On December 9,2014 Royal Assent was given to Bill C-8, the
Combating Counterfeit Products Act. The intention of Bill
C-8 is to give the government and holders of trade-marks and
copyrights new mechanisms for enforcement, along with substantial
remedies, in order to combat counterfeit and black-market goods.
Before the introduction of Bill C-8, Canada had been criticized for
not having meaningful policies to combat the global problem of
counterfeit trafficking which flowed across Canadian borders.
Specific enforcement mechanisms contained in Bill C-8
new civil prohibitions under the Trade-marks Act and
Copyright Act giving rights holders the ability to start
civil actions against those who infringe their trade-mark or
copyright by possessing, manufacturing, distributing or trafficking
goods for commercial purposes;
new criminal offences under the Trade-marks Act and
Copyright Act for possessing, manufacturing, distributing
or trafficking counterfeit goods for commercial purposes;
new provisions giving customs officials ex officio
power to independently seize and detain suspected counterfeit
goods. This includes the ability for copyright and trade-mark
owners to file a "request for assistance" with customs
officials to increase the information available to customs
regarding possible counterfeit goods.
For a deeper review of the changes contained in Bill C-8, please
see our previous post written in March 2013 when the bill was first
While the Bill has obtained Royal Assent, it is only partially
in force. Changes currently in force include:
the introduction of the new criminal provisions;
the deletion of section 7(e) of the Trade-marks Act;
amendments to Section 20 of the Trade-marks Act
dealing with infringement.
The majority of the amendments to the Trade-marks Act
and Copyright Act, including the provisions relating to
importation and exportation and ex officio powers of custom
officials, will be brought into force by regulation. It is not
clear when this will occur. However, it is thought that
implementation will be in step with Bill C-31, the Budget
Implementation Act, which is also waiting to come into force
sometime in 2015 early 2016 and contains further significant
amendments to the Trade-marks Act.
We will keep you updated as coming into force dates are
announced and these legal tools become available to trade-mark and
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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