On March 1, 2013, the Government of Canada introduced Bill C-56
in the House of Commons (The Combating Counterfeit Products
Act). Bill C-56 introduces a series of amendments to the
Copyright Act and the Trade-marks Act, intended
to strengthen the enforcement of copyright and trade-marks rights
by way of new border enforcement measures and both civil and
A bit of context is important. Although Bill C-56 appears
to fulfill many of Canada's commitments undertaken in what some
view as the controversial Anti-Counterfeiting Trade Agreement
(ACTA), it responds to long-standing criticism (emanating from both
the U.S. Government and U.S. industry groups) that Canada's
copyright and trade-mark laws were outdated, lacked effective and
modern enforcement mechanisms, making Canada a haven for
intellectual property piracy (alongside countries such as China and
Russia). Canada was actually added to a "black
list" of jurisdictions notorious for copyright piracy
maintained by the United States Trade Representative in 2009.
Ratification of ACTA has run into strong headwinds in many
signatory countries (notably the EU which has withdrawn ACTA
ratification in its Parliament). With the introduction of
Bill C-56, the Canadian Government seems willing to press forward
with its ACTA package even though it has not ratified ACTA.
What's new in Bill C-56? Plenty. There are three
core areas of focus, all directed to curtailing commercial activity
involving infringing copies and counterfeit trade-marked goods: New
border measures, new civil causes of action, and new criminal
In summary, Bill C-56 provides:
Rights holders with the ability to file a request for
assistance with the Canada Border Services Agency (within a 2 year
window), enabling border officers to share information with rights
holders regarding suspected shipments of infringing products.
Border officers with the authority to detain suspected
shipments of infringing products and to contact rights holders who
have filed a request for assistance.
Border officers with the power to examine and temporarily
detain and potentially seize commercial shipments of suspected
counterfeit goods at the border (except for in-transit
New civil causes of action with respect to activities that
sustain commercial activity in infringing copies and counterfeit
New criminal offences for trade-mark counterfeiting, analogous
to existing offences in the Copyright Act.
New criminal offences prohibiting the possession or export of
infringing copies or counterfeit trade-marked goods, packaging or
Additional offences in the Criminal Code (e.g., the
new offences in the Copyright and the Trade-marks
Acts) for which police may seek judicial authorization to use
a wire tap.
In addition to the above anti-counterfeiting focused changes,
Bill C-56 also amends the Trade-marks Act to expand the
scope of what can be registered as a trade-mark (e.g.,
sound, colour and motion marks) and streamline the application and
The provisions of Bill C-56 give Canadian officials and to a
lesser extent rights holders a powerful set of tools to address
cross-border activity involving infringing copies and
counterfeit trade-marked goods. If adopted in their current
form, the amendments to the Copyright Act and the
Trade-marks Act as proposed in Bill C-56would go a long
way to addressing U.S. criticism of a lack of Canadian legislative
framework to manage an important area of international
commerce. There are valid concerns with many of the Bill C-56
provisions, including lack of supervision and oversight of summary
border enforcement and enforcement errors by officials, and the
practical effectiveness of requesting assistance by rights
holders. It remains to be seen whether these criticisms can
and will be resolved as Bill C-56 winds through Parliament and
public and stakeholder scrutiny before becoming law.
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guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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