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 action.

Applications Versus Actions

Typically, applications are procedurally simpler than actions, as they:

  • 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.

Footnotes

1 2011 FCA 151.

2 Ibid., at para. 28.

3 Ibid., at para. 35.

About Ogilvy Renault

Ogilvy Renault LLP is a full-service law firm with close to 450 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 www.ogilvyrenault.com.

Ogilvy Renault joins Norton Rose Group on June 1, 2011.

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