Combating Counterfeit Products Act – Recording Registered Trademarks With Canadian Border Service Agency
Canada’s Parliament passed Bill C-8 in December 2014 — the Combating Counterfeit Products Act (“CCPA”). CCPA amends the Trademarks Act by providing for new trademark prohibitions and offences, and new broader measures for detaining counterfeit goods. Prior to this Bill becoming law, Canadian Customs had no legal authority to seize a commercial shipment based on a suspicion that it may be counterfeit.
In light of Bill C-8, the Canadian Border Services Agency (CBSA) has now adopted a new border regime to assist trademark owners in enforcing the new statutory prohibition against the importation of counterfeit goods. It is now possible for owners of registered Canadian trademarks to file with CBSA a Request For Assistance (RFA), requesting that border officers detain any commercial shipments suspected of containing counterfeit goods. This allows trademark owners with legal recourse before counterfeit goods actually enter the marketplace, since trademark owners can now initiate civil remedies based on the manufacture, distribution and possession with intent to sell counterfeit goods.
The Bill further provides for new criminal offences for possessing and exporting counterfeit goods for the purpose of trade, allowing the RCMP to seize counterfeit goods. In fact, selling, distributing, possessing, importing or exporting counterfeit goods for the purpose of trade is prohibited and subject to fines and possible jail time.
As this system is new, there will certainly be some weeds to work out, and the effectiveness of the program remains to be seen. Indeed there is some question as to whether the CBSA will be able to run the program effectively with recent government cuts.
It has however, been a long anticipated program as the United States have had a recordal service for some time now. CBSA officers now have the discretion to detain goods being imported into Canada that they suspect are counterfeit or infringing copyright. The program provides for the CBSA to communicate directly with trademark owners who subscribe to the program to provide them with samples of detained goods.
It is important to note that an RFA must be filed with the CBSA in order to benefit from the program. Accordingly, we are recommending to our clients who have experienced, or are experiencing issues with counterfeit products in the marketplace, or who have concerns that they are vulnerable to counterfeiting, that they record their registered trademarks with the CBSA.
There are only two requirements in order for you to qualify for the program ~ 1. Ensure your trademarks are registered in the Canadian Intellectual Property Office and that they remain in good standing. 2. Complete and submit a Request For Assistance (RFA) application. There are no fees to record your marks with the CBSA and each RFA is valid for 2 years.
Following submission with the RFA, the rights holder will receive an approval letter confirming their enrolement in the program and outlining additional information.
Once approved, if suspected counterfeit goods are intercepted by the CBSA, the trademark owner will be notified and given 10 days to take action. Once the rights holder initiates enforcement proceedings, the goods will be detained pending a ruling by the Federal Court regarding relief for the rights holder. In such cases, the RCMP manage the criminal investigation into counterfeiting.
It is important to also note that the program excludes the application of these measures on goods which are being shipped from one place to another outside of Canada and are simply in customs transit in Canada.
Since trademark registration is a requirement for filing an RFA, this is a good time for trademark owners to review their trademark portfolios to ensure their trademarks are adequately protected, especially those brands which may be more vulnerable to counterfeiting. In addition, we recommend that trademark owners review the goods covered by the existing registrations to ensure these registrations cover all goods in which the mark is in fact currently being used. If it does not, they should consider filing a new application to include such goods.
If you would like more information or assistance in recording your existing trademarks with the CBSA, please contact us.