CANADA Law and Practice Contributed by: Casey Chisick, Steven Kennedy, Karen MacDonald, Jessica Zagar, Dian Howard and Steven Henderson, Cassels Brock & Blackwell LLP
Copyright There is no requirement that copyright be regis - tered to bring an infringement action. A certificate of registration is rebuttable evidence that copy - right subsists in a work or other subject-matter and that the person registered is the owner of the copyright. Registrations of assignments and licences raise similar rebuttable presumptions. 8.3 Costs of Litigating Infringement Actions The costs of litigating copyright and trade mark infringement actions can be substantial. They vary significantly depending on the issues and facts of each case, the co-operation among counsel, and interlocutory motions. Although the successful party to litigation in Canada is gen - erally entitled to an award of costs, the amount awarded is generally considerably less than the costs actually incurred. 9. Defences and Exceptions to Infringement 9.1 Defences to Trade Mark Infringement There are several available defences, including: • invalidity of the registered trade marks asserted by the plaintiffs; • concurrent use of the impugned trade mark or trade name prior to the filing of the applica - tion; • expiration of an applicable limitation period; • lack of standing to bring the claim; • available exceptions to infringement; and • a valid trade mark registration owned by the defendant in relation to the impugned mark. Equitable defences including laches, estoppel, and acquiescence may also be available. Effec - tive April 1, 2025, an amendment to the Trade -
a movie, theatre a performance of a cinemato - graphic work or its soundtrack. A rights-holder may ask law enforcement to take steps under the Copyright Act, Trademarks Act or Criminal Code. However, the decision to take action, and the conduct of any ensuing proceeding, is within the discretion of law enforcement and the Crown. 8. Litigating Trade Mark and Copyright Claims 8.1 Special Procedural Provisions for Trade Mark or Copyright Proceedings There are no special procedural provisions or specialised courts for copyright or trade mark proceedings in Canada, though the Federal Court is considered to have expertise in such matters. In practical terms, the Copyright Board decides many copyright issues in the context of royalty proceedings. However, as noted, its decisions, while sometimes persuasive, are not binding on the courts. Intellectual property cases before the Federal Court are determined by judges alone and the selection of judges cannot be influenced by the parties. While jury trials are available in some provinces, they are very rare in civil matters. 8.2 Effect of Registration Trade Mark Only registered trade marks can take advantage of the infringement and depreciation of goodwill provisions in Sections 19, 20, and 22 of the Act. See also 4.1 Trade Mark Registration . Trade mark registrations are presumed to be val - id unless the defendant can prove otherwise. No such presumption exists for common law marks.
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