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IP monitor: Trademarks unlimited provincially

In a recent summary judgement decision with respect to trade mark infringement Driving Alternative Inc v. Keyz Thankz Inc 2014 FC 559, the Federal Court of Canada decided that the Federal limitation period of six years applied to this trade-mark infringement which occurred in Ontario because the evidence of the Plaintiff established that the activities of the Defendants have caused damage to the Plaintiff beyond Ontario, including confusion in Alberta.

The Federal limitation period applies where the “cause of action”: arose otherwise than in a single Province and the Federal Court held that the cause of action included the damage suffered by a party, not just the act that caused the damage.

Moreover, the Court agreed with the Plaintiff that it seems unjust to bar, by way of a provincial statute of limitations, national trade-marks rights of the Plaintiff.

This case is significant given the trend provincially to reduce limitation periods generally to two years in most cases. Given the reasoning in Driving Alternative, most acts of trade-mark infringement even if occurring within a single Province will cause damage nationally and therefore enjoy the benefit of a six year limitation period, not the two year period prescribed provincially.

By Brian W. Gray
Republished with permission from Norton Rose Fulbright LLP

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