The ability of a brand owner to enforce his trademark rights on the Internet often depends on the establishment of jurisdiction. The rights associated with a registered trademark are territorial and a Canadian court does not have jurisdiction in matters of infringement outside of Canada. There are three ways to establish jurisdiction over a defendant outside the province: (1) presence jurisdiction (located or carrying on business in a province); (2) jurisdiction based on consent; and (3) has assumed jurisdiction.
To determine when jurisdiction should be presumed, Canadian courts apply the âreal and substantial connectionâ test as adopted and developed by the Supreme Court of Canada. The test was designed to avoid excesses regarding extraterritorial and transnational transactions. The “real and substantial link” allows the court to declare itself competent.
The Supreme Court of Canada has identified the following presumptive connecting factors as the basis for the presumption of a tribunal’s jurisdiction:
- The defendant is domiciled or resident in the province;
- The defendant carries on a business in the province;
- The crime was committed in the province; Where
- A contract related to the litigation has been entered into in the province.
The plaintiff must demonstrate the existence of at least one of the four rebuttable presumptive connecting factors before a Canadian court assumes jurisdiction over an action involving a foreign defendant. The factors were applied differently depending on the underlying cause of the action. The Supreme Court of Canada has not yet considered the application of this approach in a trademark case involving the Internet.
In a copyright case, the Supreme Court of Canada said that the relevant connecting factors in cases involving jurisdiction and the Internet should be decided on a case-by-case basis taking into account many factors, including “the supplier’s situation. content, the host server, intermediaries and the end user. “
Internet defamation jurisdiction has been determined to be the place where defamatory statements are read, viewed or downloaded by third parties.
In the United Kingdom, the competent courts require that the defendant has demonstrated an intention to establish commercial relations with consumers in the United Kingdom. consumers.
It remains to be seen how these issues will be resolved by a Canadian court in Internet infringement cases by a defendant who is not located or not operating in a province, and jurisdiction is to be presumed.
The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.