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Nelligan O’Brien Payne gratefully acknowledges the contribution of Stéphane Serafin, Student-at-Law in writing this blog post.

In our previous post last year, we mentioned that the Combating Counterfeit Products Act had received Royal Assent on December 9, 2014. Many of its key provisions came into force on January 1, 2015.

Under these new provisions, brand owners can file a Request for Assistance Form (RFA) with the Canada Border Services Agency (CBSA), requesting that the CBSA act and seize suspected counterfeit products upon their entry into Canada. In filing an RFA, brand owners can take proactive steps to protect the value of their brand until civil proceedings can be properly initiated.

However, filing an RFA also renders the brand owner liable to the Canadian government for any costs related to the storage, handling and destruction of the detained goods, beginning the day after a notice of detention is sent. Luckily, such costs may be minimized where the brand owner promptly advises the CBSA that certain goods are not counterfeit or declines to bring an action for the detained shipment.

In addition, the CBSA does not immediately process RFAs. According to the CBSA, average processing time is instead between 6 and 8 weeks. The RFA is then valid for a 2-year term and can be renewed for successive 2-year terms afterwards. As such, a brand owner worried about counterfeit products would ideally file the RFA pre-emptively in order to intercept products as they come in.

When the CBSA does detain suspected counterfeit products under an RFA, it notifies the brand owner and allows the brand owner 10 working days to take appropriate action, or 5 working days with respect to perishable goods. In the case of non-perishable goods, detention can be extended beyond the original 10 working days where the brand owner initiates proceedings. In such a case, the CBSA may detain the goods until either the proceedings come to an end, a court orders otherwise, or the brand owner consents to the goods no longer being detained. This potentially makes the RFA an alternative to obtaining an interlocutory injunction.

As such, the RFA is a powerful tool in a brand owner’s arsenal against counterfeit products. However, this benefit is subject to an important condition: the brand owner must have a subsisting registered trademark or copyright in order to successfully file an RFA. While registration of copyrights with the Canadian Intellectual Property Office is recommended, the registration of trademarks is paramount, as the RFA won’t assist a trademark owner otherwise.

Indeed, common law trademark rights (or unregistered trademark rights) are insufficient to allow a brand owner to file an RFA. The scope of the CBSA’s actions under the Act is limited to the seizure of goods, packaging and labels bearing a trademark that is identical to or that cannot be distinguished in its essential elements from the brand owner’s registered trademark. This adds yet another entry to the list of reasons for which a trademark should be registered.

More information on the Combating Counterfeit Products Act can be found on the CBSA’s website. The RFA itself can be found at here.

This content is not intended to provide legal advice or opinion as neither can be given without reference to specific events and situations. © 2021 Nelligan O’Brien Payne LLP.

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