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March 15, 2015 Vol. 70 No. 6 Back to Bulletin Main Page

CANADA: Brand Aid-Implementation of the Combating Counterfeit Products Act

As previously reported in the INTA Bulletin, the Combating Counterfeit Products Act (CCPA) became law on December 9, 2014. The CCPA’s border provisions came into force on January 1, 2015.

The CCPA authorizes the Canadian Border Services Agency (CBSA) to detain temporarily commercial shipments of suspected counterfeit goods and to share samples, information and evidence about those shipments with intellectual property owners that have filed a free Request for Assistance (RFA) application with the CBSA. Those owners will be able to use that information to pursue civil remedies in court, such as a permanent seizure or other remedies. The application is available here.

Once an RFA application is approved, CBSA will refer suspect goods to the rights holder to pursue legal remedies. An approved RFA request is valid for two years and is renewable for successive two-year periods. A bond or security may be imposed as a condition of acceptance or renewal of an RFA.

The CCPA applies both to the importation and exportation of counterfeit goods, but does not apply to personal goods accompanying a traveler or to goods whose end destination is outside Canada. The border provisions of the CCPA do not apply to patents or industrial designs, but are limited to trademarks registered in Canada and copyrights.

Suspected counterfeit goods can be detained for up to 10 working days. The detention period is extendible by 10 working days for nonperishable goods. The detention is continued if the rights holder commences an enforcement proceeding under the Trademarks Act or Copyright Act and provides notice to the CBSA. The detention is lifted when that proceeding terminates, the court directs the good’s release or the IP owner consents to the release of the goods from detention.

Under the RFA program, rights holders will be liable for the costs of storage, handling and destruction (if applicable) from the day after the day on which a rights holder is first sent an available sample or provided information up until:

a. the goods are no longer detained;

b. the government is notified that there is no intellectual property right infringement; or
c. the government is advised that the rights holder does not wish to pursue a remedy.

The CCPA also expands the definition of trademark infringement and creates new civil and criminal remedies in respect of counterfeit goods. Trademark infringement now includes the:

a. sale, distribution or advertisement of goods/services under a trademark that is confusingly similar to a prior trademark or trade name;

b. manufacturing, ordering the manufacture of, possession, importation, exportation or attempted exportation of fake goods for the purposes of sale or distribution; and

c. sale, offering for sale or distribution of labels and packaging for the sale, distribution or advertisement of fake goods.

The CCPA also creates new criminal offenses in respect of counterfeit goods. Upon a finding of guilt, the courts can order the destruction or disposal of infringing goods, as well as equipment and material used to produce, and advertising used to promote, infringing goods. Penalties for criminal offences under the Trademarks Act include a fine up to CAD 1 million and/or up to five years in prison for an indictable offense, or a CAD 25,000 fine and/or up to six months in prison for a summary offense.

The CBSA relies on information contained in the RFA application to distinguish between legitimate and suspect goods. Accordingly, the RFA application should specify as much information about the rights at issue to assist the CBSA in determining if there is infringement. Given the prohibitions on trafficking in labels and packaging, rights holders should consider including specimens of such labels and packaging in RFA applications.

The RFA program is restricted to trademarks registered in Canada. Copyright registration is not required, but is recommended by the CBSA. Accordingly, rights holders should review their portfolios and file appropriate Canadian applications to use the RFA program.

Finally, rights holders can minimize the costs associated with the RFA program by responding promptly to communications from the CBSA, advising that the seized goods are not counterfeit/pirated or that no action will be launched in respect of the suspected shipment.

INTA’s Anticounterfeiting Committee has been actively advocating its positions to the Canadian Government since the Combating Counterfeiting Products Act was introduced as a bill in the House of Commons on March 1, 2013. INTA testified before the Standing Committee on Industry, Science and Technology in House of Commons and the Standing Committee on Banking, Trade and Commerce in the Senate. INTA will continue its efforts to engage the officials as they implement this law.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2015 International Trademark Association