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 Canada has long faced criticism for its outdated and ineffective anti-counterfeiting laws, and the CCPA is viewed by many as being long overdue.
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 market.
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 copies/goods
- 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 detained copies/goods.
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 Agency.
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.