Background
The Canadian Government has introduced Bill C-56 to amend the Copyright Act and the Trade-marks Act to strengthen the enforcement of copyright and trade mark rights and to curtail commercial activity involving infringing copies and counterfeit goods.
The Bill also appears to satisfy Canada’s obligations under the Anti-Counterfeiting Trade Agreement (ACTA) and will allow Canada to ratify ACTA. Canada signed the ACTA in the fall of 2011 and indicated at that time it would introduce the legislation necessary to implement the ACTA in Canada. The existing provisions of the Copyright Act and the Trade-marks Act have been ineffective in preventing the importation and export of counterfeit goods at the border.
New Civil Causes of Action and Criminal Offences
The starting point of the Bill is the addition of new civil causes of action. Under the Copyright Act it is an infringement of copyright for any person, for a commercial purpose, to export or attempt to export a copy of a work, sound recording or fixation of a performer’s performance that the person knows or should have known was made without the consent of the owner of the copyright in the country where the copy was made. Importation is currently dealt with in the Copyright Act. In addition, copies of a work or other subject matter in which copyright subsists shall not be imported or exported if they were made without the consent of the owner of the copyright in the country where they were made and they infringe copyright.
Under the Trade-marks Act 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 trade mark for such goods — a trade mark that is identical to, or that cannot be distinguished in its essential aspects from, that registered trade-mark.
The existing criminal offences set out in the Copyright Act will be amended to deal with importation and exportation in a similar fashion. New offences have been added to the Trade-marks Act.
The new civil causes of action and the criminal offences only apply in a commercial context.
Requests for Assistance
The owner of copyright in a work or other subject-matter may file with the Minister, in form specified by the Minister, a request for assistance in pursuing remedies under the Copyright Act with respect to copies imported or exported in contravention of that Act. The owner of a registered trade-mark may file with the Minister, in the form and manner specified by the Minister, a request for assistance in pursuing remedies under the Trade-marks Act with respect to goods imported or exported in contravention of that Act.
Customs Officers
The role played by customs officers is substantially changed. First, a customs officer who is detaining goods under the Customs Act may, in the officer’s discretion, in order to obtain information about whether the importation or exportation of the goods is prohibited under the Copyright Act or the Trade-marks Act, provide the owner of a relevant copyright or registered trade mark 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. Presumably this provision complies with the ACTA requirement that customs officers may act upon their own initiative to suspend the release of suspect goods.
Second, a customs officer who is detaining goods under the Customs Act and who has reasonable grounds to suspect that the importation or exportation of the goods is prohibited under the Copyright Act or the Trade-marks Act may, in the officer’s discretion, if the Minister has accepted a request for assistance with respect to the relevant copyright or registered trade mark filed by its owner, provide that owner with a sample of the goods and with information about the goods that could assist it in pursuing a remedy under either Act, such as:
(a) a description of the goods and their characteristics;
(b) the name and address of their owner, importer, exporter and consignee and of the person who made them;
(c) their quantity;
(d) the countries in which they were made and through which they passed in transit; and
(e) the day on which they were imported, if applicable.
Detaining the Goods at the Rights Owner’s Expense
Once the rights holder receives this information the goods will be detained for a short period of time to allow the rights holder to commence proceedings under the relevant Act to obtain an appropriate remedy. If proceedings are commenced the goods will continue to be detained.
The rights owner who has received a sample or information as discussed above is liable to Her Majesty in right of Canada for the storage and handling charges for the detained goods — and, if applicable, for the charges for destroying them — for the period beginning on the day after the day on which a customs officer first sends or makes available a sample or information to that owner and ending on the first day on which one of the following occurs:
(a) the goods are no longer detained for the purpose of enforcing the provisions of the relevant Act or purpose of the proceedings;
(b) the Minister receives written notification in which the rights owner states that the importation or exportation of the goods does not contravene the provisions of the relevant Act;
(c) the Minister receives written notification in which the rights owner states that they will not, while the goods are detained, commence proceedings to obtain a remedy under the relevant Act with respect to them.
Comment
Leaving aside the rhetoric directed at ACTA, the amendments are a positive step forward. Unlike the U.S. and the EU, Canada has not kept up in the battle against counterfeiting and these amendments are a vast improvement over the existing provisions. However, there will be expenses associated with bringing proceedings and storage and handling charges for the detained goods as well charges for destroying them, which will restrict the availability of the new procedure.
Goldman Sloan Nash & Haber LLP
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Toronto, Ontario M5G 1V2
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Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer. They are current as of March 25, 2013.