Written By Jesse I. Goldman and Jeilah Y. Chan
On March 1, 2013, the Government of Canada introduced Bill C-56 in the House of Commons (The Combating Counterfeit Products Act). Bill C-56 introduces a series of amendments to the Copyright Act and the Trade-marks Act, intended to strengthen the enforcement of copyright and trade-marks rights by way of new border enforcement measures and both civil and criminal remedies.
A bit of context is important. Although Bill C-56 appears to fulfill many of Canada's commitments undertaken in what some view as the controversial Anti-Counterfeiting Trade Agreement (ACTA), it responds to long-standing criticism (emanating from both the U.S. Government and U.S. industry groups) that Canada's copyright and trade-mark laws were outdated, lacked effective and modern enforcement mechanisms, making Canada a haven for intellectual property piracy (alongside countries such as China and Russia). Canada was actually added to a "black list" of jurisdictions notorious for copyright piracy maintained by the United States Trade Representative in 2009. Ratification of ACTA has run into strong headwinds in many signatory countries (notably the EU which has withdrawn ACTA ratification in its Parliament). With the introduction of Bill C-56, the Canadian Government seems willing to press forward with its ACTA package even though it has not ratified ACTA.
What's new in Bill C-56? Plenty. There are three core areas of focus, all directed to curtailing commercial activity involving infringing copies and counterfeit trade-marked goods: New border measures, new civil causes of action, and new criminal offences.
In summary, Bill C-56 provides:
- Rights holders with the ability to file a request for assistance with the Canada Border Services Agency (within a 2 year window), enabling border officers to share information with rights holders regarding suspected shipments of infringing products.
- Border officers with the authority to detain suspected shipments of infringing products and to contact rights holders who have filed a request for assistance.
- Border officers with the power to examine and temporarily detain and potentially seize commercial shipments of suspected counterfeit goods at the border (except for in-transit shipments).
- New civil causes of action with respect to activities that sustain commercial activity in infringing copies and counterfeit trade-marked goods.
- New criminal offences for trade-mark counterfeiting, analogous to existing offences in the Copyright Act.
- New criminal offences prohibiting the possession or export of infringing copies or counterfeit trade-marked goods, packaging or labels.
- Additional offences in the Criminal Code (e.g., the new offences in the Copyright and the Trade-marks Acts) for which police may seek judicial authorization to use a wire tap.
In addition to the above anti-counterfeiting focused changes, Bill C-56 also amends the Trade-marks Act to expand the scope of what can be registered as a trade-mark (e.g., sound, colour and motion marks) and streamline the application and opposition processes.
The provisions of Bill C-56 give Canadian officials and to a lesser extent rights holders a powerful set of tools to address cross-border activity involving infringing copies and counterfeit trade-marked goods. If adopted in their current form, the amendments to the Copyright Act and the Trade-marks Act as proposed in Bill C-56 would go a long way to addressing U.S. criticism of a lack of Canadian legislative framework to manage an important area of international commerce. There are valid concerns with many of the Bill C-56 provisions, including lack of supervision and oversight of summary border enforcement and enforcement errors by officials, and the practical effectiveness of requesting assistance by rights holders. It remains to be seen whether these criticisms can and will be resolved as Bill C-56 winds through Parliament and public and stakeholder scrutiny before becoming law.