The Federal Court of Appeal decided the procedural issue of whether a claim for trade-mark infringement, depreciation of goodwill and passing-off, made pursuant to s.53.2 of the Trade-marks Act, could be brought by a notice of application under Part 5 of the Federal Courts Rules, or whether it had to be brought by way of action under Part 4 of the Rules. Dawson J.A. held that it was possible to bring a s.53.2 action either by way of notice of application or by way of an action. However, it was stated that not every case will be amenable to determination by way of notice of application.
Justice Dawson first considered the Federal Court Rules, concluding that the determination of the applicable Rule depends on the specific legislation under which the claim is brought. The relevant provision of the Trade-marks Act allows for relief “on application” by a party to the Federal Court. Dawson J.A. held that the words “on application” could not be read to require a notice of application to the exclusion of an action, because other provisions of the Act that include the phrase “on application” require an action to be brought. In the context of this section of the Act, “on application” means a formal legal request without specifying the procedure. Thus, the Act is silent as to the applicable procedure. The determining relevant provision is located in the “Legal Proceedings” section of the Act. The legislative purpose of the “Legal Proceedings” section is to provide legal redress. In the view of Dawson J.A., this means facilitating “access to the courts that is as expeditious and proportionate as possible”, whether by application or by action. Madam Justice Dawson notes that some issues will be sufficiently complex to require an action. In each individual case, “circumstances such as the relief sought, the extent credibility is in issue or the need for discovery may make it inappropriate for a proceeding to be commenced by application.”
May 5, 2011
Link to Decision
Steve Holinski & Ryan MacIsaac
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