OTTAWA: The existence of counterfeit products often signifies that a particular brand or product has ‘made it’: it is now sufficiently popular that someone is making knock-offs. Of course, counterfeits are a nuisance for legitimate rights holders and indeed harmful to consumers, who may not get the product they expect (and certainly without the usual warranties, etc. that legitimate products carry). There has never been an easy ‘fix’ to this problem, which involves the misappropriation of intellectual property rights, principally, copyrights and trade-marks; counterfeit goods will typically copy a brand owner’s trade-marks/copyrights or use confusingly similar copies.
Canada’s most recent response to this was last year’s Bill C-8, the Combating Counterfeit Products Act, S.C. 2014, c. 32 (the “CCPA”), which received royal assent in December 2014. The CCPA made a number of changes to Canada’s trade-mark and copyright laws, as well as minor amendments to the Criminal Code. These included certain civil and criminal causes of action for commercial counterfeiting, including:
Civil causes of action for trade-mark owners in respect of the manufacture (or causing to manufacture), possession, importation, exportation or attempts to export goods for sale or distribution bearing the owner’s trade-mark (or a confusing trade-mark or trade-name), including where the alleged infringer “knows or ought to know that the label or packaging is intended to be associated with goods or services that are not those of the owner of the registered trade-mark”;
Criminal causes of action for the possession for sale, renting or distribution “for the purpose of trade or exhibition in public by way of trade”, the importation for sale or rental, or the export or attempt to export for sale or rental an infringing copy of a copyrighted work; and
Criminal causes of actionfor the sale, offering for sale, distribution on a “commercial scale”, manufacture (or causing to manufacture), possession, importation, exportation or attempts to export goods for sale or distribution on a “commercial scale” using an infringing trade-mark, where the alleged infringer knows that “the goods bear a trade-mark that is identical to, or that cannot be distinguished in its essential aspects from, a trade-mark registered for such goods” (with similar offences for infringing use of trade-marks in association with services, labels or packaging, or the trafficking in labels or packaging).
More recently, in January 2015, the CCPA’s “request for assistance” provisions relating to trade-marks and copyrights came into force. These provisions allow for rights owners to file an assistance request with the Minister of Public Safety and Emergency Preparedness (i.e. with the Canada Border Services Agency or CBSA).
The request must meet prescribed criteria, and pursuant to the form made available by the CBSA, must, among others, include:
The rights owner’s name and address in Canada;
Contact information (name, phone number, mailing address, e-mail address and a secondary or back-up e-mail address) for whom to contact in the case of a detention;
Identification of the relevant trade-marks or copyrights—trade-marks must be registered marks and the CBSA recommends that copyrights that are the basis for a request also be registered;
A request is generally valid for two-years (but renewable). As a condition of accepting the request, security for costs (costs are discussed below) may be required from the rights owner. While the CBSA indicates a bond may be acceptable security, it is not yet clear if any other forms would be valid, or what quantum of security may be required.
A valid request would empower a customs officer with the CBSA to ‘detain’ copies of products that may be infringing on the basis of the details found in the request, to obtain information about the importation/exportation of such allegedly infringing goods (e.g. identification information, source information, quantity, etc.) and to share such information and a sample of the detained goods with the rights owner. After receiving a sample, the rights owner may also seek to inspect the detained goods. The detention is for a short period — 10 working days for most goods, with the potential for an additional 10 days on request.
