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5 December 2013Trademarks

INTA testifies on Canadian anti-counterfeiting bill

The International Trademark Association (INTA) has urged Canadian lawmakers to beef up draft anti-counterfeiting legislation passing its way through parliament.

Called the  Combating Counterfeit Products Act, Bill C-8 seeks to add new civil and criminal remedies and border measures to tackle IP infringement.

The bill, introduced to the House of Commons in March last year but re-instated in October, would amend both the country’s Trade-marks and Copyright Act.

In a “historic” first, according to a statement, INTA testified before the Standing Committee on Industry, Science and Technology (INDU) on November 18, expressing its support for the bill.

But INTA representatives David Lipkus and Peter Giddens, members of the anti-counterfeiting and trademark office committees respectively, called for numerous changes to the draft legislation. These include giving courts the power to award “significant statutory or pre-established damages” against counterfeiters when it is difficult or “even impossible” for a trademark owner to prove monetary loss or damage.

As it stands, the bill seeks to offer statutory criminal damages for trademark infringement that match provisions under Canada’s Copyright Act. Statutory damages vary from $500 to $2000 per infringement.

The bill creates new criminal offences prohibiting the possession or export of infringing counterfeit goods, packaging or labels. While INTA praised this provision during the hearing, it urged for the inclusion of a mens rea requirement to make the provision enforceable in practice.

Additionally, INTA wants parliament to remove a provision that would prohibit border officials from intercepting counterfeit goods “in transit” – destined for another country. It also wants Canada to establish a regime to “efficiently and cost-effectively” destroy counterfeits seized at the country’s border.

INDU members were receptive to its recommendations, INTA said in a statement, and their questions focused mostly on the proposals for dealing with counterfeits in transit, destroying illicit products and strengthening sanctions against bad actors.

Ashlee Froese, a lawyer at Gilberts LLP in Toronto, said INTA’s recommendations “all seemed reasonable”, while she noted that the bill is generally divided into two parts.

“One is the counterfeiting and customs border restructuring, which is very new in Canada, and the other part is expanding the scope of protection, such as bolstering non-traditional trademark protection.”

While “everyone” welcomes the changes overall, Froese claimed, some of the provisions in their current form may not necessarily be viable for brand owners.

“If you’re going to allow customs to detain counterfeits, why should be the brand owner be responsible for the costs? It’s a little bit of an onerous situation for the trademark owner,” she said.

INDU is now considering the C-8 Bill, which will proceed to its third reading in the House of Commons. If approved, the bill will be heard in the country’s Senate.

There is a “big push” to get the bill passed quite quickly, Froese explained, but while “industry does appreciate that we need these changes, it’s ironing out the kinks” that is still required.

The bill is available here.

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