Bill C-8, the Combating Counterfeit Products Act (the
"CCPA"), received Royal Assent on December 9th, 2014. The
CCPA creates new civil and criminal remedies and border enforcement
measures to curtail commercial activity involving infringing copies
and counterfeit trademarked goods. While many of the CCPA's
provisions will not be implemented until further order of the
Governor in Council, the provisions that have come into force will
provide some substantive remedies to deal with
counterfeiters.
Under the CCPA's amendments to the Copyright Act, the
possession or exportation of infringing copies can now expose
offenders to significant fines and imprisonment. These provisions
are in addition to the existing prohibitions against selling,
renting, distributing and importing such goods. The CCPA also
amends the secondary infringement regime by deeming the exportation
of counterfeit copyrighted goods to be infringement where a person
knows, or should have known, that the goods were made without the
consent of the copyright owner.
The CCPA will make it an offence under the Trade-marks Act
to knowingly sell counterfeit goods on a commercial scale and to
knowingly manufacture, import or export such goods. Similarly, it
will be a criminal offence to knowingly sell or advertise services
in association with an infringing trademark. The manufacturing or
trafficking of labels or packaging bearing an infringing trademark
also becomes an offence. Each of these new provisions makes
offenders liable to significant fines and imprisonment.
Where a court finds that a person is guilty of these new offences,
it may order that any related goods, labels, packaging, advertising
materials or equipment be destroyed or otherwise disposed of. This
is similar to the existing power to grant relief (including the
destruction of offending goods) under s. 53.2 of the
Trade-marks Act. With regard to both powers, the CCPA now
requires that notice be given to any person who has an interest or
right to items subject to destruction (unless the court is of the
opinion that the interests of justice do not require that notice be
given).
Aside from providing substantive remedies, the provisions of the
CCPA now in force will also amend a variety of definitions in the
Trade-marks Act, including repealing the definitions of
"package" and "wares". The CCPA also replaces
the former term "wares" with the new term
"goods" throughout the Trade-marks Act. Finally,
there will also be some corresponding amendments to the
Criminal Code and the Olympic and Paralympics Marks
Act.
Many of the CCPA's most important provisions will not be
implemented until further order of the Governor in Council. Once
these are in force, officers with the Canadian Border Services
Agency ("CBSA") will be given authority to detain suspect
commercial shipments and communicate with copyright and trademark
owners concerning those goods and their ultimate disposition.
Legitimate rights holders will also be entitled to lodge
"requests for assistance" with the CBSA in order to
provide law enforcement with the notice necessary to be able to
initiate effective counterfeit seizure protocols before counterfeit
products enter the marketplace. These additional provisions will
also expand the type of trademarks that can be registered (to
include scents, textures and more) and modernize the trademark
application and opposition process.
We will continue to monitor the coming into force of the CCPA.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
