CANADA Law and Practice Contributed by: Casey Chisick, Steven Kennedy, Karen MacDonald, Jessica Zagar, Dian Howard and Steven Henderson, Cassels Brock & Blackwell LLP
For both trade mark and copyright infringement, each infringement constitutes a separate cause of action. Therefore, if there is ongoing infringe - ment, even if some of the conduct occurred outside the limitation period, a plaintiff can still pursue claims for the infringement that occurred within the limitation period. Equitable defences of laches, estoppel, and acquiescence are available in trade mark cas - es. In copyright cases, a plaintiff that has acqui - esced to infringement or encouraged it, or has unreasonably delayed in pursuing legal rem - edies, may be unable to obtain an injunction or other equitable remedies. 7.2 Legal Claims for Infringement Lawsuits and Their Standards Trade Mark A claim for infringement of a registered trade mark is available where a third party, without authorisation, either uses a trade mark that is identical to a registered trade mark on the same goods and services as registered, or uses a trade mark or trade name that is confusing with a registered trade mark. A defendant may also be held liable for knowingly and deliberately aid - ing and abetting infringement. Section 7(b) of the Trademarks Act, the pass - ing off provision, provides that no person shall direct public attention to their goods, services, or business in such a way as to cause or be like - ly to cause confusion in Canada, between their goods, services, or business and the goods, services, or business of another. This cause of action is available in respect of both regis - tered and unregistered trade marks. The tort of passing off is also available at common law and under the Civil Code in Québec.
Section 22(1) of the Trademarks Act, the dilution provision, prevents anyone from using a regis - tered trade mark “in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto”. To address cybersquatting, the Canadian Inter - net Registration Authority (CIRA) has a Domain Name Dispute Resolution Policy (CDRP), which is available with respect to disputes involving the bad faith registration of.ca domain names. Copyright A claim for copyright infringement is available where a person commits an act, without the consent of the copyright owner, that falls within the owner’s exclusive rights (see 3.4 Copyright Rights ). A claim for infringement is also avail - able where a person authorises – sanctions, approves, and countenances – an act that falls within the owner’s exclusive rights. Infringement is a matter of strict liability; it does not require that the infringer intended to infringe. Secondary infringement occurs when a per - son does certain things with infringing materi - als, such as dealing in unauthorised copies. It requires that the secondary infringer had knowl - edge or constructive knowledge that they were dealing in infringing materials. There may also be liability for copyright infringement for providing a service via the internet or another digital net - work primarily for the purpose of enabling acts of copyright infringement, if an actual infringement of copyright occurs by means of the internet or another digital network as a result of the use of that service. There are also provisions in the Copyright Act addressing liability for circumventing a tech - nological protection measure (TPM), offering or providing services primarily for the purpose
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