X. Actions and Remedies
Haley MacLean and Lucie Guibault
A. Introduction
Ownership of intellectual property rights only means something if it can be enforced in practice. Without an effective enforcement mechanism, any benefit from the creation and exploitation of a work, trademark, or invention can be reaped wittingly or not by third parties. Rights holders must have the power to take action to stop ongoing or future acts of infringement and to recover the losses from actual infringement. As the only international instrument in the field of intellectual property law that deals with the issue of enforcement, Part III of the TRIPS Agreement lays down a comprehensive set of obligations in this regard. Generally speaking, Contracting Parties have agreed that “enforcement procedures as specified in this Part [must be] available under their law so as to permit effective action against any act of infringement of intellectual property rights covered by this Agreement, including expeditious remedies to prevent infringements and remedies which constitute a deterrent to further infringements”. The TRIPS Agreement further requires Contracting Parties to give rights owners an opportunity for review by a judicial authority of final administrative decisions, to make available civil judicial procedures concerning the enforcement of IP Rights – including injunctions, damages, etc. -, to offer the possibility to order prompt and effective provisional measures, as well as to establish border measures and criminal procedures.
While the Canadian legal system already provided a solid set of enforcement measures in support of the intellectual property regimes before the adoption of the TRIPS Agreement, its ratification in 1996 gave Parliament the opportunity to review and improve the measures available to ensure compliance with the international norms. The judicial system also contributes to the development of procedural law in this field. This chapter describes the various aspects relevant to the enforcement of IP rights in Canada. First, it discusses the issue of jurisdiction of the Canadian Courts, with a focus on the exclusive jurisdiction of the Federal Court, on matters of concurrent jurisdiction with the provincial superior courts and the standard of review of the final decisions of administrative bodies, like the Copyright Board, the Registrar of Patents or the Trademarks Opposition Board. Next, we examine the civil procedures available in Canada to stop and compensate acts of infringement of IP rights, including special orders available to plaintiffs for effective relief. Finally, we shortly describe existing criminal and border procedures designed to combat counterfeiting and other forms of large-scale illegal practices. It is worth noting that each intellectual property statute may contain specific actions and remedies in addition to those described in this chapter. The reader is advised to consult each act to gain a full picture of the extant enforcement m