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January 1, 2015 Vol. 70 No. 1 Back to Bulletin Main Page

Canada Bolsters Anticounterfeiting Law

On December 9, 2014, Canada’s Parliament passed Bill C-8—the Combating Counterfeit Products Act (CCPA). The bill received Royal Assent the same day. CCPA amends the Trade-marks Act by providing new trademark prohibitions and offenses (which are already in force), and new border measures for detaining counterfeits (not yet in force).

Canada has lagged significantly behind its major global trading partners in providing adequate statutory tools for trademark owners to enforce their marks against counterfeits. CCPA is a first step towards Canada implementing more robust anticounterfeiting measures like those in Europe and the United States.

On March 1, 2013, the government introduced Bill C-56, the predecessor to Bill C-8. On November 18, 2013, INTA testified before a committee in Canada’s House of Commons on Bill C-8. (Please see INTA Bulletin, December 1, 2013, Vol. 68 No. 22). On October 2, 2014, Bill C-8 passed the House of Commons with the inclusion of an amendment to the anticounterfeiting provisions that had been suggested by INTA—namely, making the mens rea (criminal intent or knowledge of criminal conduct) element of a criminal offense less onerous to prove. The bill then moved to Canada’s Senate.

On December 3, 2014, INTA testified before the Standing Senate Committee on Banking, Trade and Commerce on Bill C-8. David Lipkus (Kestenberg Siegel Lipkus LLP, Toronto), Chair of the Anticounterfeiting Committee’s Canada Subcommittee, represented INTA. INTA again expressed support for Bill C-8, but strongly recommended changes in three major areas: (1) the need for statutory damages as a deterrence measure; (2) the need for an administrative regime to handle detainment, seizures and destruction ex officio of counterfeit product at the border; and (3) the removal of the prohibition against intercepting and seizing goods in transit. A video of INTA’s testimony is available on Parliament’s website.
Despite the forceful advocacy of INTA and other trade associations, as expected, the Senate passed Bill C-8 without any amendments. This was not unexpected, as the Canadian Senate (comprised of political appointments) rarely makes changes to a bill after it passes the House of Commons.

CCPA broadens the civil causes of actions now available. In addition to the prohibition against the sale or distribution of counterfeit trademarked goods, CCPA now prohibits the possession, import and export for commercial purposes of counterfeit trademarked goods, packaging and labelling. CCPA creates new criminal offences under the Trademarks Act for trademark counterfeiting which are analogous to existing offences in the Copyright Act of Canada, and it creates new criminal offences prohibiting for commercial purposes the possession or export of counterfeit trademarked goods, packaging and labeling.

Importantly, CCPA provides for a new border regime in which the owner of a registered trademark or copyright can submit a request for assistance (RFA), whereby goods are detained by customs officials for up to 10 days. During this period, the rights owner may receive a sample of the goods and request information on the importation of the goods. The goods remain in detention only if the rights owner commences a civil action. After acceptance of an RFA, rights holders, not the government, bears the costs of detention and destruction of the counterfeit goods.

The Canada Border Services Agency (CBSA) is responsible for implementing the new border regime. INTA anticipates that an RFA will be similar to the Customs Recordation system in the United States. In order to submit an RFA, trademark owners need to record their Canadian trademark registrations with CBSA. RFAs may require an address in Canada, but the form is not yet available. The online recordation system will not require a fee. INTA understands the border regime provisions could be in force as early as January 2015. Please see CBSA’s website for updates and answers to questions.

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