Infringement proceedings may be commenced by way of application

Most trademark litigation in Canada is brought in the Federal Court, and arises in three contexts:
  • appeals from the registrar of trademarks concerning the registrability, or continuing registrability, of a mark;
  • challenges to the validity of a registered trademark; and
  • proceedings for infringement, statutory passing off and depreciation of goodwill wherein trademark rights are asserted against an alleged infringer.
In the first two kinds of trademark litigation, proceedings begin by notice of application. The Federal Courts Rules governing applications are geared to having the cases ready for hearing within 110 days of its filing. Applications are intended to be dealt with in a summary and expeditious manner. With rare exceptions, the evidence is limited to affidavit evidence and cross-examination upon those affidavits. There is no obligation to produce relevant documents or submit to an examination for discovery. Counsel prepare their written arguments based on a paper record only. The judge decides the matter after an oral hearing without hearing from or seeing any live witnesses.

It has long been considered that the third type of litigation - proceedings for infringement, passing off and depreciation of goodwill - must proceed by way of action.

An action typically involves detailed pleadings, obligatory exchanges of relevant historical documents and a wide-ranging examination for discovery of the parties’ representatives and any assignors of asserted rights, various interlocutory proceedings and, eventually, a trial involving viva voce testimony.

The Federal Courts Rules provide for case management to permit a hearing of an action at the earliest possible date. However, even the most aggressive case management will rarely permit an infringement action to be heard in less than two years’ time. Moreover, the costs associated with actions, in terms of legal fees, disbursements and lost executive time, are markedly higher as compared to proceedings begun by notice of application. Parties would benefit if the more streamlined and less costly application procedure was available in the context of allegations of infringement, passing off and depreciation of goodwill.

In BBM Canada v Research in Motion Limited (2011 FCA 151 (CanLII), May 5 2011), the Federal Court of Appeal has confirmed that trademark owners may commence proceedings for passing off, infringement or depreciation of goodwill by way of application, thereby significantly reducing the costs and delay in securing a final judgment on the merits.

The facts of the case were straightforward. The applicant, BBM Canada, is a not-for-profit, member-owned industry organisation that provides broadcast measurements and consumer behaviour data to broadcasters, advertisers and agencies. It asserted its registered trademark, BBM, against Research in Motion Limited (RIM), which had commenced to use an identical trademark in association with its smartphone devices and communications services (in particular, its instant messaging service called BlackBerry Messenger).

BBM Canada initiated proceedings for infringement, statutory passing off and depreciation of goodwill by way of notice of application. RIM challenged the Federal Court’s jurisdiction to proceed in this manner, arguing that the Trademarks Act permitted such causes of action to be proceeded with only by way of action. The Federal Court agreed with RIM and struck out the proceedings.

The Federal Court of Appeal reversed, finding that there was nothing in the act prohibiting BBM Canada from proceeding by way of notice of application. The court noted, however, that an applicant’s right to proceed by way of notice of application is subject to the respondent’s right to ask the court to convert the application into an action. The court indicated that it would be prepared to entertain such a motion if there were genuine issues of credibility or that, on the particular facts of the case, an examination for discovery of the parties was necessary.

Whether such conversion motions will be readily granted by the court when the respondent challenges an applicant’s right to proceed by way of application is an open question. A review of Federal Court jurisprudence in other contexts reveals that the court is generally reluctant to displace a party’s choice of procedure without a clear demonstration of prejudice.

It remains to be seen whether trademark owners will routinely opt for the more summary and less expensive notice of application process, rather than proceed by way of action. Parties who choose to proceed by way of notice of application are not entitled to conduct a wide-ranging examination for discovery of the opposite party. Thus, to the extent a trademark owner needs to make out all or part of its case through admissions or documentary evidence from the alleged infringer, the preferred mode of procedure will remain the traditional action. However, if the issues of infringement are relatively straightforward, and the trademark owner is able to marshal the necessary evidence without the need for discovery or production of documents from the respondent, the choice of procedure now afforded by the Federal Court of Appeal decision is a welcome development.

Arthur Renaud, Gowlings, Ottawa

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