Copyright, Trade-marks and Geographical Indications
Memorandum D19-4-3

ISSN 2369-2391

Ottawa, September 21, 2017

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In Brief

This memorandum has been updated to:

  1. Reflect amendments made to the Trade-marks Act as a result of the Canada-European Union Comprehensive Economic and Trade Agreement Implementation Act (CETA), which expanded the Canada Border Services Agency's (CBSAs) Intellectual Property Rights (IPR) Program to include counterfeit geographical indications (GI); and,
  2. To provide rights holders with a mechanism that they can use to provide the CBSA with information (Intel) about dangerous goods that they suspect are counterfeit or pirated.

This memorandum outlines and explains the legislation governing the role of the Canada Border Services Agency (CBSA) in dealing with counterfeit protected marks (i.e. trade-marks or geographical indications) or pirated copyright goods.

Legislation

Copyright ActSections 44 to 44.44, and 45

Customs ActSection 101

Customs TariffSection 136

Trade-marks ActSections 51.02 to 51.12, and 53 to 53.3

Guidelines and General Information

Definitions

1. The following definitions apply to this memorandum:

CBSA Officer
has the meaning assigned by the definition officer in subsection 2(1) of the Customs Act.
Copyright
refers to the protection of literary, artistic, dramatic or musical works (including computer programs).
Court
means the Federal Court or the superior court of a province.
Duties
has the same meaning as in subsection 2(1) of the Customs Act.
Geographical Indication
means an indication that identifies a wine or spirit, or an agricultural product or food of a category set out in the schedule of Trade-marks Act, as originating in the territory of a World Trade Organization (WTO) Member, or a region or locality of that territory, if a quality, reputation or other characteristic of the wine or spirit or the agricultural product or food is essentially attributable to its geographical origin.
Minister
means the Minister of Public Safety and Emergency Preparedness.
Owner
with respect to a protected geographical indication identifying a wine or spirit or agricultural product or food, means the responsible authority, as defined in section 11.11 of the Trade-marks Act, for the wine or spirit or agricultural product or food identified by the indication.
Performer's and producer's rights (also known as neighboring rights)
refers to the rights of performers and sound recording producers to be remunerated when their performances and sound recordings are performed publicly or broadcast (e.g., the writer of a song owns the copyright to the song; the performer(s) of the song own(s) the rights to the performance).
Protected Mark
means a registered trade-mark or a protected geographical indication.
Release
has the same meaning as in subsection 2(1) of the Customs Act.
Relevant Protected Mark
means a) a trade-mark for goods that is identical to, or cannot be distinguished in its essential aspects from, a trade-mark on such goods, including their labels or packaging, that are detained by a customs officer; or b) a protected geographical indication identifying, as the case may be, a wine or spirit, or an agricultural product or food of a category set out in the schedule of the Trade-marks Act, that is identical to, or cannot be distinguished in its essential aspects from, an indication on such a wine or spirit or such an agricultural product or food, or on their labels or packaging, that is detained by a customs officer.
Rights Holder
means the owner of a copyright in a work or other subject-matter or the owner of a registered trade-mark.
Trade-marks
refers to the words, symbols and designs (or a combination of these) that are used to distinguish the goods and services of one person or organization from those of others (e.g. a logo).
Working Day
means a day other than a Saturday or a holiday as per the Copyright Act and Trade-marks Act. Note: As per the Interpretation Act, holiday includes Sunday.

General

2. The Combating Counterfeit Products Act, which amended sections of the Copyright Act and the Trade-marks Act, came into force January 1, 2015 and the Canada-European Union Comprehensive Economic and Trade Agreement (CETA) Implementation Act came into force on June 1, 2017 and further amended sections of the Trade-marks Act.  The amendments made to these Acts provides for the implementation of IPR border measures that will allow the CBSA to detain commercial shipments, as per section 101 of the Customs Act, that contain suspected counterfeit protected marks (i.e. trade-marks and geographical indications) and pirated copyright goods.  It also allows the CBSA to share certain information about those shipments with RHs/owners that have filed a Request for Assistance (RFA) with the CBSA to allow them to seek remedy in civil court as per section 107(5)(l.1) and (l.2) of the Customs Act, section 44.04(1) of the Copyright Act, and section 51.06(1) of the Trade-marks Act.

3. With the exception of a possibility of a court order issued under the Integrated Circuit Topography Act, the Canada Border Services Agency (CBSA) plays a role only with respect to copyright or trade-mark goods; it does not act upon any other IPR infringements such as patents or industrial designs.

Importation and Exportation

Prohibition on Importation or Exportation – Copyright

4. Copies of a work or other subject-matter in which copyright subsists shall not be imported or exported if they were made without the consent of the owner of the copyright in the country where they were made; and they infringe copyright or, if they were not made in Canada, they would infringe copyright had they been made in Canada by the person who made them.

5. The importation or exportation of copies by an individual in their possession or baggage if the circumstances, including the number of copies, indicate that the copies are intended only for their personal use; or copies that are being shipped from one place outside of Canada to another and are in customs transit control or customs transshipment control in Canada are not prohibited.

Prohibition on Importation or Exportation – Trade-marks

6. Goods shall not be imported or exported if the goods or their labels or packaging bear – without the consent of the owner of a registered trade-mark for such goods – a trade-mark that is identical to, or that cannot be distinguished in its essential aspects from, that registered trade-mark.

7. The importation or exportation of goods is not prohibited when:

8. Goods that are imported or exported with labels or packaging that bear – without the consent of the owner of a registered trade-mark for such goods – a trade-mark that is identical to, or that cannot be distinguished in its essential aspect from that registered trade-mark does not give rise to a remedy under section 53.2 (Power of the Court to Grant Relief) of the Trade-marks Act.

Prohibition on Importation or Exportation – Geographical Indications

9.Wine or spirits shall not be imported or exported if they, or their labels or packaging, bear a protected geographical indication and the wine or spirits:

10. An agricultural product or food of a category set out in the schedule of the Trade-marks Act shall not be imported or exported if it, or its label or packaging, bears a protected geographical indication and the agricultural product or food:

11. The above noted prohibitions do not apply if:

Request for Assistance

12. A rights holder (RH) or owner can file a Request for Assistance (RFA) with the CBSA to pursue remedy under the Copyright Act or the Trade-marks Act at no cost; the application can be accessed on the CBSA's website: RFA Application.

13. The RFA Application must include:

14. The RFA application can be emailed to the CBSA (CBSA-ASFC_IPR-DPI@cbsa-asfc.gc.ca ) or the RH/owner can mail a copy to the CBSA at the following address:

Canada Border Services Agency
Commercial Registration (HQ)
191 Laurier Avenue West, 12th Floor
Ottawa, ON  K1A 0L8

15. The application process takes approximately four to six weeks and once the application is processed by the Commercial Registration Unit.  The RH/owner will receive notification from the CBSA advising them:

16. A RFA is valid for a period of two-years beginning on the day on which it is accepted by the CBSA. The validity period may be extended for additional two-year periods at the request of the RH/owner. It is up to the RH/owner to ensure that their request for renewal is submitted to the CBSA before the current RFA expires.

17. The CBSA may, as a condition of accepting a RFA or of extending a RFA's period of validity, require that the RH/owner furnish security, in an amount and form fixed by the CBSA, for the payment of an amount for which the RH/owner becomes liable for the storage and handling charges and, if applicable, for the charges for destroying suspected counterfeit and/or pirated goods detained on their behalf.

18. The RH/owner shall inform the CBSA in writing or via email at: CBSA-ASFC_IPR-DPI@cbsa-asfc.gc.ca, as soon as practicable, of any changes to:

Information Provided by a CBSA Officer

19. A CBSA officer who is detaining copies of a work or other subject-matter (hereafter referred to as copies) or goods under section 101 of the Customs Actmay, in the officer's discretion (ex-officio powers of an officer), to obtain information about whether the importation or exportation of the copies or goods are prohibited under the Copyright Act or the Trade-marks Act, provide the RH/owner with a sample of the copies or goods and with any information about the copies or goods that the customs officer reasonably believes does not directly or indirectly identify any person.

20. A CBSA officer who is detaining copies or goods under section 101 of the Customs Actand who has reasonable grounds to suspect that the importation or exportation of the copies or goods is prohibited under Copyright Act or the Trade-marks Act may, in the officer's discretion, if the CBSA has accepted a RFA with respect to the copies or goods, provide that RH/owner with a sample of the copies or goods and with information about the copies or goods that could assist them in pursuing a remedy under the Copyright Act or the Trade-marks Act, such as :

21. When a CBSA officer encounters suspected counterfeit and/or pirated goods during an examination of commercial goods, and the RH/owner has filed a RFA with the CBSA, they will be contacted via email and provided information so they can determine if they wish to pursue a remedy under the Copyright Act or the Trade-marks Act.  The email address used for this purpose is the email address provided by the RH/owner in the RFA.  The RH/owner has (3) three business days to advise the CBSA, via email, if they wish to pursue remedy or not.

22. If the RH/owner does not notify the CBSA within (3) three business days or they notify the CBSA that they will not be pursuing remedy under the Copyright Act or the Trade-marks Act, provided the suspected counterfeit and/or pirated goods meet all other import requirements they will be released.

23. If the RH/owner notifies the CBSA that they will be pursuing a legal remedy under the Copyright Act or the Trade-marks Act, they will be issued a Rights Holders / Owners Notice of Detention for Goods Suspected of Contravening IPR (refer to sample in Appendix C) via email and the suspected counterfeit and/or pirated goods will continue be detained to enable the RH/owner time to commence proceedings in court (further information regarding detention timeframes can be found under the heading Detention Period); the importer will be advised that the CBSA has detained their goods on a K26, Notice of Detention.

Detention Period

24. A customs officer shall not detain copies or goods, for the purpose of enforcing the Copyright Act or the Trade-marks Act, for more than (10) ten working days – or, if the copies or goods are perishable, for more than (5) five days – after the day on which the customs officer first sends or makes available a sample or information to the RH/owner. At the request of the RH/owner, made while the copies or goods are detained for the purpose of enforcing the Copyright Act or the Trade-marks Act, the customs officer may, having regard to the circumstances, detain non-perishable copies or goods for one additional period of not more than (10) ten working days.

25. If, before the copies or goods are no longer detained for the purpose of enforcing the Copyright Act or the Trade-marks Act , the RH/owner has provided the CBSA with a copy of a document filed with a court commencing proceedings to obtain a remedy under the Copyright Act or the Trade-marks Act with respect to the detained copies or goods, the customs officer shall continue to detain them until the CBSA is informed in writing that:

26. The occurrence of any of the events referred to above does not preclude a customs officer from continuing to detain the copies or goods under the Customs Act for a purpose other than the proceedings.

Restriction on Information Use

27. A person who receives a sample or information that is provided under the Copyright Act or the Trade-marks Act shall not use the information, or information that is derived from the sample, for any purpose other than to give information to the customs officer about whether the importation or exportation of the copies or goods is prohibited or to pursue remedy under the Copyright Act or Trade-marks Act.

28. Confidential communication of information about the copies or goods for the purpose of reaching an out-of-court settlement is not restricted.

Inspection

29. After a sample or information has been provided under the Copyright Act or the Trade-marks Act, a customs officer may, in the officer's discretion, give the owner, importer, exporter and consignee of the detained copies or goods and the RH/owner an opportunity to inspect the copies or goods.

Liability for Charges

30. RHs/owners who have received a sample or information under the Copyright Act or the Trade-marks Act are liable to Her Majesty in right of Canada for the storage and handling charges for the detained copies or goods – and, if applicable, for the charges for destroying them – for the period beginning on the day after the day on which a customs officer first sends or makes available a sample or information to a RH/owner and ending on the first day on which one of the following occurs:

31. Despite paragraph 30 (a) if the copies are forfeited under subsection 39(1) of the Customs Actand the CBSA did not, before the end of the detention of the copies or goods for the purpose of enforcing the Copyright Act or Trade-marks Act, receive a copy of a document filed with a court commending proceedings to obtain a remedy under the Copyright Act or the Trade-marks Act with respect to the detained copies or goods or the written notification referred to in paragraph 30 (b) or (c), the period ends on the day on which the copies are forfeited.

32. Despite paragraph 30 (c), if the copies or goods are forfeited under subsection 39(1) of the Customs Act after the CBSA has received written notification referred to in that paragraph, the period ends on the day on which the copies or goods are forfeited.

33. The owner and the importer or exporter of copies or goods that are forfeited in the circumstances set out in paragraphs 31 and 32 are jointly and severally, or solidarily, liable to the RH/owner for all the charges under paragraph 30 paid by the RH/owner with respect to the period:

34. Paragraphs 30 to 32 do not apply if:

35. Neither Her Majesty nor a customs officer is liable for any loss or damage suffered in relation to the enforcement or application of the Copyright Act or the Trade-marks Act because of:

Application to Court

36. In the course of proceedings referred to in the Copyright Act or the Trade-marks Act the court may, on the application of the CBSA or a party to the proceedings,

37. If a party applies to have the detained copies or goods stored in a place other than a bonded warehouse or a sufferance warehouse, as those terms are defined in subsection 2(1) of the Customs Act, the CBSA must consent to the storage of copies or goods in that place before a condition to that effect is imposed.

38. The court may impose a condition despite section 31 of the Customs Act.

39. The court may direct that the copies or goods are no longer to be detained for the purpose of the proceedings but this does not preclude a customs officer from continuing to detain the copies or goods under the Customs Act for another purpose.

40. In the course of proceedings referred to in the Copyright Act or the Trade-marks Act the court may, on the application of the CBSA or a party to the proceedings, require the RH/owner to furnish security, in an amount fixed by the court,

41. The court may award damages against the RH/owner who commenced proceedings under the Copyright Act or the Trade-marks Act to the owner, importer, exporter or consignee of the copies or goods who is a party to the proceedings for losses, costs or prejudice suffered as a result of the detention of copies if the proceedings are dismissed or discontinued.

42. Any damages under the Copyright Act or the Trade-marks Act awarded to the RH/owner are to include the charges incurred by the RH/owner as a result of storing, handling or, if applicable, destroying the detained copies or goods.

Prohibition Resulting From Notice – Copyright

43. Copies made outside Canada or any work in which copyright subsists that if made in Canada would infringe copyright and as to which the owner of the copyright gives notice in writing to the CBSA that the owner desires that the copies not be importer into Canada, shall not be so imported and are deemed to be included in tariff item No. 9897.00.00 in the List of Tariff Provisions set out in the schedule to the Customs Tariff, with section 136 of that Act applying accordingly.

Power of the Court – Copyright

44. A court may make an order if the court is satisfied that:

45. A court may make an order on application by the RH/owner of the copyright in a work in Canada.

46. In an order made, the court may:

47. An application for an order may be made in an action or otherwise, and either on notice or ex parte, except that it must always be made on notice to the CBSA.

48. Before making an order, the court may require the applicant to furnish security, in an amount fixed by the court,

49. The CBSA may apply to the court for direction in implementing an order.

50. The CBSA may give the applicant or the importer an opportunity to inspect the detained copies of the work for the purpose of substantiating or refuting, as the case may be, the applicant's claim.

51. Unless an order provides otherwise, the CBSA shall, subject to the Customs Act and to any other Act of Parliament that prohibits, controls or regulates the importation or exportation of goods, release the copies of the work without further notice to the applicant if, within (10) ten working days after the applicant has been notified, the applicant has not notified the CBSA that they have commenced a proceeding for a final determination by the court.

52. If, in a proceeding commenced under this section, the court is satisfied that the circumstances referred to in paragraph 44 (b) and (c) existed, the court may make any order that it considers appropriate in the circumstances, including an order that the copies of work be destroyed, or that they be delivered up to the plaintiff as the plaintiff's property absolutely.

53. For greater certainty, nothing in this section affects any remedy available under any other provision of this Act or any other Act of Parliament.

54. A court may make an order in relation to a book where the court is satisfied that:

55. A court may make an order in relation to a book on application by:

56. Paragraphs 54 and 55 only apply where there is an exclusive distributor of the book and the acts described in those subsections take place in the part of Canada or in respect of the particular sector of the market for which the person is the exclusive distributor.

57. Subsections 44.12(3) to (10) of the Copyright Act apply, with such modifications as the circumstances require, in respect of an order made under paragraph 55.

58. No exclusive licensee of the copyright in a book in Canada, and no exclusive distributor of a book, may obtain an order under section 44.2 of the Copyright Act against another exclusive licensee of the copyright in that book in Canada or against another exclusive distributor of that book.

59. Paragraph 44 applies, with such modifications as the circumstances require, in respect of a sound recording, performer's performance or communication signal, where a fixation or a reproduction of a fixation of it:

60. Notwithstanding anything in the Copyright Act, it is lawful for a person:

61. An officer of customs may, in the officer's discretion, require a person seeking to import a copy of a work or other subject-matter under this section to produce satisfactory evidence of the facts necessary to establish the person's right to import the copy.

Power of the Court – Trade-marks

62. If a court is satisfied, on application of any interested person, that any act has been done contrary to the Trade-marks Act, the court may make any order that it considers appropriate in the circumstances, including an order providing for relief by way of injunction and the recovery of damages or profits, for punitive damages and for the destruction or other disposition of any offending goods, packaging, labels and advertising material and of any equipment used to product the goods, packaging, labels or advertising material.

63. Before making an order for destruction or other disposition, the court shall direct that notice be given to any person who has an interest or right in the item to be destroyed or otherwise disposed of, unless the court is of the opinion that the interests of justice do not require that notice be given.

64. A court is not permitted, in any proceeding under section 53.1 or 53.2 of the Trade-marks Act, to make an order under that section requiring or permitting the goods to be exported, sold or distributed in an unaltered state, except in a manner that does affect the legitimate interests of the owner of the protected mark or except in exceptional circumstances, if the court find that

65. Paragraph 64 also applies with respect to goods for which the only alternation is the removal of the trade-mark.

Information (Intel) about a Suspected Counterfeit or Pirated Goods Shipment Provided by RH/Owners to the CBSA

66. If a RH/owner would like to provide the CBSA with information about a dangerous goods shipment that they suspect is counterfeit and/or pirated, they can contact the Border Watch Toll-free Line at 1-888-502-9060 within the United States and Canada.

Penalties

67. There are penalty provisions for IPR infringement in the relevant legislation. It is not up to the CBSA to determine how to proceed nor does CBSA assess penalties or prosecute. The CBSA only acts upon the direction of the court.

Additional Information

68. Additional Information about the IPR Program may be obtained by visiting the CBSA's website: Combatting Counterfeit Products (Intellectual Property Rights).

69. The CBSA B'srder Information Service (BIS) line responds to public inquiries related to import requirements of other government departments, including Industry Canada. You can access BIS toll-free throughout Canada by calling 1-800-461-9999. If you are calling from outside Canada, you can access BIS by calling 204-983-3500 or 506-636-5064 (long-distance charges will apply). To speak directly to an agent, please call during regular business hours from Monday to Friday (except holidays), 8 a.m. to 4 p.m. local time.

Appendix A

Sample RFA Acceptance Notification

[Insert RFA#]

[Date acceptance notice is being sent]

[Name of trademark, copyright or geographical indication rights holder/owner]

[Address of trademark, copyright or geographical indication rights holder/owner]

Dear Mr./Ms. [Name of representative for service/person who submitted the RFA],

Your Request for Assistance has been accepted by the Canada Border Services Agency (CBSA) under its Intellectual Property Rights Program.

Should the CBSA intercept suspected counterfeit and/or pirated goods matching the information provided in your application, the goods in question may now be temporarily detained for up to three business days so you can decide if you wish to pursue remedy through civil court. If you have not responded within 3 business days, the goods will be released.

If you decide to pursue legal remedy through civil court, a Rights Holders Notice of Detention for Goods Suspected of Contravening IPR will be issued providing you with the necessary information to file your claim. The CBSA will detain the suspected goods for a maximum of 10 working days (5 days if perishable); in some cases an extension can be granted for the detention of non-perishable goods.  The CBSA requires, within these timeframes a copy of the court documents for the file and continued detention of the suspected goods.

By enrolling in the IPR Program, you accept liability for any costs associated with storage, handling and destruction of detained goods beginning the day after the Rights Holders Notice of Detention for Goods Suspected of Contravening IPR has been issued.

As a registrant of the CBSA's IPR Program, you are encouraged to act promptly and diligently by responding to CBSA notices and take appropriate steps to enforce rights or decline the opportunity to do so. Repeated and unnecessary delays may be considered in future applications, renewals, and security requirements.

An approved RFA is valid for 2 years. To renew your RFA, it is necessary to resubmit an application 40 days before the expiry to ensure a seamless renewal of the application. It is the sole responsibility of the rights owners to ensure renewal requests are received within the allotted timeframe for processing.

Thank you for your interest in the CBSA's IPR Program. Please feel free to send any questions, comments or concerns to cbsa-asfc_ipr-dpi@cbsa-asfc.gc.ca.

Sincerely,
Canada Border Services Agency, Commercial Registrations Unit

Appendix B

Sample RFA Rejection Notification

[Date rejection notice is being sent]

[Name of trademark, copyright or geographical indication rights holder/ownerr]

[Address of trademark, copyright or geographical indication rights holder/owner]

Dear Mr./Ms. [Name of representative for service/person who submitted the RFA],

Thank you for your interest in the Canada Border Services Agency's Intellectual Property Rights Program.

This is to advise that the Request for Assistance (RFA) application you submitted, dated « date of receipt of RFA », for « Name of Right holder » cannot be processed at this time.

(Choose appropriate reason)

[The following information is either missing or incomplete:

Section A, Box 1
Section A, Box 2
Section A, Box 3
Section B, Box 6
Section C]

[You must indicate an agent for service in Canada.]

[The trade mark(s) for which you have submitted an RFA are not currently registered in Canada under your name.]

Trademarks must be registered with the Canadian Intellectual Property Office (CIPO). It is recommended that copyright also be registered with CIPO. For more information on registering a copyright or trademark with CIPO please visit its webpage at www.cipo.ic.gc.ca.

Please feel free to send any questions, comments or concerns to cbsa-asfc_ipr-dpi@cbsa-asfc.gc.ca.

Sincerely,
Canada Border Services Agency, Commercial Registrations Unit

Appendix C

Sample Rights Holders RH/owner Notice of Detention for Goods Suspected of Contravening IPR

[date]

[name of trademark, copyright or geographical indication rights holder/owner]

[address]

This is to inform you that the following goods were encountered on [date of detention].

Notification of your intent to commence action has been received by the Canada Border Services Agency (CBSA).

Pursuant to section 44.04(2) of the Copyright Act and section 51.06(2) of the Trade-marks Act , the CBSA may detain these goods for a maximum period of 10 working days  (5 days if goods are perishable) to allow you time to file a case in civil court if you would like to pursue legal remedy.  If you require an extension for non-perishable goods, you may request that the CBSA consider extending the detention period for up to an additional ten (10) day period. Extensions are at the discretion of CBSA and your written request for an extension should explain why an extension is necessary in the particular circumstances of your case.

Please Note: The CBSA has discretion to release these goods at any time, for any reason, unless and until you provide CBSA with a copy of a document filed with the Federal Court or the superior court of your province that commences proceedings to obtain a remedy under section 44.04(3) of the Copyright Act or section 51.06(3) of the Trade-marks Act. It is your responsibility to ensure that your notice is received by CBSA.

In accordance with subsection 44.07 (1) of the Copyright Act and subsection 51.09 (1) of the Trade-Marks Act, the copyright and/or trademark owner holder is liable for the storage, handling and destruction of detained goods beginning on the day after the notice of detention is issued and ending on the first day on which one of the following occurs:

In accordance with section 44.06 of the Copyright Act and section 51.08 of the Trade-Marks Act, at the discretion of CBSA, you may be provided with an opportunity to inspect the above-mentioned goods. Please advise the undersigned by email if you wish to pursue and they will make the appropriate arrangements.

[name and email address of regional contact]

References

Issuing office:
Commercial Programs Policy and Management Division
Commercial Programs Directorate
Programs Branch
Headquarters file:
4581-0, 4581-1, 4581-2, 4581-2-1, 4581-2-2, 4581-5, 4581-5-1, 4581-5-2
Legislative references:
Copyright Act
Customs Act
Customs Tariff
Trade-marks Act
Other references:
D4-1-4, D4-1-5 and D4-1-7
Superseded memorandum D:
D19-4-3 dated November 2, 2015
Date modified: