After years of calls for reform from intellectual property
rights owners, the Canadian government has enacted new legislation
in an effort to fight counterfeiters acting on a commercial scale.
Bill C-8, the Combating Counterfeit Products Act (CCPA)
received royal assent on December 9, 2014. Some provisions of the
CCPA came into force at that time, including new criminal and civil
causes of action under the Copyright Act and
Trade-marks Act, as well as an expanded definition for
trade-mark infringement. Other provisions of the CCPA, including
those relating to border enforcement measures, came into force on
January 1, 2015.
The Royal Canadian Mounted Police (RCMP) estimate that the
annual overall cost to the Canadian economy from counterfeiting and
piracy is in the billions of dollars. Moreover, the problem seems
to be getting worse: the retail value of counterfeit goods seized
by the RCMP has increased by 500 per cent in the last decade.
Canada has long faced criticism for its outdated and ineffective
anti-counterfeiting laws, and the CCPA is viewed by many as being
The CCPA aims to combat two types of intellectual property
infringement: copyright piracy and trade-mark counterfeiting. The
CCPA amends both the Copyright Act and the Trade-marks
Act (among others), providing new remedial measures to
strengthen the enforcement of intellectual property rights under
these statutes. The goal is to enable rights holders to take action
against counterfeit goods before such goods enter the Canadian
On January 1, 2015, sections 2, 5, 6, 43, 44 and 60, as well as
subsection 7(6) of the CCPA (the New Provisions) came into force.
The key impacts of the New Provisions on each of the Copyright
Act and the Trade-marks Act are as follows:
Creation of a new border enforcement regime that includes new
prohibitions on importation and exportation (without consent) of a
copyrighted work or goods bearing a registered trade-mark,
regardless of their country of origin
Creation of a Request for Assistance (RFA) procedure (discussed
in more detail below)
Canadian customs authorities have the ability (upon request or
on their own initiative) to detain suspected infringing
Measures relating to detained copies/goods (including detention
costs), information sharing between customs officers and rights
owners to confirm the counterfeit nature of the products,
detention-related liability and powers of the court relating to
The RFA system allows owners of Canadian copyright or trade-mark
registrations to seek assistance from the Canada Border Services
Agency to support civil enforcement of their rights and detain
suspected counterfeit and pirated goods at the border.
In particular, the RFA procedure will permit customs officers to
obtain information regarding allegedly infringing goods; provide
the rights owner with a sample of such goods; and provide the
rights owner with information regarding the importation of such
goods, without identifying the parties involved. There is no fee
for filing an RFA application and the enrolment process is expected
to take approximately four to six weeks. An RFA application will
remain valid for two years, at which point the rights owner will
need to renew their enrolment with the Canada Border Services
In order to take advantage of the RFA procedure, trade-mark
owners must have their trade-marks registered. As such, rights
owners should review their portfolios to ensure they obtain
registrations for their core trade-marks and others that could be
targeted by counterfeiters.
The New Provisions were proclaimed quickly, only one day after
publication in the Canada Gazette and three weeks after
the CCPA received royal assent. The timing of the proclamation
appears to be linked to the Canada-Korea Free Trade Agreement. The
Government of Canada announced that the coming into force of the
New Provisions would allow Canada to implement and uphold its
border enforcement obligations under the Canada-Korea Free Trade
Agreement by January 1, 2015.
Apart from the border enforcement measures, the CCPA also
creates new civil causes of action with respect to activities that
sustain commercial activity and pirated copies and counterfeit
trade-marked goods; creates new criminal offences for trade-mark
counterfeiting that are analogous to existing offences in the
Copyright Act; and creates new criminal offences
prohibiting the possession or export of pirated copies or
counterfeit trade-marked goods, packaging or labels.
The CCPA was originally introduced in March 2013 as Bill C-56
and then reintroduced in October 2013 as Bill C-8.
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