Bill C-8, the Combating Counterfeit Products Act (the
"Act"), received Royal Assent on December 9, 2014. The
law is intended to give trademark and copyright owners additional
options for dealing with the importation and sale of counterfeit
goods. The Bill passed through its required three readings in the
House of Commons on October 2, 2014, before being passed by the
Senate on December 8, 2014.
Once proclaimed into force, the Act will amend the
Trademarks Act and Copyright Act to provide a new
procedure by which customs authorities may detain goods at the
border that are suspected of being counterfeit products. The
"Request for Assistance" procedure is rumoured to be
coming into force in January 2015, with implementation of the
remaining amendments to the Trademark Act and
CopyrightAct provided for in the Act expected at
a later date.
The "Request for Assistance" procedure will provide
owners of Canadian copyrights and Canadian trademark
registrations with an important and new option for
addressing the import of counterfeit goods. The procedure allows
the owner of a Canadian trademark registration or Canadian
copyright to file a request for assistance from customs
authorities. Requests will be good for two years, although
renewable for additional two year periods on request. Requests for
assistance will need to include the Rights Holder's name, and
address in Canada, as well as any other information required by the
Minister; the specific request form is not yet known. Further, the
current rumour is that that there will be no government fee, at
least initially, for such recordal.
Customs officers will provide the Rights Holder with a sample of
the detained goods and information about the goods. The Act
prohibits the Rights Holder from using the provided information for
any reason other than to pursue remedies under the
Detention is limited and goods will only be detained for up to
10 days (or 5 days in the case of perishable goods) following
notification of the detention to the Rights Holder, and for an
additional 10 days upon request from the Rights Holder, and at the
discretion of the customs officer. To detain the counterfeit goods
for a longer period, the Rights Holder must commence court
proceedings and notify the Minister of the proceedings; otherwise,
the goods will be released into the market at the expiry of the
initial detention period.
Importantly, Rights Holders, not the government, will bear the
costs of handling, detaining, and destroying any goods seized by
customs authorities pursuant to a request for assistance once they
have been given notification of the detained goods. Neither the
Crown, nor any customs officer shall be liable for any damage or
loss arising from the detention or release of detained goods.
The Act does not apply to "in transit" counterfeit
goods or to goods imported substantially through the internet and
in small mail packages.
Since a trademark registration is a condition precedent to
request "assistance" from customs officers, trademark
owners should review their portfolios to ensure that steps are
being taken to arm themselves with registrations, as soon as
possible, especially for brands that could be potential counterfeit
targets. Trademark owners should also ensure that the list of goods
covered by their trademarks registrations includes goods likely to
be counterfeited, and if not, should consider filing for an updated
list to take advantage of the new procedure and thereby combat
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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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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