Under provisions of the new Combating Counterfeit Products Act that came into force on January 1, trademark and copyright holders can now make a “Request for Assistance” (RFA) to the Canadian Border Services Agency (CBSA) Intellectual Property Rights Program. This new option enables trademark owners and other rights holders to take action against pirated copyright works and counterfeit trademark goods before they can enter the Canadian market.
An RFA can be filed only in respect of registered trademark rights, but both non-registered and registered copyrights are eligible under the program. Legal experts urge trademark owners to “review their portfolios to ensure that steps are being taken to arm themselves with registrations, as soon as possible, especially for brands that could be potential counterfeit targets.” It is also recommended that they consider filing for an updated list including all goods likely to be counterfeited.
While there is no fee associated with filing an RFA, rights holders should be aware that by filing an RFA with the CBSA, they are accepting liability for all costs associated with storage, handling and destruction of any goods detained in connection with the RFA. In such cases, neither the Crown, nor any customs officer can be held liable for any damage or loss arising from the detention or release of detained goods.
It should also be noted that, despite strenuous objections from U.S. government officials, the new legislation does not apply to “in transit” counterfeit goods or to goods imported substantially through the internet and in small mail packages.