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Trademark and Copyright Owners Can Formally Ask Canada Border Services To Restrict Importation of Counterfeit Goods

The owner of a Canadian trademark registration can now file a Request for Assistance (RFA) application with the Canada Border Services Agency (CBSA), as can the owner of a registered or unregistered copyright. The objective of the new program — the result of amendments to the Copyright Act (“CA”) and Trademarks Act (“TMA”) effected by the Combating Counterfeit Products Act (“CCPA”) — is to restrict the importation of counterfeit goods into Canada. In particular, CBSA officials who encounter suspected counterfeit goods during their inspections are expected to reach out to the owner of the potentially infringed intellectual property rights so that the IP owner may facilitate the detention of the counterfeit goods and commence court proceedings for infringement.

Recently-enacted Section 51.03 TMA contains a new prohibition on the importation and exportation of goods, labels and packaging that bear?a trademark that is “identical to, or that cannot be distinguished in its essential aspects from” a registered trademark. The prohibition in Section 44.01 CA is broader in that it extends to all infringing copies. Because these prohibitions are restricted to goods made without the consent of the IP owner in the country where they were made, they do not apply to grey goods (that is, goods made outside Canada by the IP owner or its licensee, but not intended for sale in Canada). Also excluded are goods imported for personal use and goods in transit.

CBSA officials are to provide an IP owner who submits an RFA application with a sample of the detained goods and additional information such as the following, with a view to allowing the IP owner to determine whether further action is required: (1) name and address of the goods’ owner, importer, exporter and consignee and of the person who made them; (2) quantity of imported goods; (3) countries in which the goods were made and through which they passed in transit; and (4) day on which the goods were imported. The IP owner may be permitted to inspect the detained goods.

The IP owner must commence court proceedings for infringement within 10 days after the suspected counterfeit goods were first detained (5 days if the goods are perishable, unless extended by 10 days at the request of the IP owner); otherwise, CBSA may release the goods. The IP owner is liable for all of the costs of storage, handling and destruction of detained goods starting on the day after CBSA provides the IP owner with notice of the detention. This is not the only financial exposure the IP owner faces; if the infringement proceedings are unsuccessful, the IP owner may be ordered to reimburse the importer or owner of the detained goods for damages they suffer as a result of the inappropriate detention.

The RFA application — and instructions on how to complete it — may be accessed at www.cbsa-asfc.gc.ca/publications/forms-formulaires/bsf738-eng.html. The following information must be provided in the RFA application:

  • Name and address of the IP owner.
  • Contact particulars for the IP owner’s representative for service.
  • Details of trademark registrations and copyrights and, where applicable, copyright registrations; multiple IP rights may be included in a single RFA application.
  • Details of the IP owner’s bond that is included with the application; if no bond is included, CBSA may request one.
  • Name and description of the authentic goods (e.g. product features, packaging and trademark location).
  • Known authorized importers permitted to import the IP owner’s products.
  • Known distributors of illegitimate or suspect goods.

There is no filing fee associated with an RFA application. The application must be renewed every 2 years. An IP owner who has filed an RFA application must advise CBSA if the IP rights covered by the application change (e.g. if a registration is cancelled or its ownership is transferred). Information in an RFA application may be disclosed to the RCMP and Health Canada for the purposes of enforcing any Canadian legislation.

Prior to enactment of the CCPA, CBSA was authorized to detain infringing goods at the border, but that was done on an ad hoc basis, and there was no formal procedure for IP owners to record their rights with CBSA. CBSA’s previous practice requiring IP owners to provide CBSA with details of specific incoming shipments of infringing goods rendered the old procedure unworkable as a practical manner. It is incumbent on IP owners to exploit the new system by filing RFA applications and promptly commencing infringement proceedings when they believe counterfeit goods have been detained by CBSA. CBSA’s commitment to the new system can be tested only if IP owners engage by filing RFA applications.

This article is for information purposes only and does not constitute legal or professional advice.