CANADA Law and Practice Contributed by: Casey Chisick, Steven Kennedy, Karen MacDonald, Jessica Zagar, Dian Howard and Steven Henderson, Cassels Brock & Blackwell LLP
The principle of international exhaustion applies in Canada. Where a trade mark owner sells or permits to be sold its goods bearing its trade mark, even outside Canada, its Canadian trade marks will not suffice to prevent the parallel importation of those (authentic) goods or their sale in Canada. Trade mark owners can never - theless seek to restrain these actions on other grounds. Copyright The Copyright Act recognises a limited distri - bution right for physical goods: in the case of a work that is in the form of a tangible object, copyright includes the right to sell or otherwise transfer ownership of the object, or to authorise others to do so, provided that ownership has never previously been transferred in or outside Canada with the authorisation of the copyright owner. Once ownership is transferred with the consent of the owner, that right is exhausted. There is no corresponding distribution right, or principle of exhaustion, for works in digital form. A permanent injunction is generally granted when the plaintiff is successful in an action for copyright or trade mark infringement. Interim and interlocutory injunctions, while rare, are nevertheless available in trade mark and copyright cases. To obtain an interlocutory injunction, a party must generally establish that: • there is a serious issue to be tried; • the requesting party will suffer irreparable harm if the injunction is not granted, and 10. Remedies 10.1 Injunctive Remedies
• the balance of convenience favours granting the injunction. Generally, a party seeking an interlocutory injunction must undertake to abide by any order concerning damages caused by the granting or extension of the injunction. The Copyright Act also provides for a “wide injunction”, which can restrain the defendant from infringing copyright in the plaintiff’s existing or future works. The Trademarks Act does not include an analogous provision, but the courts have broad discretion to grant injunctive relief. Delivery up and destruction of infringing goods and packaging and labelling are equitable reme - dies available to a plaintiff and are contemplated by both the Trademarks Act and the Copyright Act. The courts can also tailor injunctive relief to the specific circumstances of a case. In copyright and trade mark cases, the courts have granted relief in the form of site-blocking and de-index - ing orders, rolling injunctions, and third-party injunctions. A Mareva injunction may also be available to freeze a party’s assets and prevent their removal from a jurisdiction if there is genu - ine risk that the defendant will remove or dis- pose of its assets before the final outcome of the proceeding. 10.2 Monetary Remedies In trade mark matters, a successful plaintiff is entitled to recovery of damages or profits. In copyright matters, a successful plaintiff is enti - tled to recovery of both damages and profits or, at its election, statutory damages. The amount of statutory damages available depends on whether the infringement was for commercial purposes (CAD500 to CAD20,000 per work
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