A recent decision of Canada's Federal Court reflects a trend
towards streamlining the resolution of trade mark disputes in
Canada, helping to minimise delays in enforcing trade mark
rights in the country. In C.C. Jentsch Cellars Inc. v
O'Rourke Family Vineyards Ltd. et al, (2018 FC 875), the
court dismissed the respondent's motions for production of
documents, the late introduction of an expert survey, and a
request to convert the proceeding into an action. The decision
demonstrates the court's commitment to ensuring court
proceedings are "expeditious and proportionate" (C.C.
Jentsch, para 29).
Trade mark rights traditionally had to be enforced in Canada
through a claim advanced by an action. In an action, both
parties must produce all their relevant documents, make a
representative available for an oral examination for discovery,
and proceed to a trial that might take one to four weeks,
depending on the number of witnesses. The process routinely
takes more than two years.
More recently, the Federal Court of Appeal confirmed that
trade mark disputes, whether they concern registered or
unregistered marks, can also proceed by way of application.
Applications do not involve the production of documents or oral
examination for discovery, or live witnesses at a trial.
Rather, the evidence is exchanged in affidavit form, with
out-of-court cross-examinations. Documents may be requested
from witnesses in advance of a cross-examination, but the
threshold for relevance is narrower.
One disadvantage to the application process for intellectual
property owners is that without examinations for discovery it
can be difficult to determine the infringer's profits.
Nevertheless, there are numerous examples of Canadian courts
determining and awarding damages without that information.
Additionally, last year the court confirmed that even in an
application it can decide the issue of liability first, and
order a reference as to quantum of damages to be determined
later. Such a reference could include discovery processes and a
live trial if needed.
Application of the principles
Mr Justice Manson applied these principles in the C.C.
Jentsch decision. He upheld an earlier decision,
dismissing the various requests for documents as a fishing
expedition and abuse of process (C.C. Jentsch, para 23).
Justice Manson also reaffirmed the court's gatekeeper role
regarding expert evidence, rejecting an expert survey on the
basis it was "not reliable or necessary" because with only 75
relevant participants, it was "woefully deficient as a
representative survey worth any value" (C.C. Jentsch, para 41)
and did not offer insight on anything the court could not
determine for itself (C.C. Jentsch, para 42).
Importantly for IP owners, the court reaffirmed the
importance of following the applicant's choice of proceeding,
provided the underlying dispute is not overly complex or based
on significant credibility issues, among other factors. Here,
the respondent's right to fully and fairly defend the
application was protected, without the need for the cost and
delays associated with an action.
The trend towards proportionality and efficiency is evident
in other efforts the Federal Court is making, including the
ever-increasing use of active case management, and practice
notices explicitly directed to streamlining complex litigation,
which tend to move proceedings, especially actions, along by
constraining extensive examinations for discovery, among other
measures. These measures are left for discussion on another
day; in the meantime the C.C. Jentsch decision is the
latest demonstration of a positive trend for IP owners seeking
to enforce their rights in Canada.
Norton Rose Fulbright Canada
1800 - 510 West Georgia Street
Vancouver, BC V6B 0M3
the author: Chris Wilson is
the Vancouver office chair of intellectual property for Norton
Rose Fulbright Canada LLP. Chris is recognised as a leading
Canadian intellectual property litigator by Chambers Global and
The World’s Leading Trademark Professionals, among
others, and designated by Best Lawyers as the 2019 Lawyer of
the Year for Intellectual Property in Vancouver. He has
successfully argued numerous precedent-setting intellectual
property cases at trial and on appeal. Chris has a particular
interest in branding in the wine, beer and spirits industries
and is the co-founder of the annual British Columbia Wine &
Liquor Law Conference, now in its ninth year.