A power of attorney is not required to represent a client in a trademark infringement matter before a court in Canada.  However, lawyers in Canada have certain “know your client” obligations and will require specific information about a client before being able to represent them.

No, there is no requirement to send a cease and desist letter prior to commencing proceedings for infringement, although in most cases sending such a letter is an advisable first step.

There is no risk that a pre-action letter to an alleged infringer could give rise to a claim against the trademark owner for unjustified threats.  However, if pre-action letters are sent to third parties (for example, customers of the alleged infringer), those letters could expose the trademark owner to liability for trade libel, interference with contractual relations, or other potential causes of action.

It is not mandatory for the parties to have attempted mediation or other alternative dispute resolution proceedings prior to commencing infringement proceedings.  In some jurisdictions in Canada, mediation is mandatory once a proceeding has been commenced or before the matter will be set down for trial.

There are no specialized intellectual property courts in Canada.  However, the vast majority of intellectual property disputes (including trademark disputes) are heard before the Federal Court of Canada.  Provincial courts in Canada have concurrent jurisdiction to hear intellectual property disputes although the remedies available in provincial courts are more limited. The Federal Court does not allow jury trials. Although a jury trial is possible in a provincial court, it is rare for an intellectual property matter to be tried before a jury in a provincial court in Canada.

The deadline to commence a trademark infringement proceeding depends on the laws where the infringement took place. For cases where the infringement, and damages, all occurred within a single province, the provincial limitation period of that province applies. For example, in Ontario, the limitation period is 2 years, and in Quebec, the limitation period is typically 3 years.

If the cause of the action, including damages, arises in more than a single province and the matter is commenced in Federal Court, the limitation period is 6 years from the act of infringement.

Canadian trademark law recognizes rights in unregistered trademarks. A claimant must prove the existence of a reputation in a particular trademark that indicates to the relevant public that the goods and services sold or offered for sale in association with its mark originate from, or are associated with, the claimant.  This requires the claimant to prove that its trademark is distinctive of its goods, services or business.   Distinctiveness means that the relevant market recognizes the trademark as indicating one trade source.

Rights in common law trademarks generally enforced by an action for passing off.  Passing off results if a misrepresentation would cause the average target consumer, with an imperfect recollection, to conclude or assume that the goods or services of the defendant referencing the claimant’s trademark are manufactured, offered, sold, performed, sponsored, authorized, licensed or endorsed by the plaintiff.   In a passing off action, the plaintiff must prove:

1. the existence of a business in which there is a reputation, and that the conduit for that reputation resides in the association of a trademark, trade name or other indicia (such as trade dress) with the business, goods or services of the claimant
2. a misrepresentation; and
3. a likelihood of damage.

A claimant is not required to commence a separate cause of action for different claims, as long as the factual background which underpins the proceeding is the same.

There is no overlap in jurisdiction.  As between the courts and the trademarks office, each entity has jurisdiction on matters it deals with.  Issues with respect to passing off, infringement, and cancellation of a registration for issues other than non-use are dealt with by the courts.

The Canadian Intellectual Property Office’s Trademarks Opposition Board (TMOB) will deal with issues related to registrability (as part of an opposition proceeding) or non-use (as part of a summary non-use cancellation proceeding).  Decisions of the TMOB can be appealed to the Federal Court of Canada.

It is possible that there may be overlap in proceedings between these bodies.  For example, if a complainant has started an infringement action in the Federal Court of Canada, and a defendant (in response) commences a non-use cancellation proceeding before the TMOB, the proceedings would proceed in parallel.  However, a party could request that one of the proceedings be stayed pending the disposition of the other, especially where the results of one would impact the final decision on the other.

Generally, a counterclaim for invalidity or cancellation of a registered trademark will be heard concurrently with the infringement action.  However, it would be possible for a party to request that the court bifurcate the issues, although this is rarely done in practice.

A claimant is not required to state or assign a worth to the claim at the time it is issued.  However, in order to secure an injunction after trial of an action, the claimant must show that it has or will suffer damages.

During proceedings to enforce trademark rights, an interlocutory injunction restraining the defendant from further use of the trademark pending a trial may be available.  In order for a court to grant an interlocutory injunction, the claimant is required to prove that:

1. there is a serious issue to be tried;
2. the claimant will suffer irreparable harm that cannot be compensated by damages after trial if the injunction is not granted; and
3. the balance of convenience favours the claimant, namely that the harm that the defendant would suffer on the granting of the injunction would be less than the harm that the claimant would suffer if the injunction is not granted until trial.

To obtain an interlocutory injunction, the claimant must provide to the court an undertaking to be liable for the damages which may be caused to the defendant by the injunction in the event that the defendant succeeds at the trial.

Any delay in seeking an interlocutory injunction, or acquiescence in the defendant’s activities, by the claimant reduces the opportunity for equitable relief.  Delay may also weaken the claimant’s argument on irreparable harm.  Delay may also be taken as a sign that the claimant has encouraged the defendant’s activity and may thereby impact the balance of convenience.

Subject to any agreement subsisting between an owner of a trademark and a licensee of the trademark, the licensee may call on the owner to take proceedings for infringement thereof, and, if the owner refuses or neglects to do so within two months after being so called on, the licensee may institute proceedings for infringement in the licensee’s own name as if the licensee were the owner, making the owner a defendant.

Registering the license with the Canadian Intellectual Property Office is optional but has no effect on a licensee’s ability to take action for infringement.

A claimant is not required to lead evidence of actual confusion.  A claimant will need to convince a court, on a balance of probabilities, that there is a likelihood of confusion. The test is not actual confusion but, rather, a likelihood of confusion.

Parties to an action in the Federal Court of Canada, and the common law provinces, are required to exchange a list of all documents in their possession, power or control that are relevant to the issues raised in the pleadings of an action.

The definition of “documents” in Canada includes paper documents, emails, computer files, tape recordings, videos and electronic media. The definition of “relevance” is also broad.

The opposing party is entitled to receive a copy of every document contained in the list of documents that is not privileged.

Following the exchange of relevant documents, the parties are entitled to conduct an examination for discovery of the opposing party (similar to a deposition under US law).  The discovery witness produced on behalf of a corporate litigant must inform themself of the corporation’s knowledge. If the witness does not know the answer to a specific question, the witness may be required to make inquiries and provide the answer at a later date, which answer is in most cases provided in writing.

With certain limited exceptions, such as when information is deemed privileged, the person being examined must answer every question at the examination for discovery. All answers are taken under oath or affirmation in the presence of a court reporter; no judge is present. The examination typically takes place in an office setting. The party asking the questions may use the transcript from the examination later at trial.

Expert evidence, in the form of survey evidence, has traditionally been a feature of trademark litigation in Canada.

Such evidence is not automatically accepted by the court.  The following four requirements must be met before expert evidence can be accepted:

• Relevance – survey evidence must be both reliable (i.e., the survey can be expected to produce consistent results if it is administered on multiple occasions to different individuals) and valid (i.e., the right questions are put to the right pool of respondents in the right way and the right circumstances);
• necessity in assisting the trier of fact – this prohibits the testimony of an expert if their evidence is not likely to be outside the experience and knowledge of a judge;
• the absence of any exclusionary rule; and
• a properly qualified expert.

Other types of expert evidence can also be introduced, including from linguistics experts or experts in certain markets and consumer behaviours.

Generally, evidence presented at trial is done through witnesses (viva voce evidence).

Unless the authenticity of specific documents is in issue, in most cases the parties will agree as to the admission of documents into evidence. If the authenticity of a document is questioned, it is dealt with in the same manner as other contentious facts at trial.

In some cases, for example, on a summary judgment motion or an application, evidence will be presented through one or more sworn affidavits or declarations.

Yes, a party may seek summary judgement of an infringement claim.  To successfully do so, a party moving for summary judgment must convince the court that there is no genuine issue requiring a trial.   Such motions are based solely on the evidence adduced by the parties in their motion records (e.g. affidavits or other documents).   Generally, summary judgment will not be granted where an issue of credibility arises or where there is conflicting evidence, and the outcome of the motion turns on the drawing of inferences.

Subject to the court’s availability, it generally takes 2 to 3 years from the issuance of claim though to a first instance decision in the Federal Court of Canada.  Provincial courts generally take longer.

Litigation costs can vary widely depending on the length of the proceeding, its complexity and the number of witnesses, including possible expert witnesses, involved.

Alternative approaches to obtaining a decision, such as proceeding by way of an application or the use of summary judgment and (or) summary trial often reduce costs, as they shorten the time to decision and thereby the expense. Applications ordinarily require a day or two of hearing, as do summary judgment and summary trial. Trials often take two to three or more days of hearing.

Decisions of the Federal Court may be appealed to the Federal Court of Appeal as of right.

Decisions of the Federal Court of Appeal may be appealed to the Supreme Court of Canada, however, leave (permission) must be sought from the Supreme Court before it will permit an appeal to be heard.

Generally, appeals are based on one of more of the following grounds, including failing to observe principles of natural justice, procedural fairness or other procedure that it was required by law to observe, errors in law, or basing a decision on an erroneous finding of fact.

In the Federal Court of Appeal, a judgment is not automatically stayed pending appeal.  A party may seek a stay, and the court will consider factors such as the merits of the appeal, potential irreparable harm, and the balance of convenience.

In some provincial courts, a decision is automatically stayed pending appeal.

Decisions of the Canadian Intellectual Property Office’s Trademarks Opposition Board (TMOB) are not binding on a court hearing a subsequent infringement proceeding.  This is because the relevant onus and relevant dates for determining confusion will be different.  As well, different evidence may be lead in each proceeding such that a court will determine the infringement action on the merits and the evidence before it.  However, in some cases, a decision of the TMOB may be persuasive.

As a general rule, issues of liability and quantum are considered in the same proceeding.  However, it is possible for a party to request that the issues of liability and quantum be bifurcated, such that any issue of damages will only be assessed after the court has reached a decision on liability.

A successful claimant may elect between its damages or an accounting of the infringer’s profits.

An accounting of profits is an equitable remedy, the purpose of which is to compel the wrongdoer to divest earnings to the party who was wronged. This is to be contrasted to damages, the aim of which is to put the injured party in the position it would have been in had the infringement not occurred.

In terms of assessing damages, the court can award compensatory damages and punitive damages.

Compensatory damages are designed to ensure that a successful claimant is “made whole”. Canadian courts do not confine damages to directly provable losses of sales, or “direct sale for sale substitution”. The law recognizes that damage from wrongful association can be wider than that. Indeed, proof of actual financial loss is not required to establish damage. Rather, damage may be inferred from the unauthorized use of another’s goodwill. The Federal Court has recognized repeatedly that damage may also be inferred from the loss of control over one’s goodwill.

Punitive damages are to be awarded against a party whose “misconduct … represents a marked departure from ordinary standards of decent behaviour”. Canadian courts have described such misconduct as “deliberate”, “egregious”, “wilful” and “showing a contempt of the plaintiff’s rights”.

A court may award both compensatory and punitive damages where compensatory damages are likely insufficient to deter further unlawful activities

A successful claimant will generally be entitled to an injunction to stop further infringement.

A claimant is entitled to claim either damages or the profits generated from the defendant’s sale of its infringing goods or services. An accounting of profits is considered to be an equitable remedy, such that it is only available at the discretion of the court.

In addition to the above, a successful claimant may also be entitled to delivery up or destruction of infringing goods, packaging and advertising materials.  It may be possible to obtain an order excluding infringing imports.  The successful claimant will also be entitled to a portion of its legal costs.

Canadian courts generally award costs to a successful party.  Such awards are intended to provide the successful litigant with a reasonable contribution towards the expenses of the litigation.

Historically, the Federal Court did not award costs as a percentage of actual legal fees incurred. Rather, it was typical for the Federal Court to order that costs be assessed in accordance with its tariff of costs, which contained a table which provides for a party to be awarded a certain number of units, within a specified range, for particular stages in the proceeding.

The Federal Court does have discretion to award elevated costs (i.e. above that set out in the tariff).  In exercising its discretion, the court may consider several factors, such as:

• the result,
• the amounts claimed and recovered,
• the importance and complexity of the issues,
• any written offer to settle,
• the conduct of a party that tended to shorten, or unnecessarily lengthen, the proceeding, and
• whether the expense associated with a particular expert was justified given the nature of the litigation, the nature of the issues in dispute, and the amount in dispute.

Unless otherwise set out in the judgment, decisions of the Federal Court of Canada are to have immediate effect.

A party may seek a stay, and the court will consider factors such as the merits of the appeal, potential irreparable harm, and the balance of convenience.

If a party fails to comply with a judgment, it may face an order for contempt of court.