At long last, brand owners have a broader range of enforcement options in Canada. On Dec. 9, 2014, the Combating Counterfeit Products Act ("CCPA") received royal assent and is now law. The Act strengthens the intellectual property rights of brand owners by expanding the definition of infringement, adding new offences and criminal sanctions to both the Trade-marks Act and the Copyright Act in an effort to thwart counterfeit products crossing the border.
Offences under the Copyright Act
Previous to the CCPA, the offences under the Copyright Act were limited to instances of sale, rental, making for sale or rental, or distribution of infringing copies of work or other subject-matter in which copyright subsists. The new offences now comprise a number of new infringing activities including:
- possession, for sale, rental, distribution for the purpose of trade or exhibition in public by way of trade, of an infringing copy of a work or other subject-matter in which copyright subsists
- importing, exporting, or attempting to export, for sale or rental of a work or other subject-matter in which copyright subsists
Offences under the Trade-marks Act
While the offences under the Copyright Act have been expanded by the CCPA, the addition of offences to the Trade-marks Act is completely new. The definition of infringement has also been expanded in line with the new offences to encompass not only goods and services in association with a confusing trade-mark, but also labels and packaging devoid of any product. These new infringing activities capture a broader range of activities beyond the sale, distribution and advertising of goods and services to include:
- manufacturing, causing to be manufactured, possessing, importing, exporting or attempting to export goods in association with a confusing trade-mark or trade-name;
- selling, offering for sale or distributing labels or packaging bearing a trade-mark or trade-name
- manufacturing, causing to be manufactured, possessing, importing, exporting or attempting to export any label or packaging bearing a trade-mark or trade-name for either sale or distribution or for the purpose of the sale, distribution or advertisement of goods or services in association with it
In order to establish infringement for activities relating to labels and packaging, the infringer must also have known the labels and packaging were to be associated with goods or services unrelated to the owner of the registered mark, and that the infringing activity would be confusing with a trade-mark or trade-name.
Where infringement has been established, an individual can be found liable of a criminal offence to infringe a registered trademark in the course of
- selling, offering to sell, or distributing goods, labels or packages on a commercial scale;
- manufacturing, causing to be manufactured, possessing, importing, exporting or attempting to export goods, labels or packaging on a commercial scale; and
- selling or advertising services
To establish any of the above offences related to goods and services, the infringing trademark must be identical or indistinguishable in its essential aspects to a registered mark and the mark owner must not have consented to the activity in question. For labels and packaging, the infringing material must additionally be intended to be associated with goods or services for which that registered trade-mark are registered.
Under both the Copyright Act and the Trade-marks Act, those found guilty of committing any of the new offences will be liable to either a fine, imprisonment or both depending on the nature of the proceeding. For conviction on indictment, an offender will be liable to a fine not more than $1,000,000 or to imprisonment for a term of not more than five years or to both. On summary conviction, an offender will be liable to a fine of not more than $25,000 or to imprisonment for a term of not more than six months or to both.
New Border Provisions
Brand owners will now have the opportunity to request the assistance of the Canadian Border Services Agency (CBSA) in pursuing remedies under either the Trade-marks Act or Copyright Act with regards to the importation or exportation of infringing materials. A Request for Assistance ("RFA") is filed with the CBSA detailing the specifics of either the registered trademark or copyrighted material which is in turn consulted by customs officers in identifying potentially infringing goods. An RFA is valid for 2 years but can be renewed.
If an officer has detained goods which he or she has reasonable grounds to suspect are infringing of either a registered trademark or copyrighted material for which an RFA has been accepted, the brand owner will be provided with a sample as well as information about the infringing material (such as description of the goods, quantity, country of origin, etc.) to be used to pursue remedies under either the Copyright Act or Trade-marks Act respectively. Once the samples are sent, a customs officer will not detain the potentially infringing material for more than 10 days initially for non-perishables or 5 days if perishable (the "Detainment Period"). An additional 10 days may be requested for non-perishables but not for perishable items.
If proceedings under either Copyright Act or Trade-marks Act are commenced by the brand owner before the potentially infringing materials are released, customs officers will continue to detain the materials until either the proceeding is concluded, the court directs the release, or the copyright owner consents to release. The brand owner is liable for all costs associated with storage and handling as well as any charges for destroying the potentially infringing material while they remain detained unless no action is taken and the materials are released within the Detainment Period. Furthermore, the brand owner can be liable for any losses, costs or prejudice suffered by the importer/exporter due to the detention of the goods.
What Should Brand Owners Be Doing Now?
A careful review of brand owners' Canadian trademark portfolios is in order, since most of the new brand enforcement mechanisms require trademark registrations. It is thus important that brand owners review their assets to ensure that the relevant trademark protection is obtained in Canada, both in terms of the marks which are protected, and the scope of the registrations.
It is also now possible to file RFA forms with the Canada Border Services Agency. There are currently no costs associated with filing an RFA, though the costs of storage of any seized goods will be carried by brand owners.
With the enactment of the CCPA, a new era of brand enforcement has dawned in Canada, which is excellent news for brand owners selling into this market.
A copy of the Combating Counterfeit Products Act can be found here.