The Fight Against Counterfeit Products in Canada Just Got Easier

By Eric D. Lavers

Canada’s new Combating Counterfeit Products Act officially took effect on January 1, 2015. As part of the ongoing overhaul of Canada’s much neglected intellectual property regime, this new tool for content and brand proprietors in the fight against would-be counterfeiters should be viewed as a positive and welcome development.

At the heart of the new laws is a beefed up effort to control counterfeiting at the border. Going forward, border officials will be authorized (previously they weren’t) to voluntarily seize and detain suspected counterfeit goods without fear of repercussion. Simultaneously, the owners of Canadian copyright and trademark registrations will be able, under a “Request for Assistance” procedure, to direct the efforts of border officials by supplying them with advance information related to suspected counterfeiting of their goods.

Expanded definitions of copyright and trademark infringement will also give owners a wider array of options for enforcing their rights against others. Most significantly, in addition to the unauthorized sale, distribution or advertisement of goods or services protected by a registered trade-mark, it will also now be an infringement to manufacture, possess, import, or export protected goods for the purpose of sale or distribution. The same will hold true in certain circumstances for those activities undertaken with respect to labels and packaging for protected goods (as opposed to the goods themselves).

A final important change introduced by the Combating Counterfeit Products Act is the creation of new criminal offences of copyright and trademark infringement. These new criminal offences will cover acts of copyright and trademark infringement undertaken “knowingly” by a person – in other words, deliberately. The punishment for serious cases of criminal infringement will include a fine of up to $1 million and/or a 5 year jail sentence. Less serious offenses will carry a $25,000 fine and/or up to 6 months in prison.

If utilized effectively by brand and content owners, these new laws are sure to make a difference in the ongoing fight against counterfeiting.

More Change to Canada’s Intellectual Property Laws on the Way

By Eric D. Lavers

On October 23, 2014, as part of the fall budget bill, the federal Government quietly tabled the second in a series of substantial reform packages to Canada’s existing intellectual property regime. Following the introduction of new trademark laws earlier this year, a similar update of Canada’s industrial design and patent laws will take effect when the bill is passed.

The patent reform appears designed to harmonize Canada’s existing framework with that of its key trading partners, while at the same time making the system friendlier and more accessible to applicants. For example, a number of new provisions will simplify the process of filing and maintaining applications in effect. Unintentional abandonments of rights will also now have no impact on the validity of otherwise properly issued patents.

While not as extensive as the patent law reforms, the bill also includes many significant updates to Canada’s industrial design laws. Industrial designs offer a relatively simple and inexpensive mechanism for protecting the ornamental appearance (as opposed to function) of a product or article. Most significantly, the new laws will pave the way for Canada’s adoption of the Hague Agreement on Industrial Designs, which allows for design protection around the world through a single application.

By addressing notable deficiencies in the current system, these legislative reforms are both a welcome development and long overdue.