Canadian Lawyer InHouse

11 CANADIANLAWYERMAG.COM/INHOUSE MAY 2015 Paul Tackaberry Intellectual Property T he owner of a Canadian trademark regis- tration can now fi le a request for assistance application with the Canada Border Ser- vices Agency, as can the owner of a regis- tered or unregistered copyright. The ob- jective of the new program — the result of amendments to the Copyright Act and Trade-marks Act effected by the Combating Counterfeit Products Act — is to re- strict the importation of counterfeit goods into Canada. In particular, CBSA offi cials who encounter suspected counterfeit goods during their inspections are expected to reach out to the owner of the potentially infringed intellectual property rights so that the IP owner may facilitate the detention of the counterfeit goods and commence court proceedings for infringement. Recently enacted s. 51.03 of the TMA contains a new prohibition on the importation and exportation of goods, labels, and packaging that bear a trademark that is "identical to, or that cannot be distinguished in its essential aspects from" a registered trademark. The prohibition in s. 44.01 of the CCPA is broader in that it extends to all infringing copies. Because these prohibi- tions are restricted to goods made without the consent of the IP owner in the country where they were made, they do not apply to grey goods (that is, goods made outside Canada by the IP owner or its licensee, but not intended for sale in Canada). Also excluded are goods imported for personal use and goods in transit. CBSA offi cials are to provide an IP owner who sub- mits an RFA application with a sample of the detained goods and additional information such as the follow- ing, with a view to allowing the IP owner to determine whether further action is required: (1) name and ad- dress of the goods' owner, importer, exporter, and con- signee and of the person who made them; (2) quantity of imported goods; (3) countries in which the goods were made and through which they passed in transit; and (4) day on which the goods were imported. The IP owner may be permitted to inspect the detained goods. The IP owner must commence court proceedings for infringement within 10 days after the suspected counterfeit goods were fi rst detained (fi ve days if the goods are perishable, unless extended by 10 days at the request of the IP owner); otherwise, CBSA may release the goods. The IP owner is liable for all of the costs of storage, handling, and destruction of detained goods starting on the day after CBSA provides the IP owner with notice of the detention. This is not the only fi - nancial exposure the IP owner faces; if the infringe- ment proceedings are unsuccessful, the IP owner may be ordered to reimburse the importer or owner of the detained goods for damages they suffer as a result of the inappropriate detention. The RFA application — and instructions on how to complete it — may be accessed at www.cbsa-asfc.gc.ca/ publications/forms-formulaires/bsf 738-eng.html. The following information must be provided in the RFA application: • Name and address of the IP owner. • Contact particulars for the IP owner's representative for service. • Details of trademark registrations and copyrights and, where applicable, copyright registrations; multiple IP rights may be included in a single RFA application. • Details of the IP owner's bond that is included with the application; if no bond is included, CBSA may request one. • Name and description of the authentic goods (e.g. product features, packaging, and trademark location). • Known authorized importers permitted to import the IP owner's products. • Known distributors of illegitimate or suspect goods. The application must be renewed every two years and the IP owner who has fi led an RFA application must advise CBSA if the IP rights covered change. Prior to enactment of the CCPA, CBSA was authorized to detain infringing goods at the border on an ad hoc basis, and there was no formal procedure for IP owners to record their rights with CBSA. CBSA's previous practice requiring IP owners to provide CBSA with details of specifi c incoming shipments of infringing goods rendered the old procedure unworkable as a practical manner. It is incumbent on IP owners to exploit the new system by fi ling RFA applications and promptly commencing infringement proceedings when they believe counterfeit goods have been detained by CBSA. CBSA's commitment to the new system can be tested only if IP owners engage by fi ling RFA applications. IH Stopping counterfeit goods at the border Trademark and copyright owners can ask Canada Border Services Agency to restrict importation of counterfeit goods. Paul Tackaberry is counsel with Ridout & Maybee LLP in Toronto.

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