| IP/Q4/CAN/1/Rev.1 |
Canadá |
Estados Unidos de América |
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".
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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.)).
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12/10/1998 |
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| IP/Q4/CAN/1/Rev.1 |
Canadá |
Estados Unidos de América |
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".
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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.
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12/10/1998 |
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| IP/Q4/CAN/1/Rev.1 |
Canadá |
Estados Unidos de América |
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".
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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.
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12/10/1998 |
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| IP/Q4/CAN/1/Rev.1 |
Canadá |
Estados Unidos de América |
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.
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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.
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12/10/1998 |
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| IP/Q4/CAN/1/Rev.1 |
Canadá |
Estados Unidos de América |
21. Articles 50.3 and 50.8 require that Members authorize judicial and administrative authorities to order the filing of a security or equivalent assurance to protect the defendant when provisional measures are being requested. Please describe the authority of Canadian judges to require the filing of a security or other assurance when granting provisional relief.
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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.
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12/10/1998 |
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| IP/Q4/CAN/1/Rev.1 |
Canadá |
Estados Unidos de América |
22. Article 50.4 requires that parties be notified when provisional measures have been adopted inaudita altera parte. Please describe briefly the procedures followed by each authority for notifying affected parties and indicate the period within which parties must be notified.
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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.
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12/10/1998 |
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| IP/Q4/CAN/1/Rev.1 |
Canadá |
Estados Unidos de América |
23. Article 50.4 also requires that the defendant be afforded a review process to determine whether provisional measures should be modified, confirmed, or revoked. Describe briefly the procedures a defendant must follow to initiate review proceedings and indicate the period within which the authorities must act on the request.
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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.
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12/10/1998 |
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| IP/Q4/CAN/1/Rev.1 |
Canadá |
Estados Unidos de América |
24. Articles 50.7 and 50.8 provide that judicial and administrative authorities must have the authority to order an applicant to provide the defendant appropriate compensation for any injury caused by the adoption of provisional measures when said measures are revoked, have lapsed, or when it has been determined that there has been no infringement or threat of infringement. Please identify the judicial and administrative authorities, on a national and local level, that are authorized to award defendants appropriate compensation for injuries caused by provisional measures and describe how the competent authorities determine "appropriate compensation".
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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.
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12/10/1998 |
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| IP/Q4/CAN/1/Rev.1 |
Canadá |
Estados Unidos de América |
25. Please explain whether procedures, permissible under Article 51 of the TRIPS Agreement, are available to stop the export from Canada of goods suspected of infringing copyrights and/or trademarks.
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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.
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12/10/1998 |
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| IP/Q4/CAN/1/Rev.1 |
Canadá |
Estados Unidos de América |
26. Article 52 of the TRIPS Agreement requires that rights holders wishing to stop importation of counterfeit trademarked goods or pirated copyrighted works present evidence to the competent authorities that there is prima facie infringement of their trademark or copyright. Please explain what evidence will constitute prima facie infringement in Canada.
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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.
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12/10/1998 |
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| IP/Q4/CAN/1/Rev.1 |
Canadá |
Estados Unidos de América |
27. Article 52 also requires that the right holder provide a "sufficiently detailed description of the goods" to be stopped. Please explain what is required of the right holder in Canada for a description to be "sufficiently detailed".
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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)
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12/10/1998 |
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| IP/Q4/CAN/1/Rev.1 |
Canadá |
Estados Unidos de América |
28. Article 53.2 provides that the owner, importer, or consignee of goods involving industrial designs, patents, layout designs or undisclosed information that have been suspended by customs authorities should be able, in certain circumstances, to have such goods released on payment of security sufficient to protect the right holder from infringement. Please identify what forms of intellectual property, if any, are subject to provisions of Article 53.2 and cite to the relevant provisions of law or regulations.
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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.
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12/10/1998 |
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| IP/Q4/CAN/1/Rev.1 |
Canadá |
Estados Unidos de América |
29. Article 54 requires that the importer and the applicant be notified promptly of the suspension or release of goods. Please describe the manner in which parties are notified and the time period within which notification must occur.
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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.
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12/10/1998 |
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| IP/Q4/CAN/1/Rev.1 |
Canadá |
Estados Unidos de América |
30. Article 55 provides that a review of the suspension measures is to take place within a reasonable time at the request of the defending party to determine if the suspension measures should be modified, revoked or confirmed pending the outcome of the proceeding on the merits. Please identify the forum that is authorized to conduct such a review and describe the procedure. Please cite the law or regulations providing for these procedures.
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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.
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12/10/1998 |
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| IP/Q4/CAN/1/Rev.1 |
Canadá |
Estados Unidos de América |
31. Article 56 requires that the authorities be able to require the applicant to compensate the defending party for any injury caused if the detention of goods was unfounded. Please describe the manner in which such compensation can be ordered by the appropriate authorities and the factors considered in deciding on the amount of compensation.
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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.
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12/10/1998 |
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| IP/Q4/CAN/1/Rev.1 |
Canadá |
Estados Unidos de América |
32. Article 57 also requires that, where the decision on the merits favours the right holder, the competent authorities also may be given authority to give the right holder information regarding the importer, consignee or consignor. If competent authorities in Canada can provide information regarding the importer, consignee or consignor to the right holder, please explain how information regarding names and addresses of consignors, importers and consignees and quantities of goods are provided to the applicant after a positive decision of infringement is made, e.g., authorities automatically providing information or by submission of a written request from the right holder, etc., and cite to the law or regulations providing such authority.
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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.
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12/10/1998 |
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| IP/Q4/CAN/1/Rev.1 |
Canadá |
Estados Unidos de América |
33. Article 59 identifies the remedies that are to be available, including destruction or disposal of infringing goods outside the stream of commerce. Please explain what the law in Canada permits regarding the disposition of infringing goods, i.e., does the law allow for destruction, disposal or both. Please cite to the law or regulations providing such authority.
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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.
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12/10/1998 |
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| IP/Q4/CAN/1/Rev.1 |
Canadá |
Estados Unidos de América |
34. Article 60 permits Members to exclude from the provisions for border enforcement small quantities of goods of a non commercial nature carried by passengers or sent in small consignments. Please describe what constitutes a de minimis import that is excluded from the border measures under the law of Canada.
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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.
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12/10/1998 |
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| IP/Q4/CAN/1/Rev.1 |
Canadá |
Estados Unidos de América |
[Follow-up question from the US]
The Government of Canada states that, with respect to detention of infringing copyright works by customs authorities, "certain limited exceptions apply under section 45 of the Copyright Act". Please describe those limited exceptions.
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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."
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12/10/1998 |
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| IP/Q4/CAN/1/Rev.1 |
Canadá |
Estados Unidos de América |
35. Article 61 of the TRIPS Agreement requires that Members have criminal procedures and penalties, including imprisonment and/or monetary fines sufficient to act as a deterrent, at least for cases of wilful trademark counterfeiting and copyright infringement on a commercial scale. In IP/N/6/CAN/1, Canada describes the criminal provisions of its intellectual property laws, including those that apply to copyrights, but criminal provisions in connection with trademark counterfeiting are not discussed. Please describe the provisions in the law of Canada that provide for criminal action in connection with trademark counterfeiting.
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See the response to question 36 below.
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12/10/1998 |
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