The main procedural associated with an application at the Federal Court level are summarized within Table 1. Table 1 – Procedural Steps for an Application Made to the Federal Court Category Description Timing Rule(s) Bringing an Application Before the Court An appeal (in the form of an application) lies to the Federal from any decision of the Registrar (ex. appealing a decision of the TM Opposition Board) Within 2 months from notice of the Registrar's decision (or within such time as the court may allow after the expiration of the 2 months) R.61(2), R.300(d), R.56(1) of the Act Steps in the Pleadings Process 1) Applicant files Notice of Application -- R.301 2) Applicant serves Notice of Application to other parties 10 days after issuance of Notice of Application R.304(1) 3) Respondent(s) who intend to oppose an action serve a Notice of Appearance 10 days after being served with Notice of Application R.305 4) Applicant serves and supporting affidavits and documentary evidence 30 days after issuance of Notice of Application R.306 5) Respondent serves and files supporting affidavits and documentary exhibits 30 days after service of applicant's affidavits R.307 6) Completed by all parties within 20 days after the filing of the respondent's affidavits R.307 7) Serve and file applicant's record 20 days completion of cross-examination R.309(1) 8) Serve and file respondent's record 20 days after service of applicant's record R.310(1) 9) Applicant serves and files a requisition requesting that a date be set for the hearing of the application 10 days service of the respondent's record R.314(1) b. Actions – Expungement/Infringement Brought Under The Canadian Trade-Marks Act trial trial Trial Marks
for the presentation of evidence and directions that will facilitate the orderly and expeditious conduct of trial. 6) A case management judge (or master) may convene a case conference at any time on his/her own initiative or upon a party's request. Discussions may include, for example: exploring methods to resolve contested issues, creating a timeline for the proceeding, and the potential usefulness of referring an issue to ADR. (3), & (5) 7) The plaintiff has a duty to file a timetable (or request a case conference to establish a timetable) within 180 days after the proceeding is commenced. Such a timetable will set deadlines by which specific steps in the proceeding must occur. R. 77.10(2) 8) Provides for an informal motion procedure (before a case management judge or master). R.77.12 3. MANDATORY MEDIATION (R. 24.1) Applies only to certain actions 1) A mediation session shall take place within 90 days after the first defense has been filed, unless the court orders otherwise. However, for standard track case management, the mediation session may be postponed up to 60 days with the consent of the parties. (1)&(3) 2) The parties may select the mediator from a list of mediators compiled by the local mediation (1)
A pre-trial conference must be held before a judge or master within 30 days of the trial date 4. MEDIATION [Notice to Mediate (General) Regulation – B.C. Reg.4/2001] Any to an action may initiate mediation by delivering a Notice to Mediate Form to: i) All other parties to the action, and ii) The Dispute Resolution Office in the Ministry of the Attorney General. Notice to Mediate Reg., s.3 c. Alberta The Bench of Alberta is Alberta's superior trial court. The civil procedures of the Queen's Bench Court are governed by the Alberta Rules of Court (Alta. Reg. 390/1968). Alberta has incorporated some initiatives into the Alberta Rules of Court which are aimed at speeding-up the litigation process, under certain circumstances. These provincial initiatives are provided within Table 5. Unless otherwise indicated, all rules referred to below are from the Alberta Rules of Conduct. Table 5 – Expeditious Initiatives Implemented within Alberta ACCESSIBILITY UNIQUE PROCEDURAL ASPECTS Description Rule Description Rule 1. PRE-TRIAL CONFERENCES 1) A conference must be held for: i) Any set for 3 days or longer, ii) All matters to be heard by jury, and iii) Cases where the court orders a conference. Practice Note 3 (March 25, 2002) Issues to be discussed at a conference include: possible simplification of the issues, potential amendments to pleadings, possibility of admissions, and any other matters that may aid in the disposition of the proceeding. 2) In any action (other than a very long trial action), the
Otherwise, criminal action can be brought via direct summons. In this case, it is up to the plaintiff to gather evidence of the alleged facts. 3. Specific Procedural Rules Dealing With Trademark Litigation a. Appeal Against the Decisions Rendered by the Director of the French National Institute of Industrial Property (INPI). Pursuant to article L. 411-4 of the CPI, decisions of the Director of the INPI granting, refusing or maintaining industrial property titles shall be submitted to the civil Courts of Appeal. The ten Courts of Appeal having exclusive jurisdiction on such matters are listed in article R. 411-19 CPI. The Court can only cancel or refuse to cancel the Director's decision. Appeals shall be exercised within one month of the decision (the plaintiff shall file a written statement –in duplicate - with the court Clerk's office). b. Courts Jurisdiction With Respect To Trademark Litigation National trademarks:The First Level Courts (tribunaux de grande instance) have subject matter jurisdiction for trademark civil litigation. According to this rule, trademark infringement actions involving two merchants are excluded from the jurisdiction of the Commercial Court (tribunal de commerce). European trademarks: proceedings relating to European trademarks shall be heard by the Paris First Level Court (tribunal de grande instance de Paris). c. Specific Summary Proceeding (Art. L716-6 CPI) The President of the court before which proceedings have been instituted, sitting in chambers, may provisionally prohibit a continuation of the alleged infringing acts, subject to a daily fine, or may subject such continuation to the provision of securities for the purpose of ensuring compensation to the owner of the trademark or to the beneficiary of an exclusive right of exploitation. Action for prohibition or provision of securities shall be admissible only if the case appears well-founded and proceedings were instituted within a short time following the day on which the owner of the trademark or the beneficiary of an exclusive right of exploitation obtained knowledge of the facts on which they are grounded. Such procedure is likely to be altered because of the forthcoming transposition of the EU Directive 2004/48/EC into French law. According to the French draft, preliminary injunctions may be requested before filing a complaint on the merits and may be requested unilaterally. Reasonable available evidence creating sufficient degree of certainty of a breach of the intellectual property right would suffice to bring this action. d. Trademark Infringement Seizure Operations Trial
3. Criminal Proceedings & Customs Enforcement Apart from civil litigation, trademark infringement also constitutes a criminal offense under the Trade Descriptions Ordinance which broadly prohibits the use of false trade descriptions, as well as the use of misleading and unauthorized trademarks. A party enforcing their right under this ordinance may request the Commissioner of the Customs and Excise Department to take enforcement action and seize the infringing goods. The Customs and Excise Department (“Customs”), has powers to search, seize, remove or detain any goods that they reasonably suspect to be an infringing good. To request Customs to take enforcement action against trademark activity, the trademark should making a complaint to the department and provide the following information: relevant trademark certificate as proof of trademark ownership in Hong Kong; a sample of the genuine product and information on the offending goods involved; name and address of the suspected offender; and an appointment letter, whereby the trademark owner authorizes an officer to take enforcement action, including conducting seizure identification, giving evidence and testifying in court. After making a complaint, Customs will immediately report to their front-line which will conduct an investigation. If Customs finds evidence of counterfeiting, they will take enforcement action accordingly. However, since the length of time required for investigations vary from case to case, there is no set time period for when enforcement action would take place. J. JAPAN The litigation process in intellectual property-related lawsuits in Japan has been considerably expedited in the past 10 years as a result of the efforts made by courts, legislators and practitioners under the overall judicial system reform that started in the late 1990s. The average duration of trials in the first instances has been shortened from 25 months in 1998 to 13.4 months in 2009 (12.5 months in 2006) whereas the counterpart in the second instances have been reduced more slowly but kept under 10 months or less. Behind these improvements are the new Code of Civil Procedure entered into force in 1998, amended in 2003, and in particular the introduction of keikaku shinri or planned proceedings mandated by Article 147bis and 147ter of this law. on the Merits