As recently reported, Bill C-8, the Combating Counterfeit
Products Act, received Royal Assent and became law on December
9, 2014. New civil prohibitions, amendments to the criminal offence
provisions in the Copyright Act and new criminal offence
provisions in the Trademarks Act, as well as some other
amendments, came into effect upon Royal Assent. The new border
provisions came into force on January 1, 2015.
The Bill adds new prohibitions and offences intended to assist
in addressing the problem of distribution of counterfeit products
in Canada. Specifically, the following are added:
new prohibitions to the Trademarks Act and
criminal offence provisions to the Trademarks Act;
new prohibitions providing for ex officio action by
Canadian customs authorities to the Trademarks Act and
The new criminal and civil provisions provide rights holders and
government authorities with additional tools for civil and criminal
enforcement against the distribution of counterfeit and pirated
products in the domestic market in Canada.
The new border provisions provide Canada customs authorities
with the ability to detain suspected counterfeit or pirated
products and to exchange information with rights holders in order
to confirm the counterfeit nature of the products. Unfortunately,
court proceedings by rights holders will generally be required in
order to affect seizure and forfeiture at the border. However, the
new regime is clearly an improvement since Canadian customs
authorities did not previously have a general mandate to detect and
detain counterfeit or pirated products and there were no provisions
for registering rights, or exchanging confidential customs
information with rights holders in order to confirm the counterfeit
nature of products.
An official memorandum from customs providing information on the
new border provision is awaited. However, information and a form
for making a "request for assistance" have now been
provided. The information confirms that there is no fee associated
with filing a request for assistance and that it is expected that
the enrolment process will take approximately four to six weeks.
Requests for assistance are available in respect of trademarks that
are registered in Canada and copyrights regardless of whether they
are registered in Canada. Given the condition that trademarks must
be registered and that the provisions will apply only in respect of
the goods covered by a registration, it is worthwhile for owners to
review their Canadian portfolios and ensure that the extent and
scope of their registered rights in Canada will be adequate to take
full advantage of the new provisions.
We expect that further information may be coming soon, for
instance detailing when and why a rights holder would file a bond
as security. Nonetheless, the "request for assistance"
system is now available and the form can be filed with the Canadian
Border Services Agency.
The preceding is intended as a timely update on Canadian
intellectual property and technology law. The content is
informational only and does not constitute legal or professional
advice. To obtain such advice, please communicate with our offices
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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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