In a recent summary judgment decision, 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 an alleged trade-mark infringement which occurred in Ontario because the evidence of the Plaintiff established that the activities of the Defendants 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. Under the reasoning in Driving Alternative, most acts of trade-mark infringement – even if they occur within a single Province – will cause damage nationally. Therefore, plaintiffs suing on such infringing conduct will enjoy the benefit of a six-year limitation period, and not be limited to the two-year period prescribed provincially.
This article was prepared by Brian W. Gray (brian.gray@nortonrosefulbright.com / +1 416.216.1905) of Norton Rose Fulbright’s Canadian Intellectual property group.
