In a historic first for the Association, on November 18, 2013, INTA appeared before the Standing Committee on Industry, Science and Technology (INDU) in Canada’s House of Commons to testify on Bill C-8—the “Combating Counterfeit Products Act.” Representing the Association were David Lipkus (Kestenberg Siegal Lipkus LLP, Toronto), Chair of the Anticounterfeiting Committee’s Canada Subcommittee, and Peter Giddens (McMillan LLP, Toronto), Chair of the Trademark Office Practices Committee’s Canadian Intellectual Property Office Subcommittee.
Bill C-8, which was originally introduced by Industry Canada on March 1, 2013, as Bill C-56, significantly improves anticounterfeiting measures by amending the Trade-marks Act in Canada. It also makes numerous changes to Canadian law and practice. Upon introduction of Bill C-56, INTA immediately engaged with Industry Canada, Public Safety Canada, the Canada Border Services Agency (CBSA) and the Canadian Intellectual Property Office (CIPO), starting with a delegation led by INTA President Toe Su Aung on March 8. After the Parliament officially prorogued on September 13, the bill was reinstated without amendments under the new number C-8 on October 28 and was referred to INDU.
In its testimony, INTA expressed its support for Bill C-8 and suggested a number of amendments to make the legislation more effective. These recommendations include additional provisions to the Trade-marks Act giving courts the power to award significant statutory or preestablished damages against counterfeiters in recognition of situations where it is difficult or even impossible for the trademark owner to prove measurable monetary loss or damage. While INTA praised the criminalization of the sale and distribution of counterfeits in Canada, it urged the inclusion of mens rea
requirements to make the new provision enforceable in practice. The Association also recommended the removal of a provision in the bill that prohibits border officials from intercepting counterfeit goods “in transit” (destined for another country), as well as the establishment of an administrative regime to efficiently and cost-effectively destroy counterfeits that are seized at Canada’s border.
INTA further recommended that the bill provide for a cause of action not only against goods that are identical to those appearing in the trademark owner’s registration but also against goods that are reasonably ancillary, incidental or connected to the goods that appear in the trademark owner’s registration or a displayed trade name that is identical to or confusing with a registered trademark.
Finally, INTA strongly recommended that rather than allowing the CIPO to destroy certain trademark records after six years, as proposed, the bill stipulate that electronic versions of file histories should first be created and that they be perpetually maintained.
Members of the INDU Committee appeared receptive to many of INTA’s recommendations. Their questions focused especially on prohibiting counterfeit goods from transiting through Canada, strengthening sanctions against counterfeiters and the need for an efficient administrative regime to mitigate the concern that the CBSA has limited resources to stop counterfeits at the Canadian border. The INDU Committee members also referenced in their questioning some suggested statutory language for the bill that INTA submitted before the testimony. INTA’s testimony, as well as the audio recording, is available on INDU’s website
INTA will continue to advocate for its proposed amendments to make the legislation even stronger as the INDU Committee begins its clause-by-clause review of the bill. Just prior to their public appearance at the Committee, Messrs. Lipkus and Giddens, supported by INTA political consultant Gar Knutson (Borden Ladner Gervais, Ottawa), met with the policy advisor to Minister of Industry James Moore to discuss the Association’s proposed amendments.
After the INDU Committee completes its consideration of the measure, Bill C-8 will proceed to the third reading debate and vote in the House of Commons and will then be taken up by the Senate.
INTA’s comments on Bill C-56, submitted in April 2013, can be found here. For more on Bill C-8, see “Combating Counterfeit Products Act and CETA,” page 9.
For more information about INTA’s advocacy efforts in Canada, contact Maysa Razavi at firstname.lastname@example.org.
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© 2013 International Trademark Association