Bill C-8, the Combating Counterfeit Products Act (the “CCPA”), received Royal Assent on December 9th, 2014. The CCPA creates new civil and criminal remedies and border enforcement measures to curtail commercial activity involving infringing copies and counterfeit trademarked goods. While many of the CCPA’s provisions will not be implemented until further order of the Governor in Council, the provisions that have come into force will provide some substantive remedies to deal with counterfeiters.
Under the CCPA’s amendments to the Copyright Act, the possession or exportation of infringing copies can now expose offenders to significant fines and imprisonment. These provisions are in addition to the existing prohibitions against selling, renting, distributing and importing such goods. The CCPA also amends the secondary infringement regime by deeming the exportation of counterfeit copyrighted goods to be infringement where a person knows, or should have known, that the goods were made without the consent of the copyright owner.
The CCPA will make it an offence under the Trade-marks Act to knowingly sell counterfeit goods on a commercial scale and to knowingly manufacture, import or export such goods. Similarly, it will be a criminal offence to knowingly sell or advertise services in association with an infringing trademark. The manufacturing or trafficking of labels or packaging bearing an infringing trademark also becomes an offence. Each of these new provisions makes offenders liable to significant fines and imprisonment.
Where a court finds that a person is guilty of these new offences, it may order that any related goods, labels, packaging, advertising materials or equipment be destroyed or otherwise disposed of. This is similar to the existing power to grant relief (including the destruction of offending goods) under s. 53.2 of the Trade-marks Act. With regard to both powers, the CCPA now requires that notice be given to any person who has an interest or right to items subject to destruction (unless the court is of the opinion that the interests of justice do not require that notice be given).
Aside from providing substantive remedies, the provisions of the CCPA now in force will also amend a variety of definitions in the Trade-marks Act, including repealing the definitions of “package” and “wares”. The CCPA also replaces the former term “wares” with the new term “goods” throughout the Trade-marks Act. Finally, there will also be some corresponding amendments to the Criminal Code and the Olympic and Paralympics Marks Act.
Many of the CCPA’s most important provisions will not be implemented until further order of the Governor in Council. Once these are in force, officers with the Canadian Border Services Agency (“CBSA”) will be given authority to detain suspect commercial shipments and communicate with copyright and trademark owners concerning those goods and their ultimate disposition. Legitimate rights holders will also be entitled to lodge “requests for assistance” with the CBSA in order to provide law enforcement with the notice necessary to be able to initiate effective counterfeit seizure protocols before counterfeit products enter the marketplace. These additional provisions will also expand the type of trademarks that can be registered (to include scents, textures and more) and modernize the trademark application and opposition process.