The new Combating Counterfeit Products Act (the “Act”) is a welcomed change for trademark and copyright owners. The Act has made a number of amendments to both the Copyright Act and Trademark Act, broadening the ambit of what constitutes trademark or copyright infringement. It also provides new venues and powerful new tools for registered owners to take action against infringing parties and counterfeit goods from entering Canada.
Expanded Definition of Infringement
Trademark infringement has been expanded to include the manufacturing, possessing, importing, exporting or attempt to export goods (and the labelling of packaging thereof) bearing a mark that is confusingly similar to a registered trademark. Similar amendments have been included in the Copyright Act regarding copyright infringement. These changes make it more difficult to distribute knock-offs and counterfeit goods in Canada.
Counterfeit distributors will now face criminal consequences for selling counterfeit goods. The Act makes it a criminal offence to manufacture, sell, import, export or possess infringing copies of counterfeit goods, labels or packaging. If convicted of these new criminal offences, parties may be liable for fines up to $1 million dollars and/or five years’ imprisonment.
Request for Assistance Program
A trademark or copyright owner (“Owner”) may submit a Request for Assistance to the Canadian Border Services Agency (“CBSA”) to assist them in taking action against those distributing counterfeit goods. There is current fee to make a request. A request will be valid for two years and can be renewed thereafter by the Owner. The request form and further details for Requests for Assistance can be found here: http://www.cbsa-asfc.gc.ca/publications/forms-formulaires/bsf738-eng.html.
After receiving and approving a Request for Assistance, the CBSA can intercept and detain commercial shipments suspected of containing counterfeit goods at the border. The CBSA will notify the Owner of the detention and provide samples of the goods and other information regarding the shipment. This information includes the quantity of the goods, the country of origin of the shipment, and the owner of the shipment. The shipment will be detained for ten (10) days if the goods are non-perishable and five (5) days for perishable goods. If the Owner determines that the goods are counterfeit, the owner may pursue civil remedies pursuant to the Trademark Act and Copyright Act using the information obtained by the CBSA. Should an Owner pursue court action, the shipment of goods will be remain in detention until either the court proceedings are completed, the Owner consents to their release or pursuant to a court order.
This powerful tool is only available to owners of registered trademark or copyright. Businesses who distribute goods should seriously consider, if they have not already done so, applying to register their trademarks or copyrights. For more information regarding the Act, Requests for Assistance or trademark applications, please contact one of the lawyers at Wises.