Further to our
December Alert on the Combating Counterfeit Products Act, the
sections of the Act relating to Canada's new border enforcement
regime came into force on January 1, 2015.
Trademark and copyright owners can now complete and submit a
"Request for Assistance" (RFA) to the Canadian Border
Services Agency (CBSA) Intellectual Property Rights Program.
An RFA can be filed only in respect of registered trademark
rights, but both non-registered and registered copyrights are
eligible under the program. Each RFA is good for two years,
but can be renewed for subsequent terms; no reminders will be sent
when an RFA expires, so right holders need to be diligent in filing
There is no fee associated with filing an RFA, but right holders
need to be aware that by filing an RFA with the CBSA, the right
holder is accepting liability for all costs associated with
storage, handling and destruction of any goods detained as a result
of the RFA. Liability for costs begins on the day after the
notice of detention is issued, and continues until (i) the goods
are no longer detained for the purpose of enforcing trademark
rights or copyright, (ii) the right holder provides a response in
writing that advises that the goods do not contravene trademark
rights or copyright, or (iii) the right holder provides a response
in writing that court proceedings to obtain civil remedies will not
occur. If civil action is not commenced, but the importer
subsequently elects not to claim the goods within the time frame
set by regulation, a right holder is liable for costs associated
with the entire detention period, which could be several months in
the case of non-perishable goods.
The provisions also call for civil action to be commenced by the
right holder within 10 days of any notice of detention (extendable
by 10 days but limited to a total of 5 days in the case of
perishable goods), failing which the goods will be released.
It is therefore very important that right holders promptly
respond to any notification of detention received from the CBSA,
both to limit potential liability for storage and handling costs
and to ensure that any desired action is taken against the importer
within the necessary time frame.
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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