Canada: Faster, Cheaper Trade-mark Litigation?

Most trade-mark litigation in Canada is brought in the Federal Court, and arises in three contexts:

  1. Appeals from the Registrar of Trade-marks concerning the registrability, or continuing registrability, of a mark;
  2. Challenges to the validity of a registered trade-mark; and
  3. Proceedings for infringement, statutory passing-off and depreciation of goodwill wherein trade-mark rights are asserted against an alleged infringer.

In the first two kinds of trade-mark litigation, proceedings begin by notice of application. The Federal Courts Rules governing applications are geared to having the cases ready for hearing within 110 days of its filing. Applications are intended to be dealt with in a summary and expeditious manner.

With rare exceptions, the evidence in proceedings begun by application is limited to affidavit evidence and cross-examination upon those affidavits. Unlike actions, which are started by statement of claim, there is no obligation to produce relevant documents or submit to an examination for discovery. Counsel prepare their written arguments based on a paper record only. The applications judge decides the matter after an oral hearing without hearing from or seeing any live witnesses. The costs associated with an application are much less than those associated with proceedings commenced by statement of claim.

It has long been considered that the third type of litigation — proceedings for infringement, passing-off and depreciation of goodwill — must be proceeded with by way of action.

An action typically involves detailed pleadings, obligatory exchanges of relevant historical documents and a wide-ranging examination for discovery of the parties' representatives and any assignors of asserted rights, various interlocutory proceedings, and eventually, a trial involving viva voce testimony.

The Federal Courts Rules provide for aggressive case management to permit a hearing of an action at the earliest possible date. However, even the most aggressive case management will rarely permit an infringement case started by statement of claim to be heard in less than two years' time. Moreover, the costs associated with actions, in terms of legal fees, disbursements and lost executive time, are markedly higher as compared to proceedings begun by notice of application.

Parties would benefit if the more streamlined and less-costly application procedure was available in the context of allegations of infringement, passing-off and depreciation of goodwill.

A very recent decision of the Federal Court of Appeal has now confirmed that the application procedure is indeed available to trade-mark owners who wish to bring such proceedings in the Federal Court. Trade-mark owners may now commence proceedings for passing-off infringement or depreciation of goodwill by way of application, thereby significantly reducing the costs and delay in securing a final judgment on the merits.

The facts of the case were straightforward. The applicant, BBM Canada, is a not-for-profit, member-owned industry organization that provides broadcast measurements and consumer behaviour data to broadcasters, advertisers and agencies. It asserted its registered trade-mark, BBM, against Research in Motion Limited (RIM). The registration extended to the services BBM provided. RIM had commenced to use the identical trade-mark in association with its smartphone devices and communications services, in particular, its instant-messaging service called BlackBerry Messenger.

BBM Canada initiated proceedings for infringement, statutory passing-off and depreciation of goodwill by way of notice of application. RIM challenged the Federal Court's jurisdiction to proceed in this manner, arguing that the Trade-marks Act (Act) only permitted such causes of action to be proceeded with by way of action. The Federal Court agreed with RIM and struck out the proceedings. However, the Federal Court of Appeal reversed it, finding that there was nothing in the Act prohibiting BBM Canada from proceeding by way of notice of application. The Court noted, however, that an applicant's right to proceed by way of notice of application is subject to the respondent's right to ask the Court to convert the application into an action. The Court indicated that it would be prepared to entertain such a motion if there were genuine issues of credibility or that, on the particular facts of the case, an examination for discovery of the parties was necessary.

Whether such conversion motions will be readily granted by the Court when the respondent challenges an applicant's right to proceed by way of application is an open question. A review of Federal Court jurisprudence in other contexts reveals that the Court is generally reluctant to displace a party's choice of procedure without a clear demonstration of prejudice.

In its reasons, the Federal Court of Appeal referred to an obscure decision of the Federal Court, decided in 2008, wherein the Court, on application, dismissed the applicant's statutory passing-off claim. In that case, none of the respondent, the Federal Court or the Federal Court of Appeal, raised any issue of jurisdiction to deal with the passing-off claim by way of application. A review of the timelines in the latter case reveals that, despite a four-month lapse in activity by the applicant during the proceeding, the proceeding was heard and decided within 19 months of filing the notice of application. The costs awarded in favour of the successful respondent was slightly less than $5,000. While the award of assessed costs does not reflect the actual costs incurred, it is a strong indication that the costs were indeed substantially less than they would have been had the matter proceeded by way of action.

It remains to be seen whether trade-mark owners will routinely opt for the more summary and less-expensive notice of application process, rather than proceed by way of action. Parties who choose to proceed by way of notice of application are not entitled to conduct a wide-ranging examination for discovery of the opposite party. Thus, to the extent a trade-mark owner needs to make out all or part of its case through admissions or documentary evidence from the alleged infringer, the preferred mode of procedure will remain the traditional action. However, if the issues of infringement are relatively straightforward, and the trade-mark owner is able to marshal the necessary evidence without the need for discovery or production of documents from the respondent, the choice of procedure now afforded by the Federal Court of Appeal decision is a welcome development.

European Commission broker Memorandum of Understanding on Online Anti-Counterfeiting

A ground-breaking memorandum brings together rights holders and online trading platforms, and paves the way for co-operation to combat the online counterfeit issue that costs businesses and the wider economy millions of dollars every year.

Following a long and intense period of negotiation over some two years, conducted under the direction and auspices of DG Internal Market in the European Commission, and as a leading initiative of The European Observatory on Counterfeiting & Piracy, a Memorandum of Understanding (MoU) has been agreed and signed between rights holders and internet trading platforms on the sale of counterfeit goods over the Internet. The signing took place at a formal ceremony in Brussels on May 4, 2011.

A long running source of considerable friction between brand owners and Internet trading platforms, and the subject of a number of high profile but inconclusive law suits on both sides of the Atlantic, the MoU is a 12-month pilot to build trust and co-operation with Internet trading platforms dealing with hard goods and has the objective of removing counterfeits from their sites without the need for litigation. It is important to note that the issues related to the sale of counterfeit goods over the Internet are quite distinct from illegal peer-to-peer file sharing, or piracy, of copyright protected works over the Internet and is beyond the scope of this MoU. That has been the subject of a separate stakeholder dialogue as noted in link to the Commission's website (see below).

Stakeholders' dialogues aim to promote a high-standard IP culture, which is regarded as a vital cornerstone of the modern knowledge-based society. By improving mutual understanding by participants of their respective positions and, by identifying areas of common interests, stakeholders are encouraged to exchange information and benchmark the possible ways of action, while, at the same time, take into account other interests, in particular those of Internet users. Voluntary agreements can also be more easily extended beyond the European Union and become a foundation for best practice in the fight against counterfeiting and piracy at a global level.

It is the first document, anywhere in the world, to unequivocally state that Internet trading platforms must take proactive and preventative measures to stem the tide of counterfeits available over the Internet, and must work in conjunction with the rights holders to do so. It sets out a series of joint principles including effective and practical measures to prevent offers of counterfeit goods being listed on Internet trading platforms. It strikes a fair balance between the somewhat polarized interests of both sides in this debate and has the potential to improve online protection for brand owners and consumers alike. Parties can opt out at any time and, at the end of the 12-month pilot, the MoU will be optionally renewed with the agreement of any or all, or indeed new parties, at that time if the trial has been successful. It currently has 33 signatories including brand owners, trading platforms and both national and international trade associations with an interest in this issue (although it is not binding on individual members of such associations unless they have chosen to sign individually).

This agreement represents a significant milestone in the fight against counterfeits on the Internet and demonstrates that voluntary arrangements can, in certain circumstances, provide flexibility to adapt quickly to technological developments and potentially deliver efficient and pragmatic solutions - the proof however will be seen in 12 months time when the trial period is over and the enthusiasm to renew or extend the agreement is measured.

The full text of the MoU can be found together with the European Commission's commentary on it at:

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
8 Nov 2016, Seminar, Ottawa, Canada

The prospect of an internal investigation raises many thorny issues. This presentation will canvass some of the potential triggering events, and discuss how to structure an investigation, retain forensic assistance and manage the inevitable ethical issues that will arise.

22 Nov 2016, Seminar, Ottawa, Canada

From the boardroom to the shop floor, effective organizations recognize the value of having a diverse workplace. This presentation will explore effective strategies to promote diversity, defeat bias and encourage a broader community outlook.

7 Dec 2016, Seminar, Ottawa, Canada

Staying local but going global presents its challenges. Gowling WLG lawyers offer an international roundtable on doing business in the U.K., France, Germany, China and Russia. This three-hour session will videoconference in lawyers from around the world to discuss business and intellectual property hurdles.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.