On December 9,2014 Royal Assent was given to Bill C-8, the Combating Counterfeit Products Act. The intention of Bill C-8 is to give the government and holders of trademarks and copyrights new mechanisms for enforcement, along with substantial remedies, in order to combat counterfeit and black-market goods. Before the introduction of Bill C-8, Canada had been criticized for not having meaningful policies to combat the global problem of counterfeit trafficking which flowed across Canadian borders.
Specific enforcement mechanisms contained in Bill C-8 include:
- new civil prohibitions under the Trademarks Act and Copyright Act giving rights holders the ability to start civil actions against those who infringe their trademark or copyright by possessing, manufacturing, distributing or trafficking goods for commercial purposes;
- new criminal offences under the Trademarks Act and Copyright Act for possessing, manufacturing, distributing or trafficking counterfeit goods for commercial purposes;
- new provisions giving customs officials ex officio power to independently seize and detain suspected counterfeit goods. This includes the ability for copyright and trademark owners to file a “request for assistance” with customs officials to increase the information available to customs regarding possible counterfeit goods.
For a deeper review of the changes contained in Bill C-8, please see our previous post written in March 2013 when the bill was first introduced as Bill C-56.
While the Bill has obtained Royal Assent, it is only partially in force. Changes currently in force include:
- the introduction of the new criminal provisions;
- the deletion of section 7(e) of the Trademarks Act; and
- amendments to Section 20 of the Trademarks Act dealing with infringement.
The majority of the amendments to the Trademarks Act and Copyright Act, including the provisions relating to importation and exportation and ex officio powers of custom officials, will be brought into force by regulation. It is not clear when this will occur. However, it is thought that implementation will be in step with Bill C-31, the Budget Implementation Act, which is also waiting to come into force sometime in 2015 early 2016 and contains further significant amendments to the Trademarks Act.
We will keep you updated as coming into force dates are announced and these legal tools become available to trademark and copyright owners.