Canadian Government Introduces New Bill To Address Counterfeits At Canadian Borders

On March 1, 2013, the Canadian government introduced Bill C-56 (the Bill), the Combating Counterfeit Products Act. The Bill proposes amendments to Canadian copyright and trademark laws aimed largely at enabling Canadian border officials and rights holders to address counterfeit products. The Bill also proposes much broader amendments to Canadian trademark laws. See our companion article Bill introduced by Canadian government to address counterfeiting and amend the Trade-marks Act and the Copyright Act that discusses the proposed changes to Canada's trademark laws. This article focuses on the proposed amendments to the Copyright Act.

The Bill proposes new measures to assist copyright owners with enforcement against counterfeits at the border. Similar measures are proposed for registered trademark owners. If passed, copyright owners will be able to request assistance from border officials with respect to the importation or exportation of infringing copies so that the owner can pursue available remedies under the Copyright Act. A request for assistance would be valid for two years, with a possibility of extension and renewal. Security for costs of storage, handling and destruction of counterfeit goods may be required. While the prescribed form of the request is not yet known, it appears a copyright owner would be required to provide their name and address, as well as information about the works or other subject matter they own. The copyright owner would have a duty to inform customs of any changes to the ownership or subsistence of copyright.

Once goods are detained, the customs officer would have discretion to provide a sample to the rights holder, along with information about the shipment. The copyright owner would then generally have ten working days to commence proceedings, or the goods may be released. There is a possibility of a further ten day extension. If the goods are perishable, the owner generally would only have five working days to commence proceedings. The copyright owner would be liable to the government for certain storage and handling charges for the detained copies, and, if applicable, for charges for destroying them.

Changes to enforcement at Canadian borders have been long awaited by rights holders. Currently, border officers have no authority to proactively target, examine, and detain commercial counterfeit goods at the border. Rights holders also currently have no simplified administrative means to request Canadian...