Bill C-8, the Combating Counterfeit Products Act passed third reading and received Royal Assent on December 9, 2014. Amendments to the Criminal Offence provisions in the Copyright Act and new offence provisions in the Trademarks Act, as well as some other minor amendments came into effect upon Royal Assent and are now in force. The remaining provisions will come into force on a day or days to be fixed by order of the governor-in-council.

The Bill, viewed by many as being overdue, adds new prohibitions and offences intended to assist in addressing the problem of distribution of counterfeit products in Canada. Specifically, the Bill adds:

  • new prohibitions to the Trademarks Act and Copyright Act;
  • criminal offence provisions to the Trademarks Act; and
  • provisions providing for ex officio action by customs authorities in Canada to the Trademarks Act andCopyright Act.

The Bill was initially introduced in March of 2013 and, after a somewhat drawn out process including reintroduction and amendment, finally received Royal Assent on December 9, 2014. Our previous analysis regarding the Bill was set out in our March 25, 2013 IP Update, but we note that the discussion regarding “TMA amendments” in the article is primarily in respect of provisions that are no longer to be implemented through Bill C-8.

The current “word on the street” is that the intent of the government is to proclaim the new customs provisions into force early in 2015. While not yet formally confirmed, it has been indicated informally that an Internet website is ready for launch and rights holders may be able to register their trademarks and copyrights (file a “request for assistance”) with customs early in 2015. Further, the indication is that there may be no fee associated with making a request for assistance under the new provisions. 

It also appears that the intent of the government is to proceed without consultation on regulations concerning the new customs regime and, instead, to review the regime in two or three years. We will be analyzing the details of the customs regime as soon as they are available and will provide recommendations to clients regarding making requests for assistance and otherwise taking advantage of the new anti-counterfeiting provisions once they are in force. In the meantime, we will provide updates, including outlining details of the new customs regime, as soon as those details become available.