New customs request for assistance regime introduced

New border enforcement measures under Canada’s recent Combating Counterfeit Products Act took effect on January 1 2015. They include:

  • new express prohibitions against importing and exporting goods that infringe trademark rights;
  • a new request for assistance regime, which allows owners of Canadian trademarks to file a request for assistance with the Canada Border Services Agency (CBSA) to take action against counterfeit goods; and
  • new powers for the CBSA, either upon request or ex officio, to detain suspected infringing goods.

In particular, under the request for assistance regime, the CBSA may detain goods for up to five days for perishable items and 10 working days for non-perishable items, and may exchange information about the items with the rights holder. To extend the detention period, the rights holder will need to bring a court action.

Only owners of registered trademarks may take advantage of the regime. A request for assistance may include details about the rights holder, the trademark at issue, a description of authentic goods and a list of trusted importers. Once a request has been approved, it will remain valid for a period of two years, extendable upon request.

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Counsel comment:

Since a trademark registration is a condition for requesting assistance from the CBSA, trademark owners should review their portfolios to ensure that steps are being taken to arm themselves with registrations. They should ensure that the list of goods covered by their registrations includes goods likely to be counterfeited, and if not, should consider filing for an updated list of goods. It does not appear that a government fee will be associated with filing of the request for assistance form at this time. However, certain aspects of the procedure and form remain unclear. Most importantly, the costs to be incurred by rights holders for the CBSA’s detention of goods under the procedure are unclear.

Scott MacKendrick, partner and Tamara Winegust, associate at Bereskin & Parr LLP

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