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Custom Recordal of IPRs in Canada


Custom Recordal of IPRs
In Canada, the following legislation can be relied on to prevent or combat counterfeiting:
  • The Trademarks Act (RSC 1985, c T-13);
  • The Copyright Act (RSC 1985, c C-42);
  • The Criminal Code (RSC 1985, c C-46);
  • The Canada Consumer Product Safety Act (RSC 2010, c 21);
  • The Consumer Packaging and Labelling Act (RSC, 1985, c C-38); and
  • The Customs Act (RSC 1985, c 1).
The procedure is effective on both imports and exports.
It is the role of the customs to intercept any infringing good being exported from or imported into the territory of Canada. Where pursuant to the request of the rights holder (RH), any infringing good is found, it is their duty to ensure detention until a period of 10 days until the court proceeding is initiated or the case is abandoned, depending on the course of action opted by the IP RH. It is their responsibility to supervise all consignments and ensure that counterfeits are limited within the territory to prevent harm to consumers and economy.
A rights holder (RH) or owner can file a Request for Assistance (RFA) with the CBSA to pursue remedy under the Copyright Act or the Trademarks Act at no cost. The application can be accessed on the CBSA’s website: RFA Application.
The RFA Application must include the following aspects:
(a) Legal name of RH/owner;
(b) RH’s/owners mailing address;
(c) RH’s/owners representative for service in Canada and their contact information, which must include a Canadian address (if applicable);
(d) Indication if the RFA pertains to a protected mark (i.e. trademark or geographical indication) or copyright;
(e) Protected mark (i.e., trademark or geographical indication) and/or copyright registration number (not mandatory for copyright); and
(f) RH’s/owners signature and date.
The application process takes approximately 04 to 06 weeks, and once the application is processed by the Commercial Registration Unit, the RH/owner will receive notification from the CBSA advising him or her:
(a) If the CBSA requires further information and/or clarification to process the applications; or
(b) That your application has been accepted; or
(c) That your application has been rejected and reason(s) why.
The Customs have a centralized system.
The RFA application can be emailed to the CBSA (>CBSA-ASFC_IPR-DPI@cbsa-asfc.gc.ca) or the RH/owner can mail a copy to the CBSA at the following address:
Canada Border Services Agency
Commercial Registration (HQ)
191 Laurier Avenue West, 12th Floor
Ottawa, ON K1A 0L8

An RFA is valid for a period of 02 years beginning from the day on which it gets accepted by the CBSA. The validity period may be extended for additional two-year period at the request of the RH/owner. It is up to the RH/owner to ensure that his or her request for renewal is submitted to the CBSA before the current RFA expires.

If certain goods are found to be of infringing nature as per the request of the RH, the customs may suspend the clearance of such goods until a final determination by the court is made.
The applicant bears the liabilities and expenses related to suspension of the release of infringing goods.
03 days
10 days
If the goods detained are found to be of infringing nature, the customs inform the parties to the dispute of the same for them to prepare for the course of action to be taken. They allow taking of samples, which can be helpful in establishing the case and defending the counterparts against any adverse court orders.
Yes, they are invited to join the proceedings to meet the ends of the enforcement measures. The CBSA will detain the suspected goods for up to 10 working days (05 days for perishable goods), which may be extended for another 05 to 10 days, to allow the rights holder to inspect the goods to see whether they are genuine, and to commence legal proceedings if they are not. The rights holder must commence legal proceedings within the limited period of approved detention; failure to initiate proceedings shall result in lapse of such measures, and the detention is then lifted.
The court may require the submission of other documents as may be needed to establish the authenticity of the goods and arrive at a fair judgement.
If the court is satisfied on application of any interested person that an act has been done contrary to the Trademarks Act, the court may make any order that it considers appropriate in the circumstances, including an order providing for relief by way of injunction and the recovery of damages or profits, for punitive damages and for the destruction or other disposition of any offending goods, packaging, labels, and advertising material, and of any equipment used to product the goods, packaging, labels, or advertising material.