Counterfeit Enforcement at the Border - Part 2

Introduction: Border Enforcement under the CCPA

We are continuing our discussion of the Combating Counterfeit Products Act (CCPA) which has implemented the border enforcement regime.

As previously noted, the new regime is a great improvement over the previous statutory provisions but requires a substantial 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.

Request for Assistance: Eligibility and Process

The starting point for taking advantage of the regime is the Request for assistance.The owner of a registered trademark may file with the Minister, in form specified by the Minister, a request for assistance in pursuing remedies under the Act with respect to goods imported or exported in contravention of the prohibition on importation or exportation described in our November post. A form relating to a request for assistance is quite simple. The form and the process are only available to the owner of a registered trademark.

Term and Extensions

A request for assistance is valid for a period of two years beginning on the day on which it is accepted by the Minister. The Minister may, at the request of the owner of the registered trademark, extend the period for two years, and may do so more than once.

Security Requirements for Storage and Handling Charges

The Minister may, as a condition of accepting a request for assistance or extending a request’s period of validity, require that the trademark owner furnish security, in an amount and form fixed by the Minister, for storage and handling charges related to the detained goods.

Obligations of Trademark OwnersThe trademark owner is required to inform the Minister in writing, as soon as practicable, of any changes to the subsistence, validity, or ownership of the registered trademark that is the subject of the request for assistance.

Limitations of the Request for Assistance

It is CBSA’s position that a request for assistance cannot be applied retrospectively to items that have already been imported. They also note that filing a request for assistance or the decision to accept it does not constitute recognition of the existence or validity of any intellectual property rights by the CBSA or the Government of Canada. Determinations of intellectual property rights are made in courts or by other relevant tribunals, in the context of civil actions or criminal prosecutions.

Trusted Importers and Risk of Detention

The current form of the request for assistance requires that the trademark owner list known trusted importers permitted to bring items into Canada, if applicable. The failure to provide this information may result in inappropriate detention of items and delays.

CBSA Procedures when Suspected Counterfeit Goods are Found

When a CBSA officer encounters suspected counterfeit and/or pirated goods during an examination of commercial goods, and the rights holder has filed a request for assistance, the rights holder will be contacted via email and provided with information so they can determine if they wish to pursue a remedy under the Act.

Rights Holder’s Decision Timeline

The rights holder has (3) three business days to advise the CBSA, via email, if they wish to pursue a remedy or not. If the rights holder does not notify the CBSA within (3) three business days or they notify the CBSA that they will not be pursuing remedy under the Act, so long as the suspected counterfeit and/or pirated goods meet all other import requirements, they will be released.

Notice of Detention and Court Proceedings

If the rights holder notifies the CBSA that they will be pursuing a remedy under the Act, they will be issued a “Rights Holders Notice of Detention for Goods Suspected of Contravening IPR” via email. The suspected counterfeit and/or pirated goods will continue to be detained to enable the rights holder time to commence proceedings in court and the importer will be advised that the CBSA has detained their goods.

Information Sharing and Inspection of Goods

A customs officer who is detaining goods under the Customs Act may, in the officer’s discretion, obtain information about whether importation or exportation is prohibited, provide the trademark owner with a sample of the goods and with any information about the goods that the customs officer reasonably believes does not directly or indirectly identify any person.After a sample or information has been provided to the rights owner, a customs officer may, in the officer’s discretion, give the owner, importer, exporter, and consignee of the detained goods and the trademark owner an opportunity to inspect them.

Practical Considerations for Filing Requests

There is no reason not to file a request for assistance, but additional consideration should be given to detaining goods which will have to be assessed on a case-by-case basis.

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