On March 1, 2013, the Government of Canada introduced Bill C-56 “Combating Counterfeit Products Act” in the House of Commons. Bill C-56 provides copyright and trademark owners with a Canadian legal process to stop the import and export of counterfeit goods and take those goods out of the commercial stream. This legal process is an important step forward.

Bill C-56 amends the Trade-marks Act and the Copyright Act to empower Canada Border Services Agency (“CBSA”) officials to proactively target, detain and examine counterfeit goods at the Canadian border (whether imported into Canada or exported from Canada).  Once Bill C-56 is passed into law, the trade-mark rights and/or copyright rights holders(s) may seek the assistance of the CBSA by filing a “request for assistance” in the form and manner to be specified by the Minister of Public Safety and Emergency Preparedness (the Minister to whom the CBSA reports). The substance of the “request for assistance” is a request to detain goods that are believed to be counterfeit. The request must include the trade-mark and/or copyright owner’s name and address in Canada and any other information required by the Minister, including information about the work or other subject-matter in question.  Undoubtedly, the owner will be required to provide information to demonstrate his/her owners and sufficient information to permit the CBSA officers to detain the alleged counterfeit goods.  For example, the trade-mark and/ or copyright owner would be required to provide samples of the goods they manufacture.

The CBSA will review the “request for assistance” and has the discretion whether or not to accept it.  The Minister Minister of Public Safety and Emergency Preparedness technically would be the person accepting the request for assistance under the proposed rules. the Minister may impose conditions of the acceptance of a request, such as the trade-mark and/ or copyright owner may be required to post security in an amount to be determined by the Minister.

A “request for assistance” would be valid for a period of two years beginning on the day it is accepted by the Minister (and may be extended every two years). If after the “request for assistance” is granted the ownership or substance of the trade-mark or copyright changes, trade-mark and/ or copyright owner must inform  the Minister in writing.

After the “request for assistance” is accepted, the CBSA may detain any goods that are the subject matter of the request.  The CBSA has the discretion to provide a sample of the detained goods to trade-mark and/ or copyright owner and any information about the copies that the CBSA officer reasonably believes does not directly or indirectly identify any person.  The CBSA may also permit the trade-mark and/or copyright owner to inspect the detained goods.  The trade-marks and/ or copyright owner will be given up to 10 days (5 days for perishable goods) to commence court proceedings to obtain a remedy under the Act.  If trade-mark and/ or copyright owner does not commence proceedings, the detained goods will be released.

Bill C-56 also creates a new civil remedy for trade-mark and/ or copyright owner(s) to pursue the infringer for monetary damages. Bill C-56 also sets out new criminal offenses and permits the court to impose fines up to $1,000,000 and/or imprisonment up to five years.

Bill C-56 will be closely watched.  Trade-mark and/or copyright owners may start to prepare their “requests for assistance” so that action may be taken when BillC-56 becomes law.