Further to our December Alert on the Combating Counterfeit Products Act, the sections of the Act relating to Canada's new border enforcement regime came into force on January 1, 2015.
Trademark and copyright owners can now complete and submit a "Request for Assistance" (RFA) to the Canadian Border Services Agency (CBSA) Intellectual Property Rights Program. An RFA can be filed only in respect of registered trademark rights, but both non-registered and registered copyrights are eligible under the program. Each RFA is good for two years, but can be renewed for subsequent terms; no reminders will be sent when an RFA expires, so right holders need to be diligent in filing renewals.
There is no fee associated with filing an RFA, but right holders need to be aware that by filing an RFA with the CBSA, the right holder is accepting liability for all costs associated with storage, handling and destruction of any goods detained as a result of the RFA. Liability for costs begins on the day after the notice of detention is issued, and continues until (i) the goods are no longer detained for the purpose of enforcing trademark rights or copyright, (ii) the right holder provides a response in writing that advises that the goods do not contravene trademark rights or copyright, or (iii) the right holder provides a response in writing that court proceedings to obtain civil remedies will not occur. If civil action is not commenced, but the importer subsequently elects not to claim the goods within the time frame set by regulation, a right holder is liable for costs associated with the entire detention period, which could be several months in the case of non-perishable goods.
The provisions also call for civil action to be commenced by the right holder within 10 days of any notice of detention (extendable by 10 days but limited to a total of 5 days in the case of perishable goods), failing which the goods will be released.
It is therefore very important that right holders promptly respond to any notification of detention received from the CBSA, both to limit potential liability for storage and handling costs and to ensure that any desired action is taken against the importer within the necessary time frame.
RFA Form BSF738 can be found at the following webpage: http://www.cbsa-asfc.gc.ca/publications/forms-formulaires/menu-eng.html (version française: http://www.cbsa-asfc.gc.ca/publications/forms-formulaires/menu-fra.html).
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