Counterfeiting has become a significant problem for brands and businesses. Counterfeit products not only compromise the reputation of affected brands but also pose health and safety risks to consumers. There is also the the economic impact on businesses that own these brands.
As no one wants to see their brand and products substantially replicated, brand owners are taking the necessary steps to stop those looking to take advantage of the name they have built. Thankfully, the Canada Border Services Agency has developed border enforcement systems that contribute to the fight against counterfeit products.
Counterfeit goods are those that are manufactured and sold in the market under one’s name and without their authorization. They are usually made of low quality and in imitation of the original product. By doing so, they infringe on the Intellectual Property rights of the owner.
Intellectual Property rights are rights that give a person exclusive ownership over their creation for a certain period. These rights can be granted through a trademark, patent, or copyright, etc.
Counterfeiting is a criminal offense and is covered under Canadian Law. This occurs through the provisions under the Trademarks Act. Section 51.01(1) of this act states that it is illegal to sell goods that are associated with a particular trademark if that sale would infringe that trademark. That is:
Another section of the act also implicates labeling and packaging activities that promote counterfeit activities.
An accused party could be convicted under this act if found to have acted with intent, even if they were unaware of the registered trademark.
Another way the law seeks to protect copyright owners is through the Copyright Act’s provisions. This contains almost similar provisions as the Trademarks Act.
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The CBSA has helped combat counterfeiting by intercepting such goods at the border. Initially, a court order had to be first obtained for them to take action. The agency has now enhanced its border control measures to allow them to detain suspected counterfeit goods while giving IP owners time to pursue legal action. There are two ways to go about this:
Available in both English and French is the Border Watch toll-free hotline that can be reached any time of the day. Right holders can use this to contact the CBSA and inform them after learning about incoming counterfeit goods that pose a threat to the people’s health or security.
Upon arrival at the border, the CBSA will inspect the goods, and if indeed found to be dangerous, they will apprehend them. They may also choose to involve several departments or organizations such as Health Canada or the Royal Canadian Mounted Police, depending on the shipment type.
When alerting the CBSA of incoming suspected shipments, the rights holder should provide the following information:
The CBSA has also enforced a system that enables right holders to record their rights with the CBSA. This is done by filing a Request for Assistance with the CBSA. One is eligible to do so only if they are a valid Canadian copyright holder registered under the Canadian Intellectual Property Office (CIFO). The RFA will outline the trademarks or copyrights that are registered under the owner.
The application for the RFA should be made prior to the importation or exportation of the counterfeit products. The RFA will give CBSA the power to detain at the border any goods that they suspect to be in breach of the holder’s trademark.
Once the goods are in custody, the CBSA can contact the appropriate right holder using the information in the RFA application. They will then share details and samples of the goods giving the owner the go-ahead to pursue legal action.
Goods suspected of being counterfeit will be held by the CBSA for up to 10 working days, with a possible extension of 5 to 10 days, from the day of detention. This period is meant to give the rights holder the allowance to inspect the goods and decide whether to take legal action.
If the owner confirms that the goods are indeed not genuine, they are free to commence legal proceedings. This must be done before the ten days are over. However, intentions to pursue legal action should be communicated within the first three days. The rest are to allow the commencement of the legal activities.
Therefore, the holder is required to submit evidence of legal proceedings to the CBSA for them to continue detaining the goods past the ten days. This will remain so until a verdict is given by the court. Otherwise, if no legal action is taken, the goods will be released.
After filing for the RFA, it will be valid for two years. It can also be extended for another two years. There are no costs involved in filing for an RFA. However, the rights owner will be held responsible for any expenses related to storage, handling, and even destruction of the detained goods. To avoid unnecessary costs, you should promptly let CBSA know if you choose not to pursue legal action or if the goods are not counterfeit.
Among other border control measures, the CBSA has been instrumental in ensuring that counterfeit products are not let in or out of Canada. Their efforts have been made even more efficient with the introduction of the hotline and the RFA application. This protects not only the health and safety of the public but also owner’s brands. For more information, or for a free quote, please contact us.