After a somewhat lengthy and delayed history, having initially been introduced in March 2013 as Bill C-56 and then reintroduced as Bill C-8 in October 2013, Canada's Combating Counterfeit Products Act finally passed and received Royal Assent on December 9, 2014.

The Act, which makes amendments to both the Trade-marks Act and Copyright Act, provides for some long overdue changes to Canada's civil and criminal provisions, which will hopefully assist brand and copyright owners in combating the importation and distribution of counterfeit goods in Canada. While perhaps not as strong as many in the anti-counterfeiting world would have liked to see, the provisions in the Act make some very welcome changes to Canada's prior enforcement regime, which had in the past been compared to and placed on the same level as the systems in place for counterfeiting hotbeds such as China and Russia.

Some key changes include:

  • Expanded civil causes of action:

    • new prohibitions against possession, importation and exportation of goods bearing counterfeit trademarks
    • new prohibitions against dealing in labels or packaging bearing counterfeit trademarks
    • expansion of copyright infringement to include export of pirated copies for certain commercial purposes
  • Expanded criminal causes of action:

    • criminal offences have been added to the Trade-marks Act, which eliminates prior provincial/federal jurisdictional concerns between trademark and copyright offences
    • new provisions make it an offence to sell, offer for sale, distribute on a commercial scale, or to manufacture, possess, import or export for the purpose of sale or distribution, any goods, labels or packaging, or to sell or advertise services, in association with a trademark, if that sale or distribution is or would be contrary to the civil prohibitions set out in the Trade-marks Act (i.e. infringing the trademark owner's exclusive rights on goods specified in a trademark registration or likely to cause confusion), and the offender has knowledge that (i) the trademark is identical to, or cannot be distinguished in its essential aspects from, a trademark registered for such goods and (ii) the owner of the trademark has not consented to the sale, offering for sale or distribution
  • Explicit border measures

    • new specific prohibitions in both the Trade-marks Act and Copyright Act against (i) importation or exportation of unauthorized goods or labels/packaging bearing a trademark identical to, or that cannot be distinguished in its essential aspects from, a trademark registered for such goods; and (ii) importation or exportation of copies of works made without consent of the owner of copyright in the country where they were made
    • ability for right holders to make a "request for assistance", which is expected to be a right recordal regime where trademark and copyright holders can register their trademarks and copyrights and request that customs detain any unauthorized goods bearing such trademark or copyright
    • the Canadian Customs and Border Services Agency (CBSA) will be allowed to forward samples and information to right holders about goods detained for the purposes of confirming that such goods are unauthorized, along with information about the identity of the importer if a request for assistance has been filed

Most of the expanded civil prohibitions and new criminal offences will come into force immediately, while other provisions, including the new customs regime, will not come into force until further order of the Governor in Council, and presumably not until corresponding Regulations to govern such regime are put into place.

Only time will tell if these new provisions will in fact adequately assist right holders and law enforcement in preventing the increasing distribution of counterfeit and pirated goods in Canada. While a vast improvement over Canada's prior border measures (which required a Court Order and essentially full knowledge of the particulars of incoming counterfeit or pirated goods to obtain), the proposed border regime in particular has fallen under criticism by those working in the anti-counterfeiting field, including with respect to the following:

  • the scope of the exceptions for "personal use" and goods in transit to other countries, which are expected to make enforcement of the importation and exportation prohibitions difficult in many circumstances and fail to address the global reality that counterfeit goods are in fact transshipped through Canada into other jurisdictions, notably the United States
  • the lack of provisions providing for ex officio seizure, forfeiture or disposition of counterfeit and pirated goods by the CBSA itself
  • the limitations placed on use of information about the individuals or entities importing counterfeit or pirated goods, which will make it difficult for right holders to pursue infringers, particularly for those who have not filed a request for assistance and to whom it appears the CBSA will therefore not be able to release any identity information
  • the numerous and somewhat onerous obligations placed on the right-holder (as the victim of crime), including the requirement to commence civil proceedings to ensure continued detention of goods and the requirement to bear all associated storage and destruction costs and potentially even posting of security upon filing the request for assistance

Much will depend on the nature of the Regulations that will need to be enacted to govern the new border measures, along with the resources that will be dedicated to pursuing and enforcing the new border and criminal provisions. It is hoped that the Regulations will address some of the ongoing concerns relating to the new border regime, and that the government, having passed this legislation in support of the fight against counterfeit and pirated goods, will ensure that appropriate resources are put in place to ensure that the new provisions have a real and meaningful effect on combating the counterfeit problem in Canada.

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