.

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). Furthermore, to assist in detecting shipments of any goods under a court order, customs officials may require some or all of the following information to be provided by the applicant: (a) Complete description of the goods (b) classification of goods under the Harmonized System (c) quantity and value of the goods (d) identity of importer. e.g., name, address (location), business number (e) identity of exporter and vendor (f) country of export (g) country of origin (h) place of importation/accounting of goods (i) approximate date of arrival (j) mode of transportation (e.g., sea, rail, land)

The authority of the courts to order the release of the detained goods, upon the condition described in the question, would fall within Section 53.1 of the Trade-marks Act, Section 44.1 of the Copyright Act, and Section 14 of the Integrated Circuit Topography Act, as the case may be. We are not aware of any cases where the courts have addressed this issue in reasons for judgement.

When 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.

Under Subsection 53.1(6) of the Trade-marks Act and section 44.1 of the Copyright 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. In addition, where appropriate, a party affected by the suspension measure could apply to the court to have it vacated or varied, upon motion with notice to the other party.

Under Subsection 53.1(3) of the Trade-marks Act and Section 44.1 of the Copyright Act, the court may require security from the plaintiff. In addition, within the context of an action contemplated under Section 53.1 or Section 44.1, or in connection with an action against the individual responsible for the wrongful detention of the goods for copyright infringement, the court may order compensation by way of damages. Factors relative to the quantum of such damages might include any loss in value of the goods between the time of their detention and release, or the conduct of the plaintiff.

There is no requirement that the court order the disclosure of information concerning the importer, consignee or consignor to the right holder. It is noted that the provision in the second sentence of Article 57 of the TRIPS Agreement is permissive, not mandatory.

Under Subsection 53.1(7) and Section 53.2 of the Trade-marks Act, and under Sections 34 and 44.1 of the Copyright Act, the court may order the destruction or disposal of infringing goods.

Customs has no de minimis provisions for intellectual property rights. Customs officials will detain what the court directs them to detain. However, in the case of copyright works, certain limited exceptions apply under Section 45 of the Copyright Act.

Section 45 of the Copyright Act provides as follows: "1. Notwithstanding anything in this Act, it is lawful for a person: (a) to import for their own use not more than two copies of a work or other subject-matter made with the consent of the owner of the copyright in the country where it was made; (b) to import for use by a department of the Government of Canada or a province copies of a work or other subject-matter made with the consent of the owner of the copyright in the country where it was made; (c) at any time before copies of a work or other subject-matter are made in Canada, to import any copies, except copies of a book, made with the consent of the owner of the copyright in the country where the copies were made, that are required for the use of a library, archive, museum or educational institution; (d) to import, for the use of a library, archive, museum or educational institution, not more than one copy of a book that is made with the consent of the owner of the copyright in the country where the book was made; and (e) to import copies, made with the consent of the owner of the copyright in the country where they were made, of any used books, except textbooks of a scientific nature, technical or scholarly nature for use within an educational institution in a course of instruction. (2) An officer of customs may, in the officer's discretion, require a person seeking to import a copy of a work or other subject-matter under this section to produce satisfactory evidence of the facts necessary to establish the person's right to import the copy."

See the response to question 36 below.

Section 406 of the Criminal Code 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." This 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 offences is committed is forfeited upon conviction, unless the court orders otherwise.

See the answer to question 36, for trademarks. A person who is convicted of an offence under Section 42 of the Copyright Act is liable: "(f) on summary conviction, to a fine not exceeding twenty-five thousand dollars or to imprisonment for a term not exceeding six months or to both; or "(g) on conviction on indictment, to a fine not exceeding one million dollars or to imprisonment for a term not exceeding five years or to both."

In 1996, 641 lawsuits fitting the above description were initiated in Canada; and in 1997, 273 (to June 30). The median time between commencement and disposition in 1996 was 24 months (to judgement) or four months (to settlement); in 1997 (to June 30), 17 months or seven months, respectively. Apart from the foregoing, statistical information of the nature requested is not available in Canada.

Compilation of criminal infringement charges laid by the Royal Canadian Mounted Police (RCMP) is not available for all provinces and territories for 1996 and 1997.