The distribution and sale of counterfeit goods in Canada, such as counterfeit banknotes, pharmaceutical products and luxury items, has been a growing threat impacting Canadian businesses and consumers. This prompted the introduction of Bill C-8, the Combating Counterfeit Products Act  (the “Act”), which received Royal Assent on December 9, 2014. The Act aims to reduce the sale of counterfeit goods and bring Canada in line with international standards in trying to stop counterfeit products from crossing international borders.

Our expectation is that new customs provisions will be in force in late 2016.  For the time being, the Canada Border Services Agency (CBSA) has established a process for intellectual property owners to record their registered marks and registered copyrights, that have been registered with the Canadian Intellectual Property Office (as well as unregistered copyrights, although it is recommended that the copyright be registered) by filing a Request for Assistance (“RFA”) with the CBSA. Once this is done, the CBSA can temporarily detain suspected counterfeit goods and share information with the intellectual property owner, which can seek to extend the detention by bringing a court action.

At present, there is a degree of uncertainty as to the extent of the fees, if any, the CBSA will charge for acting on a RFA  and what costs will be incurred to store or destroy counterfeit goods. Our expectation is that liability for such costs will commence from the date of notification of an interception and will last until the date of release of the goods, including where the goods are assessed as genuine unless the detainment ends before the expiry of the initial prescribed detainment period (10 working days for non-perishable goods, five days for perishable goods).

Despite the uncertainty over the costs associated with a RFA, Canada is moving in the right direction. As a proactive measure, intellectual property owners should review their Canadian trademark and copyright portfolios to ensure that their intellectual property rights are properly protected in the event they wish to file a RFA.