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The Enforceability of Foreign Trademark Decisions in Canada

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The Enforceability of Foreign Trademark Decisions in Canada Aquilina Law September 10, 2021

The Enforceability of Foreign Trademark Decisions in Canada

The recent Ontario Superior Court of Justice’s (“ONSC”) decision Dead End Survival, LLC v. Marhasin[1] lifts all doubt regarding the enforceability of foreign courts’ trademark decisions in Canada. Dead End Survival, LLC, a Michigan-based manufacturer of survival gear, sought to enforce in Canada a judgment of the Georgia District Court against Mr. Georgi Marhasin. The latter was the sole proprietor of Marhasin Warehouse, a business based in Ontario. Dead End alleged that Marhasin Warehouse was selling and offering to sell counterfeit Dead End products in Georgia and Ontario through online retailers.

In 2018, the Georgia District Court accepted jurisdiction in Dead End’s action for trademark infringement and issued a permanent injunction to prohibit Marhasin from advertising, using, offering to sell, selling, distributing, or importing into the United States all counterfeit Dead End goods. Marhasin was also ordered to pay USD $2 million in damages for breach of trademark. Following its victory in the U.S, Dead End applied to the ONSC in order to enforce its U.S judgment in Canada[2]. The ONSC found in favour of Dead End and explained that Ontario courts will enforce all trademark judgments from foreign courts if the defendant attorned to the jurisdiction of the foreign court or if the foreign jurisdiction had a real and substantial connection to the dispute.[3]

In analyzing the real and substantive connection requirement, courts will take into account where the wrongdoing happened, the place where the damages were suffered, and where the transactions between the parties took place. Therefore, if it is determined that the foreign court properly assumed jurisdiction, a foreign trademark judgment will prima facie be enforceable.[4] In the case at bar, the ONSC concluded that the Georgia District Court had a real and substantial connection with the dispute between Dead End and Marhasin insofar as the latter sold and offered his counterfeit products to customers in Georgia, infringing Dead End’s trademark and causing damages to the company in the U.S and Canada.

While Marhasin argued that the U.S judgment was obtained by fraud, the ONSC stressed that a foreign judgment can only be challenged for fraud when the defendant’s factual allegations are material and new[5], which was not the case in Dead End. In order to succeed in a defense of fraud, the defendant has to prove that the facts leading to the fraud could not have been discovered through diligence before obtaining a final decision.[6] Moreover, the ONSC will not re-analyze the merits of an action that led to a foreign judgment and the Ontario court will enforce the foreign court’s judgment with a judgment of its own.”[7]

The key take-away in Dead End’s decision is that if a real and substantial connection exists between the dispute and the foreign court that assumed jurisdiction, then Ontario courts will enforce trademark judgments from other countries. __________________________________________________________________________________________________________________________

[1] 2019 ONSC 3453

[2] Ontario currently only has a reciprocal enforcement agreement with the United Kingdom. According to the Reciprocal Enforcement of Judgments (U.K.) Act, RSO 1990, c R.5., Canada will enforce U.K. judgments at any time within 6 years after the date of the judgment.

[3] Ibid, p. 21 and 23

[4] Ibid, p.22

[5] Ibid p.27

[6] Ibid, p. 27

[7] Ibid, p.19

This article is for informational purposes only and does not constitute legal advice. If you wish to seek legal advice, contact Martin Aquilina today.

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