CANADA Law and Practice Contributed by: Casey Chisick, Steven Kennedy, Karen MacDonald, Jessica Zagar, Dian Howard and Steven Henderson, Cassels Brock & Blackwell LLP
General The costs that arise prior to initiating an infringe - ment lawsuit vary, but often include the costs of preparing demand letters, conducting investiga - tions, gathering evidence, and conducting com - mercial negotiations or settlement discussions. An individual party to a proceeding does not need to be represented by a lawyer. A corpora - tion, partnership or unincorporated association, however, must be represented by a lawyer in the Federal Court, unless leave is granted. There is no restriction on the ability of a foreign copyright owner to pursue a claim for copyright infringement in Canada. Similarly, a foreign trade mark owner may sue for infringement or pass - ing-off claim in Canada, subject to the above- noted requirements that, for a claim under Sec - tion 19 or 20 claims, the mark must be registered in Canada. However, a foreign owner will often be required to pay security for costs if requested by a defendant. Security for costs is available where, among other things, the plaintiff is not ordinarily resident in Canada or there is reason to believe that the plaintiff would have insufficient assets in Canada available to pay the costs of the defendant if ordered to do so. The Federal Court of Appeal has jurisdiction to hear appeals from decisions of the Federal Court, and provincial courts of appeal have jurisdiction to hear appeals from provincial court decisions. The Supreme Court of Canada may grant leave to appeal from any of these appellate courts. 7.6 Declaratory Judgment Proceedings and Other Protections for Potential
its legal interest or right has been placed in jeop - ardy or grave uncertainty. It will not be granted, however, in the absence of necessity and practi - cal utility, including where reasons for judgment will suffice. A declaration of non-infringement is an available remedy but is less common in Canada than in some other jurisdictions. In either case, a defendant can bring a motion seeking to have the plaintiff pay for security for costs. 7.7 Small Claims A claim can be filed in provincial small claims courts where the quantum of damages sought is below a certain amount. In Ontario, claims are limited to CAD35,000 or less. However, certain remedies may not be available in small claims courts, including various types of equitable relief. 7.8 Effect of Trade Mark and Copyright Office Decisions The courts are not bound by the decisions of the Copyright Board, the TMOB, or CIPO. However, the Federal Court may give deference to them. 7.9 Counterfeiting and Bootlegging Traditional civil causes of action and remedies for copyright and trade mark infringement are equally applicable in the context of counterfeit - ing and piracy. The Copyright Act and Trademarks Act also con - tain criminal provisions for certain dealings with infringing copies, including import and export and sale, distribution, and exhibition, and for certain dealings with goods, labels, or packag - ing associated with infringing marks. There are also relevant provisions in the Criminal Code, including offences for the forgery of trade marks and trade descriptions and recording in
Defendants Defendants
Declaratory relief may be available to a copyright or trade mark owner if the owner can show that
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