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News and Views - McKeown’s Brand Management in Canadian Law Newsletter

Combating Counterfeit Products Act provides Canada Border Services Agency with the authority to take action against commercial movement of counterfeit goods at border and adds new criminal offences relating to counterfeit goods.


McKeown’s Brand Management in Canadian Law Newsletter


By:John McKeown


I.1 — Canada’s New Border Enforcement Regime is in Force

The Combating Counterfeit Products Act1 (CCPA) implements Canada’s new border enforcement regime. It provides the Canada Border Services Agency (CBSA) with the authority to take action against the commercial movement of counterfeit goods at the border and adds new criminal offences relating to counterfeit goods. It also allows rights holders to file a request for assistance with the CBSA, in turn, enabling border officers to share information with them regarding suspect shipments.

The CCPA appears to satisfy Canada’s obligations under the Anti-Counterfeiting Trade Agreement (ACTA) and will allow Canada to ratify ACTA. Canada signed ACTA in the fall of 2011 and indicated at that time it would introduce the legislation necessary to implement ACTA in Canada. In addition, the coming into force of these provisions will allow Canada to implement its border enforcement obligations under the Canada-Korea Free Trade Agreement and the Canada and European Union (EU) Comprehensive Economic and Trade Agreement.

The new civil causes of action and new and amended criminal offences came into force when royal assent was received on December 9, 2014. The provisions of CCPA relating to the creation of a new border enforcement regime were brought into force January 1, 2015.2

New Civil Causes of Action

a) Copyright

The Copyright Act has been amended to provide that it is an infringement of copyright for any person, for the purpose of doing anything referred to in paragraphs 27(2)(a) to (c)3 to export or attempt to export a copy of a work, sound recording or fixation of a performer’s performance or of a communication signal that the person knows or should have known was made without the consent of the owner of the copyright in the country where the copy was made.4 The provision does not apply with respect to a copy that was made under a limitation or exception under the Act or, if it was made outside Canada, that would have been made under such a limitation or exception had it been made in Canada.5

b) Trademarks

The Trade-marks Act has been amended to extend s. 20 to provide that the right of the owner of a registered trade-mark to its exclusive use is deemed to be infringed by any person who is not entitled to its use under the Act and who: (a) sells, distributes or advertises any goods or services in association with a confusing trade-mark or trade-name;

(b) manufactures, causes to be manufactured, possesses, imports, exports or attempts to export any goods in association with a confusing trade-mark or trade-name, for the purpose of their sale or distribution;

(c) sells, offers for sale or distributes any label or packaging, in any form, bearing a trade-mark or trade-name, if

(i) the person knows or ought to know that the label or packaging is intended to be associated with goods or services that are not those of the owner of the registered trade-mark, and

(ii) the sale, distribution or advertisement of the goods or services in association with the label or packaging would be a sale, distribution or advertisement in association with a confusing trade-mark or trade-name; or

(d) manufactures, causes to be manufactured, possesses, imports, exports or attempts to export any label or packaging, in any form, bearing a trade-mark or trade-name, for the purpose of its sale or distribution or for the purpose of the sale, distribution or advertisement of goods or services in association with it, if

(i) the person knows or ought to know that the label or packaging is intended to be associated with goods or services that are not those of the owner of the registered trade-mark, and

(ii) the sale, distribution or advertisement of the goods or services in association with the label or packaging would be a sale, distribution or advertisement in association with a confusing trade-mark or trade-name.6

The Trade-marks Act has also been amended to extend exception in s. 20 to provide that the registration of a trade-mark does not prevent a person from using any utilitarian feature embodied in the trade-mark.7

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