Answer ... For violations of the Trademarks Act, including infringement of registered trademarks and passing off with respect to registered and unregistered trademarks, the court may make any order that it considers appropriate, including relief by way of injunction and the recovery of damages or profits, punitive damages and the destruction or other disposition of any offending goods, packaging, labels and advertising material, and of any equipment used to produce the goods, packaging, labels or advertising material.
Answer ... There are no specific remedies available against trademark dilution, but the law offers similar protection against depreciation of goodwill. Court decisions have made this remedy available in only limited situations, requiring all the following elements:
- A third party has used a registered trademark (or a sufficiently similar mark), in a trademark manner (ie, applied to goods or services);
- The registered mark is sufficiently well known and has substantial goodwill; and
- Such third-party use is likely to affect the goodwill by depreciating its value.
Answer ... The law also provides remedies against the following:
- making false or misleading statements tending to discredit the business, goods or services of another;
- directing public attention to one’s goods, services or businesses in such a way that causes or is likely to cause confusion in Canada;
- passing off other goods or services for those ordered or requested; and
making use, in association with goods or services, of any description that is false in a material respect and likely to mislead the public as to:
- the character, quality or composition of the goods or services;
- the geographical origin of the goods or services; or
- the conditions of, or persons employed in, the production of the goods or the performance of the services.
Answer ... Trademark owners that wish to pursue a claim for infringement or other violations of the Trademarks Act must do so through formal proceedings brought in either the Federal Court of Canada or a provincial superior court. In the Federal Court, parties can proceed in one of two ways:
- by filing a statement of claim to commence an action; or
- by filing a notice of application, which is a summary procedure based on a written record.
Trademark owners can also file applications seeking court orders for interim custody of infringing goods or detention of imports by the minister of public, safety and emergency preparedness.
Trademark owners may also pursue a claim for infringement, passing off or other contraventions of the Trademarks Act before a provincial superior court.
Answer ... Defendants can raise the following defences:
If the plaintiff is relying on registered trademark rights, defendants can seek to invalidate the underlying trademark registration on grounds that:
- the mark was not registrable at the date of registration;
- the mark is not distinctive at the time proceedings bringing validity of the registration into question are commenced;
- the mark has been abandoned;
- the applicant for registration was not the person entitled to secure the registration; or
- the application for registration was filed in bad faith.
Proceedings to invalidate a registration must be brought in Federal Court.
The defendant may claim loss of the plaintiff’s rights at common law through one of the following ways:
- loss of distinctiveness (ie, if the trademark is not exclusively associated with the plaintiff); or
- abandonment by the mark’s owner.
The defendant may also be able to rely on fraudulent activity by the plaintiff. Under common law, courts will not protect a plaintiff that is using a fraudulent mark or is using the mark in fraudulent practices.
Answer ... The Federal Court’s decision may be appealed to the Federal Court of Appeal. In rare circumstances, a decision of that court may be appealed to the Supreme Court of Canada, but only if the Supreme Court grants the appellant leave to do so.
A decision of a provincial superior court can be appealed to that province’s court of appeal. In rare circumstances, an appeal of a decision of a provincial court of appeal may also be sought in the Supreme Court of Canada, subject to the aforementioned leave requirements.