The provisions relating to the customs "Request for
Assistance" procedure in Bill C-8, the Combating
Counterfeit Products Act, came into force on January 1, 2015.
Publication in the Canada Gazette of the proclamation into force
occurred only the day before, on December 31, 2014. The Bill had
received Royal Assent three weeks earlier on December 9, 2014,
bringing some of Bill C-8's provisions, including an expanded
definition for trademark infringement and new criminal sanctions in
both the Copyright Act and Trade-marks Act, into
force at that time.
The "Request for
Assistance" procedure provides 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 – the Canada Border Services Agency – to
take action against pirated copyright works and counterfeit
trademark goods before such works or goods enter the Canadian
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 of goods to take advantage of the new
procedure and thereby combat counterfeiters.
Other provisions proclaimed into
force as of January 1, 2015 include:
The definitional sections for the Copyright Act and
Trade-marks Act relevant to the request for assistance
Amendments to the Customs Act enabling information
sharing between the CBSA and copyright and registered trade-mark
owners, to compliment the new border measures and request for
The Explanatory Note attached to the proclamation order suggests
that the January 1, 2015 date was set as part of, and to allow
Canada to, implement its border enforcement obligations within the
intellectual property chapter of the Canada-Korea Free Trade
Agreement (CKFTA), and will allow Canada to "comply with the
intellectual property enforcement obligations of current and future
Provisions expanding the definition of "infringement"
in section 20 the Trade-marks Act and adding criminal
provisions relating to infringement of copyright and trade-mark
rights also came into force upon the Bill receiving Royal Assent on
December 9, 2014. The new expanded definition of
"infringement" for trade-marks includes infringement
The sale, distribution or advertisement of goods or services
that are confusing with a trademark or trade name;
The manufacture, causing to be manufactured, possession,
importation, exportation or attempt to export of goods in
association with a confusing trademark or trade name, for the
purposes of sale or distribution;
The sale, offering for sale or distribution of any label or
packaging bearing a trademark or trade name that the person knows
or ought to know is not associated with the goods or services of
the owner of the registered trademark and such sale, distribution,
or advertisement would be in association with a confusing trademark
or trade name; and
The manufacturing, causing to be manufactured, possessing,
importing, exporting or attempting to export any label or packaging
bearing a trademark or trade name for the purposes of its sale, or
distribution or for the purposes of the sale, distribution or
advertisement of the goods and services with the trademark or trade
name if the person knows or ought to know is not associated with
the goods or services of the owner of the registered trademark and
such sale, distribution, or advertisement would be in association
with a confusing trademark or trade name.
The new criminal offences under the Trade-marks Act
relate to registered trade-marks and incorporate the expanded
"infringement" definition and allow courts to order the
destruction or disposal of infringing goods, equipment and
materials upon a finding of guilt. The expanded criminal offences
under the Copyright Act include possession for sale,
rental, distribution for trade, or exhibition to the public by way
of trade of an infringing copy of a work; the import into Canada
for sale or rental, or an infringing copy of a work; and the export
or attempt to export for sale or rental, of an infringing copy of a
work. Penalties for offenses under both acts include a fine of up
to $1 million and/or up to five years in prison for an indictment,
and a $25,000 fine and/or up to six months in prison for a summary
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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