By Anthony Capkun
October 3, 2014 – Canada has passed Bill C-8 a.k.a. the Combating Counterfeit Products Act (still to get through Senate) but what, in practical terms, does that mean for anyone? EBMag reached out to national (if not international) counterfeit expert Lorne Lipkus of Kestenberg Siegal Lipkus LLP to help us better understand what, if anything, has changed.
“Many people, including myself, believe that [Bill C-8] will have a positive effect—primarily because our existing laws are so inferior to other countries that any change will be positive!—but that [Bill C-8] could have, and needed to go further to really be effective,” noted Lipkus.
Noting the various dangers of counterfeit goods and the passing of Bill C-8, industry minister James Moore said, “I am pleased to see the passage of Bill C-8 today by the House of Commons with all-party support. Canadians are now one step closer to having a modern, effective protection regime at our borders”.
Bold words, but not so fast. Apparently, we could have—and should have—done better. Lipkus explains “had the government adopted the unanimous recommendations of the two, all-party parliamentary committees, Canada could have had a much more robust anti-counterfeiting regime”.
Industry Canada says Bill C-8 will create a system to allow trademark and copyright owners to submit a Request for Assistance to Canada Border Services Agency. Through this system, rights-holders would request that border officers detain commercial shipments suspected of containing counterfeit goods, thereby enabling the trademark owner to begin civil proceedings in court.
To support this process, border officers will be further authorized to furnish certain information about shipments and their importers to the rights-holders. Rights-holders wishing to take part in the Request for Assistance system will assume certain costs associated with shipments being detained by border officers.
The bill also allows trademark owners to seek legal recourse before counterfeit trademarked goods are sold in the marketplace. Specifically, rights-holders will be able to seek civil remedies for the manufacture, distribution and possession with intent to sell counterfeit goods.
Translation from Lipkus: “It increases the ability of IP rights-holders to have access to information from Customs so they can proceed with civil action against importers of counterfeit products. It gives customs officers ex officio power to detain counterfeits, and my understanding is that the positive obligation will be on IP-holders to proceed with expensive court actions if they want to ensure the counterfeit goods are seized/destroyed… failing which, the counterfeits will enter Canada”.
So, as an IP-holder, unless you’re ready for expensive legal action, get ready for those counterfeits to hit the shelves.
Finally, Industry Canada says Bill C-8 will ensure that selling, distributing, possessing, importing or exporting counterfeit goods for the purpose of trade will be prohibited and subject to fines and possible jail time. In addition, new criminal offences for possessing and exporting counterfeit goods for the purpose of trade will be added to the Copyright Act, which would allow the RCMP to seize counterfeit goods.
“Canadians are now one step closer to having a modern, effective protection regime at our borders,” boasted Moore but, as Lipkus points out, “any system is only as effective as the willingness of the government to properly train and fund those responsible for its implementation”.
“I look forward to the swift passage of this bill through the Senate,” added Moore. “Canadians support it. Our market will be safer with it. And criminals will get the message: ‘Canada is not open to your kind of business’.”
“Still, it will be nice to have something, because something is better than nothing,” Lipkus concedes.
— Anthony Capkun, Editor, firstname.lastname@example.org .