RESTRICTEDWORLD TRADE
ORGANIZATIONIP/Q4/CAN/1
28 July 1998
(98-2983)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION ON ENFORCEMENT
CANADA1
The present document reproduces the introductory statement made by the delegation of
Canada, the questions put to it and the responses given in the review of legislation on enforcement at
the Council's meeting of 17-21 November 1997.2
_______________
I. INTRODUCTION
Madam Chairperson, you have asked that we do three things:  first, to state what, if any,
changes have been made to our legislation or other enforcement measures as a result of the TRIPSAgreement; secondly, to give an overview of our enforcement system;  and thirdly, to read out arepresentative sampling of answers to the questions which have been posed.
On the first point, Canada had recently completed an updating of its intellectual property
legislation before the conclusion of the TRIPS Agreement.  As regards enforcement measures, theseamendments were rather modest and did not alter substantively any of our intellectual propertylaws.  There was no need to make further changes to implement TRIPS enforcement obligations.
On the second point, there is a golden thread that runs through our intellectual property
system, which is that intellectual property rights are private rights of action, administered throughindividual parties invoking the aid of the judicial process, as opposed to public rights, enforced bystate action.  This overriding principle has a number of consequences, such as the fact thatintellectual property rights are not enforced in an ex officio manner by government officials, oreven by our major administrative tribunals - the Copyright Board, the Trademarks OppositionBoard, and the Patent Appeal Board.
Another consequence is that border measures are not imposed by the actions of Canada's
customs authorities on their own account.  Rather, they are only imposed following a court order,in accordance with procedures contained in Section 53.1 of the Trade-marks Act or Section 44.1 ofthe Copyright Act.
These private rights of action are most often adjudicated by the Federal Court of Canada,
which has concurrent jurisdiction with the superior courts of the provinces in all fields ofintellectual property except trade secrets.  This is because decisions of the Federal Court are
                                                     
1 As regards laws and regulations relevant to the area under review and notified by Canada under
Article 63.2 of the Agreement reference is made to documents IP/N/1/CAN/1/Add. 1 and IP/N/6/CAN/1.
2 The minutes of this meeting have been circulated as document IP/C/M/16.IP/Q4/CAN/1
Page 2
binding throughout Canada, whereas those of the superior courts of the provinces are binding in
their respective provinces only.
It is my hope, Madam Chairperson, that this golden thread, which I have just described,
might be of assistance to an understanding of the tapestry of our answers, a selection of which -ones which are hopefully of interest to the delegations posing the questions to us - will now be read.
II. REPLIES TO QUESTIONS POSED BY THE EUROPEAN COMMUNITIES AND
THEIR MEMBER STATES
1. Do Canada's provisions for interlocutory (including interim) relief permit "effective
action" by holders of a patent, trademark or copyright interest to preserve and protect thoseinterests in the short term (Articles 41.1 and 50 of the TRIPS Agreement)?  Is it not accurateto state that the existing statutory and/or common law standard for obtaining interlocutoryrelief, as interpreted by the relevant Canadian courts, makes it extremely difficult for patentowners, in particular, to obtain provisional measures protecting their property interests?  Ifthis is the case, how does Canada's existing law comply with its obligation to provide remedieswhich are "expeditious" and which deter further infringements?
The superior courts of the provinces, as well as the Federal Court, have authority to order
the effective provisional measures contemplated in Articles 41.1 and 50 of the TRIPS Agreement.In the interests of justice, these measures are exceptional and require proof of irreparable harm inorder to dispose, at an interim or interlocutory stage, of issues which would normally not be settleduntil trial.
[Follow-up question from the EC]
Please specify the legal bases for the superior courts of the provinces, as well as the
Federal Court, having authority to order the effective provisional measures contemplated inArticles 41.1 and 50 of the TRIPS Agreement.
In Canada, injunctions, whether on an interim, interlocutory, or in exigent circumstances , ex
parte  basis for the infringement of intellectual pr operty rights are within the inherent equitable
jurisdiction of the superior courts of the provinces and, by extension, the Federal Court.  These are the
courts which, according to the various intellectual property statutes, have jurisdiction over actions forthe infringement of intellectual property rights (Patent Act, subs. 5.1; Plant Breeders Rights Act, subs.
42.1; Trade-marks Act, s. 53.2; Copyright Act, s. 37;  Industrial Design Act, subs. 15.1 and s. 15.2;
and Integrated Circuit Topography Act, s. 9.  There is no statute governing trade secrets).
It has long been recognized that those courts continue to exercise the powers that were being
exercised at the time of confederation, i.e., all the jurisdiction, power and authority historically
exercised by the courts of common law and equity under the law of England and of the particular
Canadian province (Courts of Justice Act, R.S.O. 1990, ch. C. 43, s. 11).  As superior courts ofgeneral jurisdiction, they have all the powers that  are necessary to do justice between the parties.
Except where provided specifically to the contrary, the court's jurisdiction is unlimited and
unrestricted in substantive law in civil matters ( Giffen v. Simonton  (1920), 47 O.L.R. (2d) 92 (H.C.)).
That jurisdiction involves the power to grant the appropriate remedy where one does not exist,
including the power to grant interlocutory relief where appropriate ( R. v. Consolidated Fastfrate
Transport Inc.  (1995), 22 O.R. (3d) 172 (Ont. Crt. (Gen. Div.)).
Strictly speaking, the Federal Court is not a superior court in the same way that provincial
superior courts are, and its jurisdiction is limited to "the better Administration of the Laws ofIP/Q4/CAN/1
Page 3
Canada", in accordance with s. 101 of the Constitution Act, 1867.  However, the Federal Court does
enjoy an inherent equitable jurisdiction similar to that of the provincial superior courts in connection
with the interpretation and application of federal laws, including the intellectual property statutes
(Algonquin Mercantile Corp. v. Dart Industries Canada Ltd ., (1988) 2 F.C. 305 at 314 et seq  (Fed.
C.A.)).
2. Do Canada's "summary judgement" provisions provide a realistic opportunity for
obtaining an expeditious remedy against infringement of intellectual property rights,particularly patent rights?  Please explain (Article 41.1 of the TRIPS Agreement)?
The summary judgement provisions only apply where, as a result of factual admissions or
information contained in documents filed with the court, there is nothing in controversy in theaction, and thus the party's right to judgement flows as a matter of law.
3. Where a statutory right of appeal is not available from an administrative decision
concerning patent, trademark and copyright interests (such as in the case of the Copyright
Board), has Canada failed to meet its obligation to provide for review of an administrativedecision by a judicial authority?  Does Canada take the position that it is in compliance withArticle 41.4 so long as "judicial review" is available, regardless of the extent to which suchreview is circumscribed by statute or jurisprudence?
Canada is in compliance with Article 41.4 of the TRIPS Agreement.  By way of
information, judicial review is provided for decisions of the Copyright Board and other federaltribunals under Sections 18, 18.1 and 28 of the Federal Court Act.  However, such tribunals do notenforce intellectual property rights.  The courts do.
4. What is the procedure of the Federal Court of Canada, and the superior courts of the
provinces, to identify and protect confidential information?  Is there a similar procedure forCanada's administrative decision-makers?  Are there any rules of practice, or otherwise,which set out such a procedure (Article 42 of the TRIPS Agreement)?
Rule 452 of the Federal Court Rules requires that a party allow access to all documents
listed in its affidavit of documents.  The court may make a protective order where a partyestablishes, for example, that its legitimate interest in not losing its competitive advantage outweighsthe competing interest of the other party in obtaining information which is relevant to the litigation.However, protective orders are only given in unusual circumstances.  Other courts observe similarrules.  (Intellectual property rights are not enforced by administrative tribunals in Canada.)
[Follow-up question from the EC]
Please describe what reasons would be considered as "unusual circumstances" where
protective orders can be issued and give examples.
In some provinces the courts have recognized the existence of an implied undertaking, on the
part of the party receiving information produced in the discovery process, not to use that information
in subsequent litigation for penal purposes.  This implied undertaking flows from the general right
against self-incrimination.  Therefore, it is sometimes unnecessary for the court to make a protectiveorder.  Where, however, protective orders are granted, their purpose would be to deal with very
sensitive information, the disclosure of which could harm the competitive position or reputation of the
disclosing party.  Thus, in a patent infringement suit it was ordered that only the legal counsel of
record and the designated representatives of the receiving party working directly on the litigationIP/Q4/CAN/1
Page 4
could have access to the items produced on discovery and that those items could only be used for the
purpose of the litigation ( Procter & Gamble  v. Kimberly-Clark  (1989), 25 C.P.R. (3d) 12).
5. Do Canadian courts have a specific statutory authority to prevent the entry into the
channels of commerce of goods which infringe patent rights, i.e. does the Patent Act contain
provisions equivalent to Section 53 of the Trade-marks Act or Section 44 of the Copyright Act,
or must a right holder depend on the courts' general discretion to provide injunctive reliefunder Section 57 of the Patent Act or Section 18 of the Federal Court Act?  If the latter, canCanadian courts effectively block goods at the border under the existing test for interlocutoryrelief (Article 44.1 of the TRIPS Agreement)?
Customs detains goods at the border when directed by the courts to do so only under the
Trade-marks Act and the Copyright Act.  There is provision for detention of imports of infringinggoods under the Integrated Circuit Topography Act (section 14), but, to date, this has not been usedfor any action to be taken by Customs Officials.
Section 57 of the Patent Act, together with the inherent equitable authority of the superior
courts, would allow such courts to order, where appropriate, that infringing goods not be importedinto Canada.
[Follow-up question from the EC]
Please explain in detail under what provisions Canadian courts have a specific
statutory authority to prevent the entry into the channels of commerce of goods which infringepatent rights.  Under what circumstances would it be considered "appropriate" for the courtsto order that such infringing goods not be imported into Canada?
There is no express authority in the Patent Act conferring on the patentee the right to prevent
others from importing a patented invention.  However, section 42 of the Act confers "the exclusive
right, privilege and liberty of making, constructing and using the invention and selling it to others to
be used".  The courts have interpreted these rights as extending to the importation of a patented
product, i.e., that importation for purposes which would infringe those rights would also be aninfringement.  The inherent equitable jurisdiction of the superior courts and the Federal Court would
include the authority to make an injunctive order preventing the release of such imported product into
the channels of commerce in Canada.
6. What statutory provision, or governing jurisprudential rule, ensures that Canadian
courts will not provide for release of goods upon the simple removal of the trademarkunlawfully affixed (absent exceptional circumstances) (Article 46 of the TRIPS Agreement)?
Section 53.2 of the Trade-marks Act provides that the "court may make any order that it
considers appropriate in the circumstances, including an order providing for ... the destruction ...or other disposition of any offending wares, packages, labels and advertising material ...".
[Follow-up question from the EC]
Is it the case that, under Section 53.2 of the Trade-marks Act, the courts will only
order the release of goods upon the simple removal of the trademark unlawfully affixed inexceptions circumstances?
Yes.IP/Q4/CAN/1
Page 5
If not, how is the requirement of Article 46 of the TRIPS Agreement met?
Not applicable.
7. In what circumstances, if any, do Canadian judicial officials have the authority to
order an infringer of intellectual property rights to inform the right holder of the identity of
third persons involved in the production and distribution of goods and services found to be
infringing and of their channels of distribution (Article 47 of the TRIPS Agreement)?
The Federal Court and the superior courts of the provinces have inherent authority to make
such order as are necessary for the administration of justice, in intellectual property rightinfringement cases.  (It is noted that Article 47 of the TRIPS Agreement is permissive, notmandatory.)
[Follow-up question from the EC]
Could the Government of Canada please specify the provisions under which the Federal
Court and the superior courts of the provin ces have authority to make these orders?
Please see answer to follow-up question to question 1.
8. Under what statutory provisions are "public authorities and officials" such as members
of the Copyright Board, the Trademark Opposition Board, or the Patented Medicine PricesReview Board made liable for actions taken otherwise than in good faith, in theiradministration of intellectual property laws?  Does Canada interpret Article 48.1 of the TRIPSAgreement, to require liability of judicial decision-makers as "public authorities"?  If so, howare judicial decision-makers liable for bad faith actions (Article 48.2 of the TRIPSAgreement)?
The Copyright Board, Trademark Opposition Board and Patented Medicine Prices Review
Board are not engaged in the enforcement of intellectual property rights.  The courts are.
9. Given that Canada's Copyright Board may order a civil remedy (i.e. the payment of a
tariff as compensation for the infringement of copyright), does the Copyright Board'sconstitutive Act, regulations or rules of procedure comply with Canada's obligation to ensureadministrative authorities are empowered to:
(a) identify and protect confidential information (Article 49 in conjunction with
Article 42 of the TRIPS Agreement)?
(b) order a party to produce relevant evidence (Article 49 in conjunction with
Article 43.1 of the TRIPS Agreement)?
(c) order the infringer to pay damages "adequate to compensate for the injury the
right holder has suffered" (Article 49 in conjunction with Article 45.1 of theTRIPS Agreement)?
(d) order the infringer to pay the right holder's expenses (Article 49 in conjunction
with Article 45.2 of the TRIPS Agreement)?
(e) to grant injunctions (Article 49 in conjunction with Article 44 of the TRIPS
Agreement)?IP/Q4/CAN/1
Page 6
The Copyright Board may not order a civil remedy.  Rather, it establishes tariffs.  Once a
tariff is established, a right holder may have recourse to the courts, through judicial proceedings, toenforce its rights.  Thus Article 49 of the TRIPS Agreement would not apply.  By way ofinformation, the Board:
(a) is empowered to protect confidential information, in the exercise of the general
powers of an administrative tribunal;
(b) is empowered to order a party to produce relevant evidence, in the exercise of the
general powers of an administrative tribunal;
(c) may not order damages;(d) may not order costs;  and(e) may not grant injunctions.The courts would have power to grant the remedies under (c), (d) and (e).
10. Given the existing standards for interlocutory (including interim) relief under
Canadian law, are Canadian judicial authorities able to order effective provisional measures,particularly in the area of patents?  How are Canadian courts obliged to discontinueprovisional measures if prosecution of the infringement action is not initiated in an expeditiousfashion (Article 50 of the TRIPS Agreement)?
The Federal Court and the superior courts of the provinces have inherent equitable authority
to make such interim or interlocutory orders as are necessary for the administration of justice, inpatent and other intellectual property right cases.  Such orders may include quia timet injunctions
and Anton Pille r orders.  Where delay is encountered in the prosecution of an infringement action,
the equitable doctrine of laches would enable the court to vacate such orders, at the request of themoving party.
[Follow-up question from the EC]
Please specify the provisions under which the Federal Court and the superior courts of
the provinces have authority to make such interim or interlocutory orders.
Please see the answer to follow-up question to question 1.
11. Do Canada's Trade-marks Act border measure provisions comply with Article 51 of
the TRIPS Agreement in that they limit the right to apply for a border measure to personswith an interest in a registered trademark?  Please explain.
It is noted that paragraph (a) of Note 14 of the TRIPS Agreement clarifies that "counterfeit
trademark goods" refers to the infringement of a registered trademark.
12. Are Canada's Copyright Act border measure provisions inconsistent with Article 51 of
the TRIPS Agreement in that they limit the right to apply for a border measure to owners orexclusive licensees of the copyright?  Please explain.IP/Q4/CAN/1
Page 7
In the context of the TRIPS Agreement, "right holders" are considered to be owners (for
copyright, owners include the authors of the works in question).  By including exclusive licensees,Canada's legislation has, in fact, gone beyond the obligations in Article 51 of the TRIPSAgreement.
13. In the context of border measures of counterfeit trademark goods, how is an
importer’s right to be heard "within a reasonable period" (as to whether such a suspensionshould be modified, revoked or confirmed) protected under Canadian law (Article 55 of theTRIPS Agreement)?
Under subsection 53.1 (6) of the Trade-marks Act, Canada's customs authorities must
release the imported goods within two weeks of their suspension, unless the Minister of NationalRevenue is served with notice of an action for a final determination by the court of the legality ofthe importation.  Upon commencement of that action, as part of the judicial process, the importer,as an interested party, would have the right to be heard.  In addition, upon notice of the detentionand even prior to the commencement of the action, the importer may be heard in court inappropriate circumstances.
14. With regard to cases that involve the infringement of intellectual property, could the
Government of Canada provide data on the number of:
- law suits that have been filed including their respective outcome and the
average length from the filing of a complaint until the final judgement;
- injunctions that have been issued (as defined in Article 44 of the TRIPS
Agreement) and explain how such injunctions are being enforced;
- provisional measures (as defined in Article 50 of the TRIPS Agreement) that
have been granted and the average length to obtain such measures (from therequest);
- suspensions at the border of counterfeit trademark, pirated copyright goods or
in relation to goods where other intellectual property rights are infringed;
- criminal cases including the sentences that have been applied, whether they
have been executed and please also explain what kind of infringement of anintellectual property right would be regarded as a violation of criminal law;
- seizures and/or destruction of counterfeit trademark and pirated copyright
goods.
Furthermore, could the Government of Canada explain and give practical examples:
- how the compensation for damages of the infringement of intellectual property
rights is calculated (Article 45.1 of the TRIPS Agreement);
- what would be regarded as "expenses of the right holder" which have to be
reimbursed pursuant to Article 45.2, first half of the first sentence, of the
TRIPS Agreement and how they would be calculated;IP/Q4/CAN/1
Page 8
- whether attorney’s fees can be reimbursed and how such fees would be
calculated;
- whether Article 45.2, second sentence, of the TRIPS Agreement has been
implemented in Canada and how such "damages" would be calculated?
The information requested in the first six sub-paragraphs of the question would not appear
to be required by Article 63 of the TRIPS Agreement, nor is it readily available.
As noted in Canada's replies to the Checklist of Issues on Enforcement3 Canadian courts
award damages whenever they determine that a loss can be remedies by an award of money, and thepurpose of damages is to put the plaintiff in the position in which it would have been had the lossnot occurred.  General damages are those which, although being the direct and natural consequencesof the act which gave arise to the damage, are incapable of prof with any degree of precision.Special damages however are damages which are easily provable, e.g., out-of-pocket expenses.Punitive or exemplary damages may be awarded where the defendant has behaved with a callousdisregard for the plaintiff's rights.  Their purpose is to deter others from following such conduct.
Subsection 55(2) of the Patent Act allows a patentee, and all persons claiming under him or
her, to sue for damages for infringement.  Section 15.1 of the Industrial Design Act, and s. 9 of theIntegrated Topography Act, allow damages to be claimed, including for lost profits and punitivedamages (and, in the case of topographies, for payment of royalties).  However, where thedefendant was not aware, and had no reasonable grounds to suspect, that the design or topographywas registered, the plaintiff's remedies are restricted to an injunction (Industrial Design Act, s. 17;Integrated Circuits Topography Act, s.10).  Section 53.2 of the Trade-marks Act authorizes ordersfor "the recovery of damages or profits".  Subsection 41(1) of the Plant Breeders Rights Actprovides that a court may make an order for compensation of an aggrieved person, and subsection42 (2) gives authority to the court to determine costs.  Section 34 of the Copyright Act allows acopyright owner to sue for damages.  However, existence of the copyright in the work.  In addition,section 35 allows a copyright owner to sue for lost profits and requires that he or she only providereceipts or revenues derived from the publication, sale or other disposition of the infringing work.
Canadian courts award costs as an indemnification of the expenses of litigation, i.e., fees
plus disbursements.  Hence, the winning party may be entitled to be compensated for the expense ofbringing or defending the action.  Such awards, however, are in the discretion of the court and arenever automatic (Copyright Act, Subsection 34 (2)).  Also, rules of court may provide for factors,other than winning or losing, which may be considered.  For example, where appropriate, the courtmay also impose costs against one invoking the aid of its process, i.e., where a proceeding wasunnecessary or vexatious).  However, attorneys fees are not ordinarily treated as a head of specialdamages, nor are they normally included in an order for costs.  Where ordered, they are restrictedto the schedule of costs contained in the rules of court procedure, which is ordinarily based on daysin court only.
In terms of the second sentence of Article 42.2 of the TRIPS Agreement, as part of Phase II
of its major revisions to the Copyright Act, Canada enacted Bill C-32 on 25 April 1997, which
includes a provision on pre-established damages.  (Please note that this section has not yet beenproclaimed in force).
                                                     
3 Document IP/N/6/CAN/1.IP/Q4/CAN/1
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III. REPLIES TO QUESTIONS BY HONG KONG, CHINA
Civil and Administrative Procedures and Remedies
1. Is it correct to say that intellectual property infringement cases often end in the interim
interlocutory stage?  If yes, what seem to be the reasons?  Is this desirable in the interest ofjustice?
By virtue of the costs associated with litigation, and other practical factors, it may happen
that an interlocutory injunction will, from a practical point of view, dispose of an intellectualproperty right infringement action.
2. In civil proceedings, are there any proof facilitation provisions which could create legal
presumptions of intellectual property subsistence and ownership and thus could excuse theright owner from appearing in court and to testify these issues?  If not, why?
There are several provisions, such as Section 55.1 of the Patent Act and subsection 53 (2)
of the Copyright Act, which provide rebuttable presumptions only.  They would not have the effectof excusing the right owner from appearing in court.
Criminal Procedures
3. Does any intellectual property enforcement agency have the legal power to seize and
forfeit suspected infringing articles, whether or not a charge has been laid?  If not, why?
In Canada, criminal procedures for the enforcement of intellectual property rights are under
the supervision of the courts.  Subsection 42 (39 of the copyright act allows the court, in the contextof a prosecution for an offence under subsection 42 (1), to deal with infringing copies or plates as itsees fit, whether the alleged offender is convicted or not.  As regards counterfeit trademarkedgoods, upon conviction of an offence under sections 407-411 of the Criminal Code, anything bywhich a person commits such an offence is forfeited.
4. Is there a specialized criminal intellectual property enforcement agency?  If not, what
is the rationale?
No.
5. In criminal proceedings, are there any proof facilitation provisions which could create
legal presumptions of intellectual property subsistence and ownership and thus could excusethe right owner from appearing in court and to testify these issues?  If not, why?
See Canada's response to question 2, above.IP/Q4/CAN/1
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IV. REPLIES TO QUESTIONS POSED BY JAPAN
1. Please indicate the "competent authorities" stipulated in Article 51 of the TRIPS
Agreement.
Under the Copyright Act and the Trade-marks Act, the right holder will apply to the courts
for an order directing Customs officials to detain suspected infringing goods.  Thus, the "competentauthorities" in Canada for the purpose of Article 51 of the TRIPS Agreement are the courts .
2. Please explain whether "proceedings leading to a decision on the merits of the case"
stipulated in Article 55 of the TRIPS Agreement, are judicial or administrative.
"Proceedings leading to a decision on the merits of the case" are judicial.
3. Are there any ways other than the application stipulated in Articles 51 and 52 of the
TRIPS Agreement (hereafter referred to as "the Application") which enable a right holder torequest the competent authorities to suspend the release of the goods which infringeintellectual property rights or which are suspected to infringe intellectual property rights?
Yes - under section 14 of the Integrated Circuit Topography Act.
4. Please explain what term your country regards as "a reasonable period within which
the competent authorities shall inform the applicant whether or not they have accepted theApplication" stipulated in Article 52 of the TRIPS Agreement.
Where the applicant has a prima facie case of infringement, the court would ordinarily issue
an order without delay.  Such applications are normally brought on and determined expeditiously,i.e. within a few days.
5. Please explain the term during which the Application is effective.
The term during which goods are temporarily detained serves the purpose of enabling a
right holder to bring an action for the final determination of the legality of the importation andwould hence ordinarily be commensurate with the periods mentioned in the answer to question 4.
6. Please explain whether a right holder is obliged to pay any fees to lodge the
Application.
Before making an order on behalf of an applicant for protection against alleged copyright or
trademark infringing goods, the court may require the applicant to furnish security, in an amountfixed by the court, to cover any duties, charges or damages that may by reason of the order beincurred by the owner, importer or consignee of the goods.
7. Please indicate provisions of laws and ordinances which prescribe the "proceedings
leading to a decision on the merits of the case" stipulated in Article 55 of the TRIPSAgreement.  And please summarize their contents.
Under the Trade-marks Act, section 53.1, and the Copyright Act, subsection 44.1, there is
a right of action for a "final determination by the court of the legality of the importation ordistribution".IP/Q4/CAN/1
Page 11
8. Please explain the specific procedure, if any, to be applied to the goods which are not
evident whether or not they infringe intellectual property rights, in Article 55 of the TRIPSAgreement.
When the customs officials are directed by a court order to detain specific suspected
infringing goods, they will attempt to detect and detain those goods.  Once a detention has beenmade, the applicant and the importer will be notified.  The applicant has two weeks after thenotification to notify customs officials that the applicant has commenced a proceeding for a finaldetermination by the court of the issues.  If customs officials have not received such notificationwithin that two week time period (or whatever time period that the court may specify), the goodswill be released back into the regular flow of customs traffic.
9. Please explain the responsibility that the competent authorities and other related
authorities take to the right holders when they fail to suspend the release into free circulationof goods which infringe intellectual property rights with regard to the suspension based on theApplication or the Ex Officio Action stipulated in Article 58 of the TRIPS Agreement.
In Canada, customs authorities do not act on their own initiative, but only after a court
order has been issued under section 53.1 of the Trade-marks Act, or subsection 44.1 of theCopyright Act.  If the customs authorities based on the Application or the Ex officio Actionstipulated in Article 58 of the TRIPS Agreement.
10. Please explain the responsibility that the competent authorities and other related
authorities take to the right holders when they examine goods which infringe intellectualproperty rights and nevertheless release them into free circulation with regard to thesuspension based on the Application or the Ex Officio Action stipulated in Article 58 of theTRIPS Agreement.
Both the Copyright Act and the Trade-marks Act require customs officials, under an order
from the court, to take reasonable measures on the basis of information reasonably required by themand provided by the applicant to detain the goods.  Customs officials do not make decisions oninfringement of intellectual property rights, that is left to the courts.  When customs officialsreceive a court order to detain certain goods, the officials will detect the goods by description,origin, importer, etc..  Describing the goods as counterfeit or pirated is not a useful description forcustoms purposes in detecting the goods.  Once customs officials are satisfied that the goods are thesubject of the court order, they will not release them without direction from the court to do so (or ifthe above two week time limit expires).
11. Please explain the responsibility that the competent authorities and other related
authorities take to the importers when they suspend the release into free circulation of goodswhich do not infringe intellectual property rights  with regard to the suspension based on the
Application or the Ex Officio Action stipulated in Article 58 of the TRIPS Agreement.
See answer to question 10 above.
12. Is the right holder informed of identities of the importers and consignors when the
competent authorities "suspend" the goods which infringe on intellectual property rights or
which are suspected to infringe intellectual property rights, as well as the case where the right
holder is informed of identities of the importers and consignors stipulated in Article 57 of theTRIPS Agreement?IP/Q4/CAN/1
Page 12
When goods are detained by customs officials in accordance with a court order, the
applicant is notified that the goods described in the order had been detained.  If the name of theimporter or consignee was indicated in the order, that identity becomes part of the description of thegoods, otherwise, the id entities of importers or consignees are considered to be confidential
information for customs purpose (unless disclosure of the names is ordered by the court).
13. Please explain the measures to protect confidential information in the course of the
inspection stipulated in Article 57 of the TRIPS Agreement.  And please indicate provisions oflaws and ordinances which prescribe such measures.
See question 12.  Also, the Customs Act provides that, unless ordered to do so by the court,
or unless the Minister of National Revenue decides that circumstances require it, disclosure ofinformation received for customs purposes is not allowed.
14. Please explain the procedures of detentions and seizures to be ordered by the
competent authorities based on Articles 51 and 55 of the TRIPS Agreement.
See answer to question 8 above.
15. Please explain the procedures to appeal against any decisions ordered by the competent
authorities based on Articles 51 and 55 of the TRIPS Agreement.
Canada complies with Article 55 of the TRIPS Agreement.  Under subsection 53.1 of the
Trade-marks Act, suspension measures ordinarily become null and void after two weeks, unless anaction to determine the legality of the importation has been commenced and the Minister of NationalRevenue has been so notified.  Once an action has been commenced, as part of the judicial process,the importer, as an interested party, would have the right to be heard.  It should be noted that,before the court will order the suspension of the goods, it must be satisfied that there isinfringement.  Therefore, a prima facie case would have to be made out.  Under Section 44.1 of the
Copyright Act, a similar procedure applies to goods which are imported where there is a prima
facie copyright infringement.  Under Section 27 of the Federal Court Act, an appeal on any final or
interlocutory judgement of the Federal Court lies to the Federal Court of Appeal.
16. Please explain the basis for calculating the security or equivalent assurance stipulated
in Article 53 of the TRIPS Agreement that the competent authorities may require an applicantwhen they suspend the release into free circulation.
Subsection 53.1 (3) of the Trade-marks Act provides as follows:
"Before making an order under subsection (1), the court may require the applicant to furnish
security, in an amount fixed by the court,
(a) to cover duties, storage and handling charges, and any other amount that may become
chargeable against the wares; and
(b) to answer any damages that may by reason of the order be sustained by the owner,
importer or consignee of the wares."
Subsection 44.1 (5) of the Copyright Act is similarly worded.IP/Q4/CAN/1
Page 13
17. Please explain who shall pay the cost of detentions based on Article 51 of the TRIPS
Agreement or destruction stipulated in Article 59 of the TRIPS Agreement.
The person seeking an order for detention and destruction of infringing goods under
Section 53.1 of the Trade-marks Act would prima facie  be liable for the costs associated therewith,
in accordance with the security which that person provides.  However, the court may also order thedefendant to pay such costs, in appropriate cases.
18. Please explain what kind of cases are regarded as "the exceptional circumstances" in
which the competent authorities may allow re-exportation of counterfeit trademark goodsstipulated in Article 59 of the TRIPS Agreement.
We are not aware of any cases in which the courts have considered this issue.
19. Please explain kinds and contents of documents which shall be provided by the
applicant to lodge the Application.
By "Application" in this question, we assume what is meant is an application for the
temporary detention of infringing goods under Section 53.1 of the Trade-marks Act or Section 44.1of the Copyright Act.  In the Federal Court, such applications would be commenced by notice ofmotion served on the defendant, although they may also be initiated on an ex parte  basis, where
appropriate.  In support of such applications would ordinary be filed a certificate of registration ofthe trademark or copyright, as well as an affidavit which compared the trademark or copyrightedwork with the infringing product, where the infrin gement was self-evident.  Where the infringement
was not obvious, however, expert testimony may be required.  In addition, evidence of theimminent importation of the infringing product would ordinarily be required.
20. Article 75 of the Canadian Patent Act provides that the maximum penalty for offence
is a fine of $200, or imprisonment for three months, or both.  Please explain whether thesecriminal remedies are consistent with Article 61 of the TRIPS Agreement which requiresprovisions for a sufficient deterrent, consistently with the level of penalties applied for crimesof a corresponding gravity.
4
It is noted that the provision of criminal remedies for patent infringement in Article 61 of
the TRIPS Agreement is permissive only, not mandatory.  In Canada, patent infringement isprimarily deterred by the imposition of civil remedies.
21. Please explain whether the Canadian Trade-marks Act provides for the criminal
procedures.  Please explain whether the Canadian Act is consistent with Article 61 of theTRIPS Agreement.
Canada is compliant with Article 61 of the TRIPS Agreement.  Criminal remedies for
trademark offences are contained in the Criminal Code.  Section 406 provides as follows:
"For the purposes of this Part, every one forges a trademark who(a) without the consent of the proprietor of the trademark, makes or reproduces in any
manner that trademark or a mark so nearly resembling it as to be calculated to
deceive; or
                                                     
4  Reference is made to Canada's reply to question 24 of the Checklist of Issues on Enforcement
(document IP/N/6/CAN/1).IP/Q4/CAN/1
Page 14
(b) falsifies, in any manner, a genuine trademark."
Section 407 states that:"Every one commits an offence who, with intent to deceive or defraud the public or any
person, whether ascertained or not, forges a trademark."
The last section creates the offence of forging a trademark.  That offence is committed
where the acts described in Section 406  are done with the intention to deceive or defraud anyperson or the public.  Other related offences are contained in Sections 407 to 411.  Section 412provides that, that offence may be prosecuted by indictment, with a maximum punishment ofimprisonment for two years, or by summary conviction.  Anything by means of or in relation towhich any of these offence is committed is forfeited upon conviction, unless the court ordersotherwise.
V. REPLIES TO QUESTIONS POSED BY SWITZERLAND
1. Please explain whether international treaties which contain detailed provisions
addressed to the (judicial) authorities and not to the State itself are considered as self-executing in your system?  If not, when there is a divergency between the intellectual propertylegislation/practices and the international agreement in your country, does the latterautomatically prevail?  If not, please explain the means allowing your country to fulfil theinternational obligations?  Please cite the relevant texts or jurisprudence.
Canada follows the traditional British position that its laws are separate from its treaty
obligations and that treaties do not automatically modify its laws.  Should Canada's laws need to be
changed, in order to comply with  a treaty obligation, a legislative amendment would be required.
Thus, if there were a divergence between Canada's intellectual property legislation and the TRIPS
Agreement, that legislation would have to be amended by Parliament.
2. Article 55 of the TRIPS Agreement provides that "...in appropriate cases, this time
limit [of ten days] may be extended by another 10 days".  Is such time extension foreseen inyour laws?  If yes, please cite the relevant provisions.  If not, please explain how an applicantcan avail himself of this possibility as provided by the TRIPS Agreement.
There is no express reference to an additional ten working days in either the Copyright Act or
the Trade-marks Act.  However, Subsection 44.1 (3) b of the Copyright Act and Subsection 53.1 (1) c
of the Trade-marks Act allow the court to make an or der "providing for such other matters as the court
considers appropriate".  These provisions, coupled with the inherent equitable jurisdiction of the
superior provincial courts and, as concerns intellectual property, the Federal Court, would enable a
court to provide for an additional ten working days, in appropriate cases.
VI. REPLIES TO QUESTIONS POSED BY THE UNITED STATES
General Obligations
1. Articles 41.1 and 42 of the TRIPS Agreement require that procedures be available for
the effective enforcement of the intellectual prop erty rights covered by the Agreement.  Please
describe the structure of the judicial and administrative5 procedures in Canada in which parties
can enforce their intellectual property rights, at local, provincial and national levels, explaining
                                                     
5 These questions apply to both judicial and administrative enforcement of intellectual property rights
because of Article 49 of the TRIPS Agreement.IP/Q4/CAN/1
Page 15
the interrelationships, if any, of the various type s of courts and administrative bodies.  How are
any differences in interpretation of laws resolved?
The civil judicial enforcement of intellectual property rights takes place, for the most part,
at the Federal Court, or the superior courts of the provinces (which have concurrent jurisdiction).Where low monetary damages are sought, actions may also be initiated in th e provincial (i.e., small
claims) courts of the provinces.  Differences in interpretation would be resolved by the applicationof the principle of stare decisis , with the ultimate authority being the Supreme Court of Canada.
(Since intellectual property rights are private rights of action, they are not enforced byadministrative tribunals).
2. Please identify any requirement that a foreign party must meet to initiate a proceeding
in the courts and administrative bodies identified in answer to question 1 that is not requiredof a national or resident of Canada and cite the legal authorities providing for thosedifferences.
There are no requirements that a foreign party must meet to initiate a proceeding in the
courts and administrative bodies identified in answer to question 1 that is not required of a nationalor resident of Canada and cite the legal authorities providing for those differences.
3. Articles 41.1 and 48 of the TRIPS Agreement require establishment of safeguards
against abuse of judicial and administrative enforcement procedures, including provision foradequate compensation for injury suffered because of such abuse.  Please describe the meansavailable under the law of Canada to prevent abuse of judicial and administrative proceduresor to remedy damages suffered as a result of such abuse and cite the legal authorities for thosemeans.
Under the Federal Court Rules (and comparable rules in the courts of the provinces), there
are three common means whereby abuse of the judicial process by a plaintiff would be deterred:
(a) terminating the availability of the court process;
(b) security by way of an undertaking in damages; and
(c) costs.
(a) Rule 419 provides for the striking of pleadings, which has the effect of terminating
the availability of the judicial process for the enforcement action.  It provides asfollows:
"(1) The Court may at any stage of an action order any pleading or anything in
any pleading to be struck out, with or without leave to amend, on theground that
(a) It discloses no reasonable cause of action or defence, as the case
may be;
(b) it is immaterial or redundant;(c) it is scandalous, frivolous or vexatious;(d) it may prejudice, embarrass or delay the fair trial of the action;IP/Q4/CAN/1
Page 16
(e) it constitutes a departure from a previous pleading, or
(f) it is otherwise an abuse of the process of the Court,
and may order the action to be stayed or dismissed or judgement to
be entered accordingly."
It should be noted that the court will only strike pleadings in plain and obvious
cases, e.g., where they disclose no reasonable cause of action.  ( Operation
Dismantle Inc . v. The Queen , [1985] 1.S.C.R. 411).  An action is considered to be
vexations where the claim does not sufficiently reveal the facts upon which theaction is based, such that it is not possible for the defendant to answer or the courtto regulate the action.  An example of abuse of process is an action where arose outof the same facts as an action instituted four years earlier and which would involverepetition of a substantial amount of evidence and argument from that earlier case.
(b) Rule 469 allows for interim and interlocutory injunctions, including Anton Piller
orders.  These injunctions are normally granted only where the plaintiff provides anundertaking in damages to the defendant, and where the plaintiff is not in a financialposition to make good the undertaking as to damages, the court will refuse theinjunction.  Moreover, the court has authority to order interest on damagessustained as a result of an interlocutory injunction .  (Algonquin Mercantile Corp. v.
Dart Industries Can. Ltd ., [1988] 2 F.C. 305 (Fed.  C.A.)).
(c) Canadian courts award costs as an indemnification of the expenses of litigation, i.e.,
fees plus disbursements.  Hence, the winning party may be entitled to becompensated for the expense of bringing or defending the action.  Such awards,however, are in the discretion of the court and are never automatic.  The rules ofcourt indicate which factors may be considered in awarding costs, e.g., the courtmay impose costs against one invoking the aid of its process where a proceedingwas unnecessary or vexatious.  Attorneys' fees, when ordered, are restricted to theschedule of costs contained in the rules of court, which is ordinarily base on days incourt only.  (See also the answer to question 13).
4. Please explain any provisions in the enforcement system in Canada that ensure
expeditious remedies.  In addition, please explain what provisions are available to preventdeliberate delays by the parties to a proceeding and indicate the circumstances in which suchprovisions will be applied.
Rule 469 of the Federal Court Rules reads as follows:"(1) An application for an interlocutory injunction may be made by any part, before or
after the commencement of the trial of the action whether or not a claim for aninjunction was included in that party's statement of claim or declaration,counterclaim or cross-demand, or third party notice, as the case may be; and anysuch application shall be support by an affidavit establishing the facts that render theinjunction necessary and shall be made by motion upon notice to all other parties.IP/Q4/CAN/1
Page 17
(2) Notwithstanding paragraph (1), in case of urgency, an application under that
paragraph may be made without notice and that Court may, on any suchapplication, grant an interim injunction for a period not exceeding 10 days.
(3) The plaintiff may not make an application under this rule before commencement of
the action except in the case of urgency, and in that case the injunction may begranted on terms providing for the commencement of the action and such otherterms, if any, as seem just.
(4) An application for an interlocutory or interim injunction may, in the court's
discretion, be refused on terms.
(5) Every interlocutory or interim injunction is, whether or not it contains such an
express term, subject to recession, suspension or amendment by order of the Court(which may, in case of urgency, be made ex parte  at any time after the order
granting the injunction was made."
Similar rules in the superior courts of the provinces also allow for interim and interlocutory
injunctions, including Anton Piller orders and Mareva injunctions.  Where delays are encountered,the courts may order sanctions against the dilatory party.
5. Article 41.2 addresses, among other things, the cost of judicial and administrative
enforcement proceedings.  Please describe any fees charged by judicial or administrativeofficials for filing legal actions involving intellectual property or for pursuing such actions onceinitiated, cite the legal authorities for such fees, and provide copies of the documents used toinform the public of such fees.
The fees for filing legal actions involving intellectual property are contained in the tariff of
fees of the Federal Court Rules (and the tariffs of the rules of  court in the provinces).  The rules ofcourt are subordinate legislation and, accordingly, have the force of law in Canada (or, in the caseof provincial rules of court, in the province).  In the Federal Court, the fees are indicated inTariff A, which provides as follows:
 "2(1) The following fees shall be paid to the Registry by the party indicated at the time
indicated:
(a) by the party who commences a proceeding in the Trial Division, at the time
of commencement: … $150 …;
(b) by the party who takes steps go have a proceeding (other than an
interlocutory application) heard by the Trial Division, at the time of settingthe matter down for hearing at a general sitting or of filing the applicationfor an order fixing a date and place for hearing: $300 and, where any suchhearing lasts more than 3 days, by each of the parties taking part in thehearing, forthwith after the end of the hearing, an amount equal to one-halfof the aforesaid amount for each additional day…;
(…)
(3) A party shall pay the fees indicated upon filing the following documents:IP/Q4/CAN/1
Page 18
(a) a notice of appeal from a final or interlocutory judgement of the Trial
Division … $50 …
(c) a notice of an application for leave to appeal or leave to commence an
application for judicial review … $50 …
3(1) A witness, other than a witness who appears to give evidence as an expert, is
entitled to be paid by the party who arranged for his attendance $20 per day, plusreasonable and proper transportation and living expenses, or, if it is larger, the fee orallowance in similar circumstances in a superior court of the province where the witnessappears."
6. Article 41.3 of the TRIPS Agreement requires that decisions on the merits of a case
preferably be in writing, the better to determine the reasoning on which the decision is based.Please state, with regard to each type of court and administrative body identified inquestion 1, whether judges or administrative officials must render their decisions in writingand cite the legal authorities requiring such written opinions.
All judgements and orders of the Federal Court, with the exception of interlocutory ones,
must be in the form of a separate document signed by the presiding judge (Rule 337(2)).Interlocutory judicial and orders may be endorsed on the notice of motion or other document on thecourt file (Rule 337(7)).  Similar rules exist for the superior courts of the provinces.  Sinceintellectual property rights are private rights of action, they are not enforceable by administrativeagencies.  (It is noted that the stipulation in Article 41.3 of the TRIPS Agreement, that reasons forjudgement be in writing, is directory, not mandatory).
7. Article 41.3 also requires that decisions on the merits of a case be based only on
evidence in respect of which parties had an opportunity to be heard.  Please state, with regardto each type of court and administrative body identified in question 1, what factors may beconsidered by a judge or administrative official in rendering a decision and cite the legalauthorities establishing the basis on which judges and administrative officials may reachdecisions.
It is a fundamental principle of justice that judges render their decisions in the basis of the
law and the facts, as contained in the evidence before them.  Also, the principles of justice requirethat a person whose rights are affected by a decision of the court must have the right to be heard.To do otherwise would be a reviewable error.
8. Article 41.4 obligates WTO Members to provide for judicial review of certain judicial
and administrative decisions in intellectual property enforcement proceedings.  Please describeany legal limitations placed upon the ability of a party to an intellectual property enforcementproceeding to have both procedural rulings and final decisions reviewed by a separate judicialauthority, and cite the legal authorities providing for such reviews.
It is also a fundamental principle of justice that decisions of the courts are reviewable, on
appeal, for errors of law or jurisdiction.
Civil and Administrative Procedures and Remedies
9. Article 42 requires that defendants be notified of judicial and administrative
intellectual property enforcement proceedings brought against them.  Please describe theIP/Q4/CAN/1
Page 19
procedures followed by each type of court and administrative body identified in question 1 for
notifying defending parties regarding proceedings that have been initiated against them,indicate the information provided regarding the proceeding and cite the legal authoritiesestablishing these procedures.
For most intellectual property rights, the Federal Court has a concurrent jurisdiction with
the superior courts of other provinces for infringement cases (Federal Court Act, Subsection 20(2);Patent Act, Subsection 54(1); Industrial Design Act, Section 15.2; Trade-marks Act, Section 55;Plant Breeders Rights Act, Subsection 42(1), 43(1).  Trade secrets, on the other hand, are protectedthrough the application of the law of contract and tort and the principles of equity, or in QuebecArticles 1472, 1612 and 2088 of the Civil Code of Quebec, and are thus enforceable only in thesuperior courts of the provinces.
Under Rule 4000 of the Federal Court Rules, actions in the Federal Court are commenced
by statement of claim, the purpose of which is to give the defendant notice of the legal and factualbasis upon which the plaintiff brings its case.  Under Rule 469 and application may be made for aninterlocutory injunction, or for the interim reservation of property, etc.
10. Article 42 also requires that parties to intellectual property enforcement proceedings
must be able to be represented by counsel and must not be subject to overly burdensomerequirements to appear personally.  Please describe any requirements imposed on the party toappear personally in a proceeding and cite the legal authorities such requirements.
There are no requirements for a party to appear personally.  Parties may appear by counsel.
11. Under Article 42, parties are to be entitled to substantiate claims and present relevant
evidence.  Please describe any limitations under the law of Canada on a party’s ability tosubstantiate a claim or to present relevant evidence and cite the legal authority providing suchlimitations.
The courts follow the common law rules of evidence and, in Quebec, the Civil Code of
Quebec and related legislation.  Section 40 of the Canada Evidence Act makes the laws of evidencein the province where the proceedings are taken applicable to all actions over which Parliament haslegislative authority.  Section 53 of the Federal Court Act recognizes the admissibility of evidenceand, in addition, provides a saving clause for evidence which, although not admissible under theCanada Evidence Act, would be admissible under the relevant provincial evidence act.  It providesas follows:
"1) The evidence of any witness may by order of the Court be taken, subject to any rule
or order that may relate to the matter, on commission, on examination or by affidavit.
2) Evidence that would not otherwise be admissible shall be admissible, in the
discretion of the Court and subject to any rule that may relate to the matter, if it would beadmissible in a similar matter in a superior court of a province in accordance with the lawin force in any province, notwithstanding that it is not admissible by virtue of Section 40 ofthe Canada Evidence Act."
The Federal Court Rules also deal with evidence:  Rule 332 (affidavits), Rule 468 (pre-trial
admission of facts and documents), Rules 477 to 479 (evidence de bene esse ), Rule 481A (plans,
models and photographs). and Rule 494 (procedure for introducing evidence at trial).IP/Q4/CAN/1
Page 20
12. Article 44.2 provides an exception to the requirement in paragraph 1 for government
use or use by third parties authorized by the government, limiting the remedy forinfringement to payment of adequate remuneration as provided in Article 31(h).  Pleasedescribe any such limitations on remedies in the laws of Canada and cite the legal authoritiesproviding for those limitations.
By virtue of section 19 of the Patent Act and Section 7.2 of the Integrated Circuits
Topography Act, no action would lie against the use by the government of a patented invention orregistered topography, if authorized by the Commissioner of Patents, who would award adequateremuneration.
13. Article 45.2 requires that judges and administrative officials be authorized to order
payment of a right holder's expenses, including legal fees.  In IP/N/6/CAN/1, Canada statesthat attorney’s fees are not normally included in an award of costs and that, when they areawarded, the amount is based upon the days in court only.  Please describe the circumstancesunder which such an order will be given, the factors considered in establishing the expenses.
Rule 344 of the Federal Court Rules provides as follows:"(1) The Courts shall have full discretionary power over payment of the costs of all
parties involved in any proceeding, the amount and allocation of those costs anddetermining the persons by whom they are to be paid.
( … )(3) In exercising its discretionary power pursuant to Subsection (1) the Court may
consider
(a) the result of the proceeding;(b) the amounts claimed and the amounts recovered;(c) the importance of the issues;(d) the apportionment of liability; …(f) any payment of money into Court and the amount of that payment;(g) any offer of settlement in writing;(h) any offer of contribution …;(i) the volume of work;(j) the complexity of the issues;(k) the conduct of any party that tended to shorten or to lengthen unnecessarily
the duration of the proceedings;
(i) the denial of or the neglect or refusal of any party to admit anything that
should have been admitted;IP/Q4/CAN/1
Page 21
(m) whether any stage in the proceedings was;
(i) improper, vexatious, or unnecessary, or(ii) taken through negligence, mistake or excessive caution;
(n) whether or not two or more parties should be allowed more that one set of
costs, where they defended the proceedings by different counsel or where,although they defended the proceeding by the same counsel, they separatedtheir defence unnecessarily;
(o) whether two or more parties, represented by the same counsel, initiated
separate proceedings unnecessarily; and
(p) any other matter relevant to the question of costs".
14. Article 46 requires that judges and administrative officials be authorized to order, in
certain circumstances, other remedies, including disposal of goods outside commercialchannels or destruction of goods and destruction of materials and implements the predominantuse of which is the creation of infringing goods.  In IP/N/6/CAN/1, Canada describesprovisions in connection with industrial designs, integrated circuits, trademarks, plantbreeders rights, and copyrights.  Please describe the additional remedies available inconnection with patents and trade secrets and describe the circumstances in which any of theseauthorities would be exercised and the factors considered in determining the nature of theremedies provided.
The superior courts of the provinces have inherent equitable jurisdiction to make such
orders as are necessary for the administration of justice, in respect of patent infringement andbreach of trade secrecy obligations.  (The Federal Court has concurrent jurisdiction for patentinfringement but not trade secrets).
15. Article 47 provides that WTO Members may authorize judges and administrative
officials to order infringers to identify for right holders third parties involved in theproduction and distribution of infringing goods or services and their channels of distribution.In IP/N/6/CAN/1, Canada states that there is no specific authority for such a remedy.  Underthe broad inherent discretion granted judges are they able to order that such information beprovided right holders in order to enable the latter to enforce their rights?  If so, pleasedescribe what factors would be considered in determining whether to order such a remedy.
Such a remedy might be ordered if necessary for the administration of justice.  It would
depend on the facts of the individual case.  (It is noted that the requirement in Article 47 of theTRIPS Agreement is permissive not mandatory).
16. Article 48.2 permits WTO Members to exempt public authorities and officials from
liability from remedies only where their actions were taken or intended in good faith incarrying out their responsibilities under the law.  Please explain any exemption providedpublic authorities and officials from liability for abuse of enforcement procedures, describe thecircumstances in which such limitations would not apply, and cite the legal authoritiesgranting such exemptions.IP/Q4/CAN/1
Page 22
Canada has no ex officio enforcement procedures at the hand of its public authorities.
Rather, as private rights of action, intellectual property rights are enforced by the right holdersthemselves through the judicial process.
Provisional Measures
17. Articles 50.2 and 50.8 require Members to authorize judicial and administrative
authorities to adopt provisional measures inaudita altera parte .  In IP/N/6/CAN/1, Canada
states that such actions are possible in urgent situations in order to allow for the filing ofmaterial.  Please describe the conditions that must exist for a court to consider a situation"urgent".
A finding of urgency would depend on the facts of the individual case.  It is a rare case that
involves urgency of the type that warrants an ex parte  injunction  (M.C.A. Can. Ltd. v. Robert
Simpson Productions  [1971] F.C. 445, 3 C.P,R. (2d) 240(Fed. Ct. T.D.)).
18. Articles 50.2 and 50.8 require Members to authorize judicial authorities and
administrative bodies to grant provisional remedies when a delay is likely to cause "irreparableharm" to the right holder.  In IP/N/6/CAN/1, Canada verifies that such authority exists.Please describe briefly what factors are considered by authorities to in determining whether"irreparable harm" to the right holder will occur.   Likewise, what factors are considered in
determining the "balance of convenience".
 Irreparable harm cannot be adequately compensated by an award of damages, e.g., where
there is serious doubt that the defendant would be able to pay any damages that might be awarded;where the loss of business would be devastating to the plaintiff and an accounting for profits wouldbe an inadequate remedy; where the defendant enjoyed a disparate market power; or where damageswould be unquantifiable.
In determining the balance of convenience, the court may consider additional equitable
factors, such as the effects an injunction would have on non-parties.  Where the inconvenience tothe plaintiff is equal to that of the defendant, the status quo should be maintained.
19. Articles 50.2 and 50.8 also require that Members authorize judicial authorities and
administrative bodies to grant provisional remedies when there is a "demonstrable risk ofevidence being destroyed".  Please describe briefly what factors are considered by thecompetent authorities in determining when there is a "demonstrable risk of evidence beingdestroyed".
Under Rule 469 of the Federal Court Rules, the Federal court has jurisdiction, as part of its
power to control its own process, to issue a Mareva injunction where there is a genuine risk that thedefendant's assets would be removed or disposed of prior to judgement.  Such an order requiresaffidavit evidence supporting the conclusion, on a prima facie  basis, that further orders of the court
would be frustrated if the injunction did not issue.
Under Rule 470, the court may issue an Anton Piller order where the plaintiff establishes a
strong prima facie case, that the potential damage would be very serious in the absence of an order,and that there is clear proof that the defendants would destroy the evidence, e.g., that there was a
quantity of infringing goods which was about to be  sold by the defendant to prospective buyers.IP/Q4/CAN/1
Page 23
20. Articles 50.3 and 50.8 authorize judicial and administrative authorities to require
applicant to provide evidence to establish with a sufficient degree of certainty that theapplicant is the right holder and that infringement has occurred or is imminent.   With respectto each intellectual property right defined in Article 1.2 of the TRIPS Agreement, pleasedescribe the evidence right holders must present to establish ownership.
Ordinarily, ownership of intellectual property rights is proven by registration certificates,
which are admissible in court (Patent Act, Section 14; Plant Breeders Rights Act, Section 65;Trade-marks Act, Section 54; Copyright Act, Section 53; Industrial Design Act, Section 7; andIntegrated Circuits Topography Act, Section 15).  Such certificates create a rebuttable presumptionthat the information contained therein is accurate.
21. Articles 50.3 and 50.8 require that Members authorize judicial and administrative
authorities to order the filing of a security or equivalent assurance to protect the defendantwhen provisional measures are being requested.  Please describe the authority of Canadianjudges to require the filing of a security or other assurance when granting provisional relief.
The jurisdiction of the Federal Court (and the superior court of each province) to require an
undertaking in damages or equivalent security exists as part of the court's power to control its ownprocess.
22. Article 50.4 requires that parties be notified when provisional measures have been
adopted  inaudita altera parte .  Please describe briefly the procedures followed by each
authority for notifying affected parties and indicate the period within which parties must benotified.
Please see the answer to question 4, wherein Rule 469 of the Federal Court Rules is quoted
in full.  Subsection (2) of that Rule stipulates that  any ex parte order lapses after ten days.  In
addition, subsection (5) makes such orders subject to recession, suspension or amendment by thecourt, including, in case of urgency, on an  ex parte  basis as well.
23. Article 50.4 also requires that the defendant be afforded a review process to determine
whether provisional measures should be modified, confirmed, or revoked.  Describe briefly theprocedures a defendant must follow to initiate review proceedings and indicate the periodwithin which the authorities must act on the request.
Under Rule 330 of the Federal Court Rules, the court may rescind  ab initio  an ex parte
order of the court, where the party who moves for such an order establishes that it is proper for theorder to be rescinded.  Such motions are made on notice to the other party and are supported byaffidavit evidence.  In addition, under Section 27 of the Federal Court Act, an appeal lies to theFederal Court of Appeal from any interlocutory judgement of the Federal Court (Trial Division).Such an appeal would be brought by filing a notice of appeal within ten days after thepronouncement of the Trial Division.
24. Articles 50.7 and 50.8 provide that judicial and administrative authorities must have
the authority to order an applicant to provide the defendant appropriate compensation for anyinjury caused by the adoption of provisional measures when said measures are revoked, havelapsed, or when it has been determined that there has been no infringement or threat of
infringement.  Please identify the judicial and administrative authorities, on a  national and
local level, that are authorized to award defendants appropriate compensation for injuriesIP/Q4/CAN/1
Page 24
caused by provisional measures and describe how the competent authorities determine
"appropriate compensation".
Provisional measures such as an interim or interlocutory injunction are normally ordered
only upon the plaintiff providing an undertaking in damages to the defendant.  Such damages areassessed in the same manner as other assessments of damages, i.e., upon proof of losses sustained.
Special Requirements Related to Border Measures
25. Please explain whether procedures, permissible under Article 51 of the TRIPS
Agreement, are available to stop the export from Canada of goods suspected of infringingcopyrights and/or trademarks.
Customs does not apply border measures against the export of suspected intellectual
property right infringing goods.  We note that the provision in the last sentence of  Article 51 of theTRIPS Agreement is permissive, not mandatory.
26. Article 52 of the TRIPS Agreement requires that rights holders wishing to stop
importation of counterfeit trademarked goods or pirated copyrighted works present evidenceto the competent authorities that there is prima facie infringement of their trademark orcopyright.  Please explain what evidence will constitute prima facie infringement in Canada.
A certificate of registration of a trademark or copyright, together with an affidavit
comparing the allegedly infringing good with that trademark or copyright would, where theinfringement was self-evident, ordinarily constitute prima facie infringement of their trademark or
copyright.  Please explain what evidence will constitute prima facie infringement in Canada.
27. Article 52 also requires that the right holder provide a "sufficiently detailed description
of the goods" to be stopped.  Please explain what is required of the right holder in Canada fora description to be "sufficiently detailed".
Both the Copyright Act and the Trade-marks Act require customs officials, under an order
from the court, to take reasonable measures on the basis of information reasonably required by themand provided by the applicant to detain the goods.  Customs officials do not make decisions oninfringement of intellectual property rights, that is left to the courts.  When customs officialsreceive a court order to detain certain goods, the officials will detect the goods by description,origin, importer, etc..  Describing the goods as counterfeit or pirated is not a useful description forcustoms purposes in detecting the goods.  Once customs officials are satisfied that the goods are thesubject of the court order, they will not release them without direction from the court to do so (or ifthe above two week time limit expires).
Furthermore, to assist in detecting shipments of any goods under a court order, customs
officials may require some or all of the following information to be provided by the applicant:
(a) Complete description of the goods(b) classification of goods under the Harmonized System
(c) quantity and value of the goods
(d) identity of importer. e.g., name, address (location), business numberIP/Q4/CAN/1
Page 25
(e) identity of exporter and vendor
(f) country of export(g) country of origin(h) place of importation/accounting of goods(i) approximate date of arrival(j) mode of transportation (e.g., sea, rail, land)
28. Article 53.2 provides that the owner, importer, or consignee of goods involving
industrial designs, patents, layout-designs or undisclosed information that have beensuspended by customs authorities should be able, in certain circumstances, to have such goodsreleased on payment of security sufficient to protect the right holder from infringement.Please identify what forms of intellectual property, if any, are subject to provisions of Article53.2 and cite to the relevant provisions of law or regulations.
The authority of the courts to order the release of the detained goods, upon the condition
described in the question, would fall within Section 53 of the Trade-marks Act, Section 44.1 of theCopyright Act, and Section 14 of the Integrated Circuit Topography Act, as the case may be.  Weare not aware of any cases where the courts have addressed this issue in reason for judgement.
29. Article 54 requires that the importer and the applicant be notified promptly of the
suspension or release of goods.  Please describe the manner in which parties are notified andthe time period within which notification must occur.
When customs officials are directed by a court order to detain specific suspected infringing
goods, they will attempt to  detect and detain those goods.  Once a detention has been made, the
applicant and the importer will be notified.  The applicant has two weeks after the notification tonotify customs officials that the applicant has commenced a proceeding for a final determination bythe court o the issues.  If customs officials have not received such notification within that two weektime period (or whatever time period that the court may specify), the goods will be released backinto the regular flow of customs traffic.
30. Article 55 provides that a review of the suspension measures is to take place within a
reasonable time at the request of the defending party to determine if the suspension measuresshould be modified, revoked or confirmed pending the outcome of the proceeding on themerits.  Please identify the forum that is authorized to conduct such a review and describe theprocedure.  Please cite the law or regulations providing for these procedures.
Under Subsection 53.1(6) of the Trade-marks Act and section 44.1 of the Copyright Act,
suspension measures ordinarily become null and void after two weeks, unless as action to determinethe legality of the importation has been commenced and the Minister of National Revenue has beenso notified.  In addition, where appropriate, a party affected by the suspension measure could applyto the court to have it vacated or varied, upon motion with notice to the other party.
31. Article 56 requires that the authorities be able to require the applicant to compensate
the defending party for any injury caused if the detention of goods was unfounded.  PleaseIP/Q4/CAN/1
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describe the manner in which such compensation can be ordered by the appropriate
authorities and the factors considered in deciding on the amount of compensation.
Under Subsection 53.1(3) of the Trade-marks Act and Section 44.1 of the Copyright Act,
the court may require security from the plaintiff.  In addition, within the context of an actioncontemplated under Section 53.1 or Section 44.1, or in connection with an action against theindividual responsible for the wrongful detention of the goods for copyright infringement, the courtmay order compensation by way of damages.  Factors relative to the quantum of such damagesmight include any loss in value of the goods between the time of their detention an release, or theconduct of the plaintiff.
32. Article 57 also requires that, where the decision on the merits favours the right holder,
the competent authorities also may be given authority to give the right holder informationregarding the importer, consignee or consignor.  If competent authorities in Canada canprovide information regarding the importer, consignee or consignor to the right holder, pleaseexplain how information regarding names and addresses of consignors, importers andconsignees and quantities of goods are provided to the applicant after a positive decision ofinfringement is made, e.g., authorities automatically providing information or by submissionof a written request from the right holder, etc., and cite to the law or regulations providingsuch authority.
There is no requirement that the court order the disclosure of information concerning the
importer, consignee or consignor to the right holder.  It is noted that the provision in the secondsentence of Article 57 of the TRIPS Agreement is permissive, not mandatory.
33. Article 59 identifies the remedies that are to be available, including destruction or
disposal of infringing goods outside the stream of commerce.  Please explain what the law inCanada permits regarding the disposition of infringing goods, i.e., does the law allow fordestruction, disposal or both.  Please cite to the law or regulations providing such authority.
Under Subsection 53.1(7) and Section 53.2 of the Trade-marks Act, and under Sections 34
and 44.1 of the Copyright Act, the court may order the destruction or disposal of infringing goods.
34. Article 60 permits Members to exclude from the provisions for border enforcement
small quantities of goods of a non-commercial nature carried by passengers or sent in smallconsignments.  Please describe what constitutes a de minimis import that is excluded from theborder measures under the law of Canada.
Customs has no de minimis  provisions for intellectual property rights.  Customs officials
will detain what the court directs them to detain.  However, in the case of copyright works, certainlimited exceptions apply under Section 45 of the Copyright Act.
[Follow-up question from the US]
The Government of Canada states that, with respect to detention of infringing
copyright works by customs authorities, "certain limited exceptions apply under section 45 ofthe Copyright Act."  Please describe those limited exceptions.
Section 45 of the Copyright Act provides as follows:
"(1) Notwithstanding anything in this Act, it is lawful for a personIP/Q4/CAN/1
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(a) to import for their own use not more than two copies of a work or other
subject-matter made with the consent of the owner of the copyright in thecountry where it was made;
(b) to import for use by a department of the Government of Canada or a
province copies of a work or other subject-matter made with the consent ofthe owner of the copyright in the country where it was made;
(c) at any time before copies of a work or other subject-matter are made in
Canada, to import any copies, except copies of a book, made with theconsent of the owner of the copyright in the country where the copies weremade, that are required for the use of a library, archive, museum oreducational institution;
(d) to import, for the use of a library, archive, museum or educational
institution, not more than one copy of a book that is made with the consentof the owner of the copyright in the country where the book was made;  and
(e) to import copies, made with the consent of the owner of the copyright in the
country where they were made, of any used books, except textbooks of ascientific nature, technical or scholarly nature for use within an educationalinstitution in a course of instruction.
(2) An officer of customs may, in the officer's discretion, require a person seeking to
import a copy of a work or other subject-matter under this section to produce satisfactoryevidence of the facts necessary to establish the person's right to import the copy."
Criminal Procedures
35. Article 61 of the TRIPS Agreement requires that Members have criminal procedures
and penalties, including imprisonment and/or monetary fines sufficient to act as a deterrent,at least for cases of wilful trademark counterfeiting and copyright infringement on acommercial scale.  In IP/N/6/CAN/1, Canada describes the criminal provisions of itsintellectual property laws, including those that apply to copyrights, but criminal provisions inconnection with trademark counterfeiting are not discussed.  Please describe the provisions inthe law of Canada that provide for criminal action in connection with trademarkcounterfeiting.
See response to question 36 below.
36. Article 61 also requires that remedies in appropriate cases include the seizure,
forfeiture and destruction of infringing goods and any materials and implements thepredominant use of which has been the commission of the offence.  IP/N/6/CAN/1 containsinformation regarding criminal penalties in connection with copyrights but does not discusstrademark counterfeiting.  Please explain the provisions in the law of Canada that providecriminal remedies for trademark counterfeiting, describe the circumstances in which thoseremedies would be imposed and provide legal citations.
Section 406 of the Criminal Code provides as follows:IP/Q4/CAN/1
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"For the purpose of this Part, every one forges a trademark who   
(a) without the consent of the proprietor of the trademark, makes or reproduces
in any manner that trademark or a mark so nearly resembling it as to becalculated to deceive; or
(b) falsifies, in any manner, a genuine trademark."
Section 407 states that:
"Every one commits an offence who, with intent to deceive or defraud the public or
any person, whether ascertained or not, forges a trademark."
This section creates the offence of forging a trademark.  That offence is committed where
the acts described in Section 406 are done with the intention to deceive or defraud any person or thepublic.  Other related offence are contained in sections 407 to 411.
Section 412 provides that that offence may be prosecuted by indictment, with a maximum
punishment of imprisonment for two years, or by summary conviction.  Anything by means of or inrelation to which any of these offence is committed is forfeited upon conviction, unless the courtorders otherwise.
37. Article 61 requires that criminal penalties be sufficient to provide a deterrent at least
for wilful trademark counterfeiting and copyright piracy.  Please explain how the penaltiesprovided under the laws of Canada comply with that obligation.
See the answer to question 36, for trademarks.  A person who is convicted of an offence
under Section of the Copyright Act is liable:
"(f) on summary conviction, to a fine not exceeding twenty-five thousand dollars or to
imprisonment for a term not exceeding six months or to both, or
(g) on conviction on indictment, to a fine not exceeding one million dollars or to
imprisonment for a term not exceeding five years or to both."
[Follow-up questions from the US]1. Please provide statistical information related to civil copyright, trademark,
geographical indication, industrial design, patent, integrated-circuit layout design, and tradesecret enforcement for each of the years 1996 and 1997, including the number of cases filed;injunctions issued;  infringing products seized;  infringing equipment seized;  cases resolved(including settlement);  and the amount of damages awarded.
In 1996, 641 lawsuits fitting the above description were initiated in Canada; and in 1997, 273
(to June 30).  The median time between commencement and disposition in 1996 was 24 months (to
judgement) or 4 months (to settlement); in 1997 (t o June 30), 17 months or 7 months, respectively.
Apart from the foregoing, statistical information of the nature requested is not available in Canada.
2. Please provide statistical information related to criminal enforcement in the area of
copyright piracy and trademark infringement for each of the years 1996 and 1997, includingthe number of raids, prosecutions, convictions, and the amount of fines and/or jail terms(including whether the fines were paid and whether the jail term was actually served or wasIP/Q4/CAN/1
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suspended) and any other information establishing that the criminal system operates effectively
to deter copyright piracy and trademark counterfeiting.
Compilation of criminal infringement charges laid by the Royal Canadian Mounted Police
(RCMP) is not available for all provinces and territories for 1996 and 1997.
3. In response to the United States question 34, the Government of Canada states that,
with respect to detention of infringing copyrighted works by customs authorities, "certainlimited exceptions apply under section 45 of the Copyright Act."  Please describe those limitedexceptions.
The exceptions are provided for in s. 45 of the Copyright Act, which provides as follows:
"1. Notwithstanding anything in this Act, it is lawful for a person
(a) to import for their own use not more than two copies of a work or other  
subject-matter made with the consent of the owner of the copyright in the 
country where it was made;
(b) to import for use by a department of the Government of Canada or a province
copies of a work or other subject-matte r made with the consent of the owner 
of the copyright in the country where it was made;
(c) at any time before copies of a work or other subject-matter are made in 
Canada, to import any copies, except copies of a book, made with the consent
of the owner of the copyright in the country of the owner of the copyright in 
the country where the copies were made, that are required for the use of a 
library, archive, museum or educational institution;
(d) to import, for the use of a library, archive, museum or educational institution, 
not more than one copy of a book that is made with the consent of the owner 
of the copyright in the country where the book was made; and
(e) to import copies, made with the consent of the owner of the copyright in the 
country where they were made, of any used books, except textbooks of a scientific, technical or scholarly nature for use within an educational 
institution in a course of instruction.
2. An officer of customs may, in the officer's discretion, require a person seeking to 
import a copy of a work or other subject-matter under this section to produce satisfactory evidence of the facts necessary to establish the person's right to import 
the copy."
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