New Powers to Combat Counterfeit Products in Canada Likely Around the Corner

New Powers to Combat Counterfeit Products in Canada Likely Around the Corner

Scott Miller, October 30th, 2013

On October 28, 2013 the Government of Canada introduced bill C-8 (Combating Counterfeit Products Act) which, if passed, will significantly improve the fight against counterfeit products in Canada.  The bill also includes substantial changes to the Canadian Trade-marks Act. This bill was introduced in the previous session of Parliament but did not proceed when Parliament was prorogued. The bill has been fast tracked and it is expected that it will become law in some form.

Proposed Changes to Stop Counterfeiting:

Currently, in order to stop the importation of counterfeit goods into Canada, a right-holder must proactively obtain a Court order directing that the alleged infringing materials be detected and detained.  The process is costly and requires the right-holder have specific information regarding the importation of the alleged infringing materials. 

Under the bill both the Trade-marks Act and Copyright Act will be changed to include provisions where the Canada Boarder Services Agency (CBSA) will have increased power to combat counterfeit goods from entering Canada at markedly less cost to the right-holder.  A right-holder can file for a standing 2 year ‘Request for Assistance’ with the CBSA which would enable the CBSA to provide the right-holder with samples of suspect products.  The right-holder could then use this information to pursue new remedies under the Trade-marks Act or Copyright Act including both indictable and summary convictions with fines upward of $1,000,000 dollars and/or imprisonment of five years.

Proposed Changes to Trade-mark Law:

The proposed definition of a trade-mark is being considerably broadened to include the following: a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape (currently known as a distinguishing guise), a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign.

Under the proposed bill, trade-marks for three-dimensional shapes, a mode of packaging goods, sound, scent, taste, and texture will require evidence of distinctiveness at the date of filing.

Under current Canadian trade-mark law, registration of a proposed use trade-mark application may occur after allowance where a declaration of use is filed for the wares/services actually used. For those wares/services not used, the application dies in association with those unused wares/services.  Under the bill, an applicant can file a divisional application for those goods/services not used at the time of filing the declaration of use and claim priority to the original application.  

For more information, please contact:

Scott Miller, Partner
Voice: 613.801.1099
Email: This e-mail address is being protected from spambots. You need JavaScript enabled to view it.