As of December 9, 2014 Canadian brand owners can take advantage of enforcement tools at the border with the introduction of the Combating Counterfeit Products Act (the “CCPA”)1. The CCPA provides further protection to brand owners by expanding the definition of infringement, with the addition of new criminal sanctions and offences under the Trademarks Act and the Copyright Act, the purpose of such provisions being to prevent importation or exportation of counterfeit products at the border. The amendments create a statutory prohibition against the import or export of goods whose packaging and labels resemble, without the consent of the owner of a registered trademark, a trademark that is identical to, or that cannot be distinguished in its essential aspects from, that registered trademark (i.e. counterfeit goods). In the same vein, amendments to the Copyright Act create a statutory prohibition against importing or exporting infringing copies of a work.2
Request for Assistance
Brand owners can now request the assistance of the Canadian Border Services Agency (CBSA) in preventing the importation or exportation of infringing materials. A Request for Assistance (“RFA”)3 filed with the CBSA provides the border agency with relevant information on the registered trademark or copyrighted material the applicant wishes to protect. An RFA is valid for a period of two years, subject to renewal.
When a brand owner requests assistance and a customs agent detains suspicious material, the brand owner will receive a sample of suspected infringing material as well as a full description of the shipment. The brand owner will thus be equipped with evidence to pursue lawful remedies under either the Trademarks or Copyright Act, or to pursue an out-of-court settlement. The CBSA will detain the infringing material for no more than ten (10) days (the “Detainment Period”) subject to a further ten-day extension upon request. Perishable items shall be held for a maximum five-day period with no extension available.
Where the brand owner commences legal proceedings pursuant to the Copyright Act or Trademarks Act prior to the release of the infringing materials, the CBSA will continue to detain the shipment until either the proceeding is concluded, the Court directs the release of the shipment, or the brand owner consents to the release of the shipment. The brand owner is liable for all costs associated with the storage, handling, and or destruction of the infringing material unless the shipment is released within the Detainment Period. Further, the brand owner risks liability for any losses or prejudice suffered by the importer/exporter due to the detention of the goods. In order to avoid such costs, brand owners would do well to appoint a Solicitor to correspond with the CBSA in a timely manner and advise them of their rights.
What Should Brand Owners Do?
There are no upfront costs required to file an RFA with the Canadian Border Services Agency. In order to avoid extensive storage penalties4 associated with the seizure of infringing material, brand owners should retain this Firm in order to correspond with the CBSA within the Detainment Period and advise them of their rights pursuant to any detainments.
The RFA recordation service offered by the CBSA requires that the trademark(s) filed be registered with the Canadian Intellectual Property Office. Brand owners should carefully review their intellectual property portfolios and ensure all important trademarks are registered.
The introduction of the CCPA brings Canada in line with most developed economies by offering brand owners operating in the Canadian market further protection from counterfeiters.
Daniel Nashid
Barrister & Solicitor
416.892.2509
[email protected]
- The Combating Counterfeit Products Act can be accessed here.
- Industry Canada’s apt summary can be found here.
- The RFA form can be found here.
- Fees for storage, handling, and destruction are not insignificant. Storage of a shipping container can cost in the neighborhood of $300 per day, destruction of such goods upwards of $1500 and likely more for hazardous materials.