New Combating Counterfeit Products Act Procedures Will Help Brand Owners

The Combating Counterfeit Products Act came into force on January 1, 2015.  In addition to expanding the definition of trademark infringement to include the manufacture, possession, import and export of protected goods for the purpose of sale or distribution, the Act creates new criminal offences of copyright and trademark infringement.  Penalties for knowingly infringing on copyright or trademark rights may lead to a fine of up to $1,000,000 and/or a jail sentence of up to 5 years.

The Act also creates a new procedure whereby owners of Canadian trademark registrations and copyright may file a “Request for Assistance” with Canadian Border Services, in turn enabling border officials to seize or detain goods that are suspected of being counterfeit or pirated.  Border officials will have the power to detain goods for 5 days (in the case of perishable goods), and 10 working days (for non-perishable goods).  Moreover, they will be able to disclose information to IP owners which will assist in enforcement proceedings.

The Request for Assistance procedure is outlined on the Canada Border Services Agency website (click here for more information). Below are the steps outlined by the CBSA to enroll and participate in the program:

• Step 1: Ensure that your trademark is registered with CIPO and your information is up to date.
• Step 2: Complete the Request For Assistance form and submit it to the CBSA.
• Step 3: Await confirmation of enrollment and CBSA approval letter.
• Step 4: Once approved, if suspected counterfeit goods are intercepted by the CBSA, you will be notified and given the opportunity to take commence an action. The CBSA may communicate information to you to assist in making a determination as to whether the goods are counterfeit or pirated.
• Step 5: Notify the CBSA if the goods are not counterfeit or pirated, or if you do not intent to purse a claim.

It is important to note that by filing a Request for Assistance, brand or copyright owners may become liable to the Canadian government for any costs relating to storage, handling and destruction of detained goods.  Costs are tallied from the day after the notice of detention is sent by the CBSA. Therefore, it is important to respond as soon as possible to any notices received from the CBSA in order to minimize such costs. 
The RCMP will lead any criminal investigations related to large-scale (commercial) counterfeiting and piracy.
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For further information, please contact Paula Clancy.

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