Whether we are talking about patents, trademarks, copyright or
other forms of intellectual property, they need to be enforced and
protected. One outcome of IP litigation can be a monetary award,
for example, an award of damages. Organizations sometimes find
themselves in a position where a final award in an IP case must be
enforced against an individual or a company located in Canada. This
happens, for example, where the Canadian defendant has no
meaningful assets located in the foreign jurisdiction. It happens
more often than one might think.
Essentially, a foreign judgment is viewed as a contractual
obligation that can be enforced by a court in Canada. The following
six points outline the relevant steps and considerations associated
with such enforcement.
Generally, provincial courts have jurisdiction to enforce a
foreign judgment against a person or a company with ties to the
province. A provincial court may render its own judgment in an
action to enforce a final and conclusive in personam
judgment of a foreign court without reconsideration of the merits
of that lawsuit. Unlike attempting to
examine a witness in Canada, Letters of Request are not
required to enforce a judgment.
Enforcement is usually permitted where the foreign court had
"jurisdiction" because: (a) the Canadian defendant was
properly served with originating process; (b) the Canadian
defendant attorned; or (c) there was a real and substantial
connection between the claim and the foreign court.
Importantly, an action to enforce must be commenced in the
provincial court within any applicable limitation period.
A provincial court may stay or decline to hear an enforcement
action when the foreign judgment is under appeal or when there is
another subsisting judgment in any jurisdiction relating to the
same cause of action.
If enforcement is granted, the Canadian judgment will be
rendered in Canadian dollars.
Defences to enforcement in Canada exist and include proof that
the foreign judgment: (a) was obtained by fraud; (b) is for a claim
that, under the law of the province, would be considered as having
been based on penal or public law, taxation or government seizure
of property; (c) is contrary to public policy; and (d) has been
satisfied or is void or voidable.
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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