Canada introduces anti-counterfeiting bill
Canada’s government has introduced a bill that will bring Canadian trademark and copyright law in line with aspects of the controversial Anti-Counterfeiting Trade Agreement (ACTA).
The C-56 bill, known as the Combating Counterfeit Products Act, was introduced on Friday 1 March. In compliance with ACTA provisions, it proposes tougher penalties (a fine of up to $1 million and/or up to five years’ imprisonment) for offenses related to selling and distributing counterfeit or pirate goods and gives customs officials more power to seize and detain suspect products.
It also outlines amendments to Canada’s Trade Marks Act confirming the registrability of non-traditional marks such as colours, textures and holograms.
The bill was published on the same day as The Office of the United States Trade Representative’s annual Trade Policy Agenda, which outlines plans to bring ACTA into force and encourages Canada to impose “deterrent level sentences for IPR violations” and “meet its ACTA obligations by providing its customs officials with ex officio authority to stop the transit of counterfeit and pirated products through its territory.”
ACTA was signed by more than 30 countries last year but must be ratified by at least six to come into force. Only Japan has ratified the treaty so far and it was rejected by the European Parliament after thousands protested and 2.8 million signed a petition against its adoption. Critics say ACTA favours IP owners’ rights over individuals.
But Kelly Gill, a partner at Gowlings LLP in Toronto, said Canada’s new legislation is unlikely to be met with such fierce opposition as it is well-balanced and includes personal use exemptions to protect travellers from being jailed or having their personal goods seized.
Stephane Caron, a partner at Gowlings in Ottawa, added that while the bill’s provisions are consistent with elements of ACTA, they also address concerns predating the controversial treaty and will most likely be welcomed by rights owners and practitioners.
“There were significant changes to Canada’s Copyright Act last year, but these did not deal with ‘brick and mortar’ piracy. The provisions outlined here give customs officials specific mechanisms by which copyright owners can seek assistance in seizing merchandise. I think it will be largely welcomed,” he added.
Gill also praised provisions relating to non-traditional marks and said the C-56 bill will bring Canada’s Trade Marks Act up to date. Both Gill and Caron expect the bill will be passed through Parliament.
“There’s always potential for change but I don’t see any real hurdle. From a political perspective, the government has the majority in the House of Commons and the Senate, and recent history tells us they’ve been able to push through these kinds of bills,” said Gill.
