Counterfeit Enforcement at the Border

The Combating Counterfeit Products Act (CCPA) implemented the border enforcement regime. It provides the Canada Border Services Agency (CBSA) with the authority to act against the commercial movement of counterfeit goods at the border and adds new criminal offences relating to counterfeit goods. It also allows rights holders to file a request for assistance with the CBSA, in turn, enabling border officers to share information with them regarding suspect shipments.

The regime is an improvement over the previous statutory provisions but requires an investment of time and resources in proceedings in the courts and triggers potential exposure for the storage and handling charges for the detained goods—and, if applicable, for the charges for destroying them.

The Prohibition on Importation or Exportation

The Trademarks Act has been amended to add a prohibition relating to importing or exporting works of goods. Similar changes under the Copyright Act extend to works or other subject matter protected by copyright. The prohibition relates to requests for assistance of customs officers in pursuing specific statutory remedies regarding goods imported or exported in contravention of section 51.03 of the Trade-marks Act.

Under the Act as amended goods shall not be imported or exported if the goods or their labels or packaging bear—without the consent of the owner of a registered trademark for such goods—a trademark that is identical to, or that cannot be distinguished in its essential aspects from, that registered trademark.

The prohibition does not apply if

(a) the trademark was applied with the consent of the owner of the trademark in the country where it was applied;

(b) the sale or distribution of the goods or, in the case where the trademark is on the goods’ labels or packaging, of the goods in association with the labels or packaging would not be contrary to the Act; or

(c) the goods are imported or exported by an individual in their possession or baggage and the circumstances, including the number of goods, indicate that the goods are intended only for their personal use.

In addition, a wine or spirit or a specified agricultural product or food shall not be imported or exported if it or its label or packaging bears a protected geographical indication and the item

(a) does not originate in the territory indicated by the indication; or

(b) originates in the territory indicated by the indication, but was not produced or manufactured in accordance with the law applicable to that territory.

This prohibition does not apply

(a) the sale or distribution of the wine or spirit or the agricultural product or food - or, if the label or packaging of that wine, spirit or agricultural product or food bears a protected geographical indication and the sale or distribution of that wine, spirit or agricultural product or food in association with that label or packaging — would not be contrary to the Trademarks Act; or

(b) the wine or spirit or the agricultural product or food is imported or exported by an individual in their possession or baggage and the circumstances, including the number of such goods, indicate that they are intended only for the individual’s personal use. 

The contravention of the above prohibitions does not give rise to a remedy under section 53.2 in an action asserting an act has been done contrary to the Act.

More to follow on this subject next month.

If you have questions, please contact me at mckeown@gsnh.com 

John McKeown

Goldman Sloan Nash & Haber LLP

480 University Avenue, Suite 1700 

Toronto, Ontario MSG 1V2

Direct Line: (416) 597-3371

Fax: (416) 597-3370

This article is of general nature and is not intended to provide specific legal advice as individual situations will differ. Specialist advice should be sought about your specific circumstances.