On May 5, 2011, the Federal Court of Appeal found that claims
for damages, declarations, and injunctive relief for violations of
the Trade-marks Act may be brought by application and need
not necessarily be brought by way of action. This decision stands
to increase court access and efficiency and at the same time reduce
costs for brand owners seeking to enforce their rights.
Typically, claims for violations of the Trade-marks Act
are brought as actions. In BBM Canada v. Research In Motion
Limited,1 BBM Canada commenced a proceeding
for violations of the Trade-marks Act in Federal Court by
way of application. On a motion by Research In Motion Limited
(RIM), the Federal Court found that it had no jurisdiction to hear
the case as such and ordered it be converted into an action.
The Court of Appeal set aside the decision and found that the
Federal Court does indeed have jurisdiction to hear trade-mark
related cases as applications. The Court relied on an
interpretation of the Trade-marks Act that "promotes
access to the courts that is as expeditious and proportionate as
possible."2 Because applications have the potential
to be more efficient, the Court of Appeal concluded that trade-mark
infringement claims could be brought either by application or
Applications Versus Actions
Typically, applications are procedurally simpler than actions,
do not allow for examinations for discovery;
call for evidence to be submitted in writing through sworn
affidavits, as opposed to oral testimony; and
typically advance to a hearing sooner than actions.
As the Court noted, not all cases are amenable to adjudication
by application.3 Applications are generally appropriate
when there are no significant factual issues in dispute that would
benefit from the document production and examination procedures
that are available in actions.
In cases that are amenable to the summary procedure that
applications provide for, this decision increases access to the
courts and provides brand owners looking to enforce their rights
with an efficient and cost-effective means of doing so.
RIM has 60 days from the date of the decision to seek leave to
appeal to the Supreme Court of Canada.
1 2011 FCA 151.
2 Ibid., at para. 28.
3 Ibid., at para. 35.
About Ogilvy Renault
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lawyers and patent and trade-mark agents practicing in the areas of
business, litigation, intellectual property, and employment and
labour. Ogilvy Renault has offices in Montréal, Ottawa,
Québec, Toronto, Calgary and London (England), and serves
some of the largest and most successful corporations in Canada and
in more than 120 countries worldwide. Find out more at
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