Two years of Canada’s Counterfeit Border Protection Measures Regime
January 27, 2017
By Tamara Céline Winegust
The “Request For Assistance” (RFA) program, part of Canada’s new border protection regime to combat the import of counterfeit products, celebrated its second anniversary on January 1. Implemented in 2015, the regime grants the Canada Border Services Agency (CBSA) power to detain suspect counterfeit goods or pirated works at the border for a short period (five days for perishable, and ten days for non-perishable goods) and to exchange information about the detained goods with the rights holder. Detention can be maintained beyond that period by the rights holder commencing litigation and notifying the CBSA.
To benefit from the program, rights holders must record their registered Canadian trademarks and copyright with CBSA. An RFA application must be filed with the CBSA. There is currently no filing fee. RFAs remain valid for two years and may be renewed. In the two years since implementation, nearly 160 RFA applications have been accepted by the CBSA, representing over 2,000 registered trademarks, and 20 copyrights. The oldest of these are now coming due for renewal.
While details on CBSA enforcement are generally confidential, the program has thus far led to over 30 seizures of suspect counterfeit goods. All but five of the rights holders notified of such seizures responded to the CBSA. The size of the seizures have ranged from a few small items to nearly 350 boxes containing over 8000 articles of counterfeit clothing.
As of January 1, 2017, ten rights holders have elected to pursue litigation, following notification of seizure of suspected counterfeits. Of those who elected to litigate, the results have been overwhelmingly positive: six rights holders settled and one obtained a Federal Court order against the importer (Two cases remain pending, and one appears to have settled after a Statement of Claim was filed). That Federal Court order was issued on consent about six weeks after the Statement of Claim was filed—less than two months after the rights holder received notice of the counterfeits imported. It provided for the goods to be destroyed by shedding or burning, and an injunction against the importer. The importer was further ordered to pay all storage, handling, and destruction charges, as well as to provide information to the CBSA about the manufacture, supply, and export of the goods. A declaration that the goods infringed the rights holder’s copyrights and trademarks, depreciated their goodwill, and constituted an unauthorised import of goods, contrary to sections 51.03(1) of the Trademarks Act and 44.01(1) of the Copyright Act was also included.
These are very encouraging advances, and no doubt instil confidence in rights holders enrolled and considering enrollment in the program; however, aspects of the RFA regime are not without controversy. For example, the Trademarks Act and Copyright Act provisions setting out the program explicitly exclude “in-transit” goods—goods that merely travel through Canada from somewhere else on their way to their final destination—from the scope of the program. Further, unlike border protection regimes in other counties, confirmed counterfeit goods will not be destroyed by the CBSA upon request—the rights holder must obtain a court order before the goods will be destroyed. Last, the CBSA is currently not allowing rights holders to train border agents directly. Instead, rights holders may provide documents showcasing markers of authentic and counterfeit goods that the CBSA itself can use to train its agents.
The Request for Assistance program has taken strides since its implementation two years ago, and rights holders are beginning to reap its benefits. Rights holders are encouraged to record their registered trademarks and copyrights by filing RFA applications and keep up to date with renewals, to ensure their brands are protected at the border.
More information from Bereskin & Parr about the RFA program can be found here:
Canada's Counterfeit Border Protection Measures - A Status Report – by Cynthia Rowden and Tamara Céline Winegust
Canada Takes the Battle on Counterfeits to its Borders – by Scott MacKendrick and Tamara Céline Winegust
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