The provisions relating to the customs "Request for Assistance" procedure in Bill C-8, the Combating Counterfeit Products Act, came into force on January 1, 2015. Publication in the Canada Gazette of the proclamation into force occurred only the day before, on December 31, 2014. The Bill had received Royal Assent three weeks earlier on December 9, 2014, bringing some of Bill C-8’s provisions, including an expanded definition for trademark infringement and new criminal sanctions in both the Copyright Act and Trade-marks Act, into force at that time.
The "Request for Assistance" procedure provides owners of Canadian copyrights and Canadian trademark registrations with an important and new option for addressing the import of counterfeit goods. The procedure allows the owner of a Canadian trademark registration or Canadian copyright to file a request for assistance from customs authorities – the Canada Border Services Agency – to take action against pirated copyright works and counterfeit trademark goods before such works or goods enter the Canadian market.
Since a trademark registration is a condition precedent to request “assistance” from customs officers, trademark owners should review their portfolios to ensure that steps are being taken to arm themselves with registrations, as soon as possible, especially for brands that could be potential counterfeit targets. Trademark owners should also ensure that the list of goods covered by their trademarks registrations includes goods likely to be counterfeited, and if not, should consider filing for an updated list of goods to take advantage of the new procedure and thereby combat counterfeiters.
Other provisions proclaimed into force as of January 1, 2015 include:
- The definitional sections for the Copyright Act and Trade-marks Act relevant to the request for assistance program; and
- Amendments to the Customs Act enabling information sharing between the CBSA and copyright and registered trade-mark owners, to compliment the new border measures and request for assistance program.
The Explanatory Note attached to the proclamation order suggests that the January 1, 2015 date was set as part of, and to allow Canada to, implement its border enforcement obligations within the intellectual property chapter of the Canada-Korea Free Trade Agreement (CKFTA), and will allow Canada to “comply with the intellectual property enforcement obligations of current and future trade agreements”.
Provisions expanding the definition of “infringement” in section 20 the Trade-marks Act and adding criminal provisions relating to infringement of copyright and trade-mark rights also came into force upon the Bill receiving Royal Assent on December 9, 2014. The new expanded definition of “infringement” for trade-marks includes infringement caused by:
- The sale, distribution or advertisement of goods or services that are confusing with a trademark or trade name;
- The manufacture, causing to be manufactured, possession, importation, exportation or attempt to export of goods in association with a confusing trademark or trade name, for the purposes of sale or distribution;
- The sale, offering for sale or distribution of any label or packaging bearing a trademark or trade name that the person knows or ought to know is not associated with the goods or services of the owner of the registered trademark and such sale, distribution, or advertisement would be in association with a confusing trademark or trade name; and
- The manufacturing, causing to be manufactured, possessing, importing, exporting or attempting to export any label or packaging bearing a trademark or trade name for the purposes of its sale, or distribution or for the purposes of the sale, distribution or advertisement of the goods and services with the trademark or trade name if the person knows or ought to know is not associated with the goods or services of the owner of the registered trademark and such sale, distribution, or advertisement would be in association with a confusing trademark or trade name.
The new criminal offences under the Trade-marks Act relate to registered trade-marks and incorporate the expanded “infringement” definition and allow courts to order the destruction or disposal of infringing goods, equipment and materials upon a finding of guilt. The expanded criminal offences under the Copyright Act include possession for sale, rental, distribution for trade, or exhibition to the public by way of trade of an infringing copy of a work; the import into Canada for sale or rental, or an infringing copy of a work; and the export or attempt to export for sale or rental, of an infringing copy of a work. Penalties for offenses under both acts include a fine of up to $1 million and/or up to five years in prison for an indictment, and a $25,000 fine and/or up to six months in prison for a summary offence.