The production and circulation of counterfeit products
have been an economic and social problem for some time. Not only
can such products pose a safety risk to consumers who use them,
counterfeit products also lead to considerable lost income for
legitimate businesses, decrease consumer confidence in the
marketplace and are often used to finance organized crime. The
retail value of counterfeit goods seized by the RCMP increased from
$7.6 million in 2005 to $38 million in
20121. Although it is generally
considered imperative to set up means of eradicating this problem,
Canada's current legal system does not provide the necessary
tools to do so.
In a concrete attempt to tackle this problem, on March 1st the
federal government tabled Bill C-56, An Act to Amend the
Copyright Act and the Trade-marks Act and to Make Consequential
Amendments to Other Acts, known under the short title the
Combating Counterfeit Products Act ( the
"Bill" ). As its name implies, the Bill
proposes changes to the current legislation to strengthen the
rights of copyright holders and trade-mark owners. Among other
things, the Bill proposes specific measures to introduce additional
civil and criminal actions as well as new border measures.
The additional powers given to border authorities no doubt
constitute the most concrete measure introduced by the Bill.
Customs officers would be able to seize suspicious products as they
are being imported into Canada, with a view to potential action
under the law. These border measures will not apply to the import
or export of goods by individuals for personal use.
The Bill also allows a copyright holder or trade-mark owner to
file a request for assistance with the Minister to facilitate an
action involving products that are imported or exported illegally.
In particular, a customs officer with reasonable grounds to suspect
that products retained under his or her authority are banned from
being imported or exported will have the discretion to provide
copyright holders or trade-mark owners who file a request for
assistance with samples of the goods and information about the
goods, which could be useful in taking civil action against
Furthermore, the Bill introduces new criminal offences for
trade-mark counterfeiting that are analogous to existing offences
in the Copyright Act. The Bill also creates new criminal
offences with respect to the possession and import and export of
infringing copies or counterfeit trade-marked goods, packaging or
The changes made by the Bill to the Trade-marks Act are
quite technical but demonstrate the legislator's intention to
evolve the law to consider changing market realities. The Bill
introduces the possibility of registering so-called
"non-conventional" trade-marks (sounds, odours, tastes
and textures). Other changes are designed to simplify and clarify
certain notions in the current legislation.
The Bill is an ambitious initiative by the federal government.
It will be interesting to follow its progress and see what
practical effects it will eventually have.
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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