In Canada, injunctions, whether on an interim, interlocutory, or in exigent circumstances, ex parte basis for the infringement of intellectual property rights are within the inherent equitable jurisdiction of the superior courts of the provinces and, by extension, the Federal Court. These are the courts which, according to the various intellectual property statutes, have jurisdiction over actions for the infringement of intellectual property rights (Patent Act, subs. 5.1; Plant Breeders Rights Act, subs. 42.1; Trade-marks Act, s. 53.2; Copyright Act, s. 37; Industrial Design Act, subs. 15.1 and s. 15.2; and Integrated Circuit Topography Act, s. 9. There is no statute governing trade secrets.) It has long been recognized that those courts continue to exercise the powers that were being exercised at the time of confederation, i.e., all the jurisdiction, power and authority historically exercised by the courts of common law and equity under the law of England and of the particular Canadian province (Courts of Justice Act, R.S.O. 1990, ch. C. 43, s. 11). As superior courts of general jurisdiction, they have all the powers that are necessary to do justice between the parties. Except where provided specifically to the contrary, the court's jurisdiction is unlimited and unrestricted in substantive law in civil matters (Giffen v. Simonton (1920), 47 O.L.R. (2d) 92 (H.C.)). That jurisdiction involves the power to grant the appropriate remedy where one does not exist, including the power to grant interlocutory relief where appropriate (R. v. Consolidated Fastfrate Transport Inc. (1995), 22 O.R. (3d) 172 (Ont. Crt. (Gen. Div.)). Strictly speaking, the Federal Court is not a superior court in the same way that provincial superior courts are, and its jurisdiction is limited to "the better Administration of the Laws of Canada", in accordance with s. 101 of the Constitution Act, 1867. However, the Federal Court does enjoy an inherent equitable jurisdiction similar to that of the provincial superior courts in connection with the interpretation and application of federal laws, including the intellectual property statutes (Algonquin Mercantile Corp. v. Dart Industries Canada Ltd., (1988) 2 F.C. 305 at 314 et seq (Fed. C.A.)).

The summary judgement provisions only apply where, as a result of factual admissions or information contained in documents filed with the court, there is nothing in controversy in the action, and thus the party's right to judgement flows as a matter of law.

Canada is in compliance with Article 41.4 of the TRIPS Agreement. By way of information, judicial review is provided for decisions of the Copyright Board and other federal tribunals under Sections 18, 18.1 and 28 of the Federal Court Act. However, such tribunals do not enforce intellectual property rights. The courts do.

Rule 452 of the Federal Court Rules requires that a party allow access to all documents listed in its affidavit of documents. The court may make a protective order where a party establishes, for example, that its legitimate interest in not losing its competitive advantage outweighs the competing interest of the other party in obtaining information which is relevant to the litigation. However, protective orders are only given in unusual circumstances. Other courts observe similar rules. (Intellectual property rights are not enforced by administrative tribunals in Canada.)

In some provinces the courts have recognized the existence of an implied undertaking, on the part of the party receiving information produced in the discovery process, not to use that information in subsequent litigation for penal purposes. This implied undertaking flows from the general right against self-incrimination. Therefore, it is sometimes unnecessary for the court to make a protective order. Where, however, protective orders are granted, their purpose would be to deal with very sensitive information, the disclosure of which could harm the competitive position or reputation of the disclosing party. Thus, in a patent infringement suit it was ordered that only the legal counsel of record and the designated representatives of the receiving party working directly on the litigation could have access to the items produced on discovery and that those items could only be used for the purpose of the litigation (Procter & Gamble v. Kimberly-Clark (1989), 25 C.P.R. (3d) 12).

Customs detains goods at the border when directed by the courts to do so only under the Trade-marks Act and the Copyright Act. There is provision for detention of imports of infringing goods under the Integrated Circuit Topography Act (section 14), but, to date, this has not been used for any action to be taken by Customs Officials. Section 57 of the Patent Act, together with the inherent equitable authority of the superior courts, would allow such courts to order, where appropriate, that infringing goods not be imported into Canada.

There is no express authority in the Patent Act conferring on the patentee the right to prevent others from importing a patented invention. However, section 42 of the Act confers "the exclusive right, privilege and liberty of making, constructing and using the invention and selling it to others to be used". The courts have interpreted these rights as extending to the importation of a patented product, i.e., that importation for purposes which would infringe those rights would also be an infringement. The inherent equitable jurisdiction of the superior courts and the Federal Court would include the authority to make an injunctive order preventing the release of such imported product into the channels of commerce in Canada.

Section 53.2 of the Trade-marks Act provides that the "court may make any order that it considers appropriate in the circumstances, including an order providing for ... the destruction ... or other disposition of any offending wares, packages, labels and advertising material ...".

Yes.

Not applicable.

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.)

Please see answer to follow-up question to question 1.

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.

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).

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.

Please see the answer to follow-up question to question 1.

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.

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.

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.

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).