INTA to Continue Anticounterfeiting Advocacy After Introduction of New Canadian Legislation

Published: July 1, 2019

David Lipkus Kestenberg Siegal Lipkus LLP Ontario, Canada

Canada’s Prime Minister Justin Trudeau on May 29, 2019, introduced Bill C-100: An Act to implement the Agreement between Canada, the United States of America, and the United Mexican States.

INTA is pleased that Section 107 of the Bill states that the Trade-marks Act exception on the prohibition to import counterfeit goods being shipped from one location outside Canada to another, in customs transit control or customs transhipment control in Canada, will be repealed.

Additionally, Section 108 of the Bill states that customs officers will have authority to provide additional information-including the name and address of any person involved in the movement of the suspected counterfeit goods-to rights owners that have filed a request for assistance in pursuing a remedy under the Trade-marks Act.


Canada made significant changes to its laws with the 2013 Combating Counterfeit Products Act legislation, but brand owners and many trademark practitioners have viewed such legislation as needing further improvements in order to more effectively combat counterfeiting.

Since the passage of the 2013 legislation, INTA, led by the Anticounterfeiting-Canada Subcommittee, has continued to advocate strongly for additional changes to the legislation and to increase the resources for anticounterfeiting (including with respect to detaining counterfeit goods at the border). The Canadian Border Services Agency (CBSA) has confirmed that there have been fewer than 100 shipments of suspected counterfeit goods detained between January 2015 and May 2019.

INTA has sent numerous delegations of brand owners, trademark professionals, and staff to meet with government officials in Ottawa, Canada. Most recently, in April 2019, INTA met with Canadian Senator Joseph A. Day’s office and a representative from the Innovation, Science and Economic Development Department. Delegations also met with relevant government departments on the scope of anticounterfeiting in Canada and the need to take action, as well as seeking legislative changes in three primary areas:

  1. Providing a simplified procedure at the border to allow the CBSA to destroy counterfeit and pirated goods (the current procedures require a judicial determination unless the brand owner negotiates with the importer to relinquish the goods, assuming the brand owner can find the importer);
  2. Providing statutory damages for trademark infringement; and
  3. Allowing the CBSA to detain counterfeit and pirated goods in transit.

Next Steps

INTA will continue to support the Canadian government’s efforts to strengthen its anticounterfeiting laws, and remains hopeful that the Trade-marks Act will be amended in the future to include the introduction of a simplified procedure, and provide for statutory damages for trademark infringement.

For more information on INTA’s anticounterfeiting activities, please contact INTA’s Anticounterfeiting Manager Maysa Razavi at [email protected], Anticounterfeiting Advisor Tiffany Pho, at [email protected] or Anticounterfeiting Advisor Asia-Pacific Valentina Salmoiraghi at [email protected].

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.

© 2019 International Trademark Association