June 2017
PFD | Intellectual property

The Quebec Court of Appeal delivers a key ruling in private international law in relation to trademark protection

By Marc-André Nadon Lawyer

In a precedent setting matter, the Quebec Court of Appeal unanimously granted an appeal filed by CGAO, an import-export agricultural-equipment company based in France, and quashed a decision from the Quebec Superior Court dismissing the CGAO's Motion to Dismiss an action for lack of jurisdiction.

In this case, the respondent Groupe Anderson, a Quebec based agricultural and forestry equipment company, filed a Motion to obtain a provisional, interlocutory and permanent injunction against its former exclusive distributor in France, the appellant CGAO, pursuant to a Distribution Agreement on the grounds that CGAO was no longer authorized to use the trademark BEAUDOIN, registered in France with the Institut national de la propriété industrielle ("INPI") by CGAO in 1999 and renewed in 2009. More specifically, Groupe Anderson asked the Superior Court to order CGAO to expunge its BEAUDOIN trademark registration at the INPI and cease all forms of use of said trademark.

Before the Superior Court, CGAO argued that the proceedings instituted by Groupe Anderson constituted a real right of action with the objective of enforcing a right over property - the BEAUDOIN trademark in France - and, as such, Quebec courts should not have jurisdiction over the matter since article 3152 of the Civil Code of Quebec provides that Quebec Courts only have jurisdiction over a real action if the property at issue is located in Quebec. Subsidiarily, CGAO argued that the issues alleged in the proceedings raised mix of personal and real rights and entitlements, and accordingly, the Superior Court had no jurisdiction in light of Common law. The Superior Court dismissed CGAO's Motion to dismiss for lack of jurisdiction.

The Court of Appeal, however, unanimously overturned the Superior Court's ruling and agreed with CGAO.

The Court of Appeal stated that Groupe Anderson's action was a mixed action, bearing a real aspect (an assertion of a property right) and a personal aspect (an assertion of a right against a party, in this case, based on a breach of contract). The Court concluded that while the action raised the issue of a trademark violation (i.e. the personal aspect), it also aimed to obtain an order to compel CGAO to expunge its trademark in France, which is clearly tantamount to a real action. For the Superior Court to have jurisdiction in a mixed action, jurisdiction must be established over both the real and personal spectrum of the action. Having no jurisdiction over a real action pertaining to a French trademark that is registered, located and used in France, the Court of Appeal concluded that Superior Court had no jurisdiction to hear Groupe Anderson's proceedings. 

Intellectual property rights are generally viewed as territorial rights which are exercised and protected by the relevant territory, or often by the relevant state, subject to certain exceptions.

It is therefore crucial that companies who claim foreign intellectual property rights andare domiciled abroad, fully assess the courts' jurisdiction before instituting court proceedings in Canada where the dispute involves intellectual property rights subject to  foreign law.

Mr. Marc-André Nadon and Mrs. Elizabeth Cullen represented the appellant CGAO. Click here to read the Court of Appeal's ruling (in French). PFD Lawyers' s Intellectual Property Department is composed of experienced IP counsel and litigators who advise clients efficiently, strategically and pragmatically on the optimization and  protection of IP assets, as well as in  IP litigation matters. Please contact any one of our professionals at