As recently reported, Bill C-8, the Combating Counterfeit Products Act, received Royal Assent and became law on December 9, 2014. New civil prohibitions, amendments to the criminal offence provisions in the Copyright Act and new criminal offence provisions in the Trademarks Act, as well as some other amendments, came into effect upon Royal Assent. The new border provisions came into force on January 1, 2015.
The Bill adds new prohibitions and offences intended to assist in addressing the problem of distribution of counterfeit products in Canada. Specifically, the following are added:
- new prohibitions to the Trademarks Act and Copyright Act;
- criminal offence provisions to the Trademarks Act; and
- new prohibitions providing for ex officio action by Canadian customs authorities to the Trademarks Actand Copyright Act.
The new criminal and civil provisions provide rights holders and government authorities with additional tools for civil and criminal enforcement against the distribution of counterfeit and pirated products in the domestic market in Canada.
The new border provisions provide Canada customs authorities with the ability to detain suspected counterfeit or pirated products and to exchange information with rights holders in order to confirm the counterfeit nature of the products. Unfortunately, court proceedings by rights holders will generally be required in order to affect seizure and forfeiture at the border. However, the new regime is clearly an improvement since Canadian customs authorities did not previously have a general mandate to detect and detain counterfeit or pirated products and there were no provisions for registering rights, or exchanging confidential customs information with rights holders in order to confirm the counterfeit nature of products.
An official memorandum from customs providing information on the new border provision is awaited. However, information and a form for making a “request for assistance” have now been provided. The information confirms that there is no fee associated with filing a request for assistance and that it is expected that the enrolment process will take approximately four to six weeks. Requests for assistance are available in respect of trademarks that are registered in Canada and copyrights regardless of whether they are registered in Canada. Given the condition that trademarks must be registered and that the provisions will apply only in respect of the goods covered by a registration, it is worthwhile for owners to review their Canadian portfolios and ensure that the extent and scope of their registered rights in Canada will be adequate to take full advantage of the new provisions.
We expect that further information may be coming soon, for instance detailing when and why a rights holder would file a bond as security. Nonetheless, the “request for assistance” system is now available and the form can be filed with the Canadian Border Services Agency.