Is Custom Recordal of Intellectual Property Rights (IPRs) available in Canada?
Is Custom Recordal of IPRs compulsory in Canada?
Is it an effective measure to stop the infiltration of illegal and counterfeit products in Canada?
Which law forms the legal basis for Custom Recordal of IPRs (Border Control Measures) in Canada?
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).
Is Custom Recordal of IPRs effective on import or export of goods or both?
The procedure is effective on both imports and exports.
What is the role of the customs department/authority? (Kindly give 2-3 points)
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.
Is there a procedure to record IP with the customs department/authority? If yes, then kindly explain it in brief.
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.
What documents are to be submitted along with the application for Custom Recordal of IPRs?
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.
Is the applicant required to execute a bond (against all liabilities and to bear the costs towards destruction, demurrage, and detention charges incurred till the time of destruction or disposal) with the customs department/authority for Custom Recordal of IPRs?
What is the time frame for the customs department/authority to notify the applicants whether their application (for custom recordal of IPRs) is registered or rejected?
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.
Does the customs department/authority have a centralized system or the Custom Recordal is required to be done with each port of entry in Canada by land, sea, and air?
The Customs have a centralized system.
Is there an online system for Custom Recordal in Canada?
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
What is the official fee for Custom Recordal in Canada?
What is the term of Custom Recordal of IPRs? Can it be further renewed?
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.
Does the customs department/authority have a right to conduct raids and seize the counterfeit goods within Canada?
In which scenario does the customs department/authority suspend the clearance of imported goods?
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.
Who bears the liabilities and expenses related to suspension of the release of infringing goods?
The applicant bears the liabilities and expenses related to suspension of the release of infringing goods.
Is the IP rights holder authorized to examine the goods, the clearance of which has been suspended?
Is the IP rights holder authorized to request the information about the personal details of the importer and additional crucial piece of information concerning the consignment, which has been suspended from clearance?
Can the importer or the authorized representative of the goods, which have been suspended from clearance, request the information of the IP rights holder in question?
Within what timeframe the IP rights holder needs to confirm whether the goods are counterfeit or original after suspension?
Is the IP rights holder required to produce an injunction order or evidence of court proceedings to detain the goods?
If the answer to the above question is 'Yes,' then what is the deadline to do so?
Does the IP rights holder need to pay an additional bond for the detention of goods?
If the answer to the above question is 'Yes,' then to what extent and how is the valuation calculated?
In the scenario where the goods detained or seized are found to be infringing the IPRs of the IP rights holder in question, what steps does the customs department/authority take?
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.
Does the customs authority invite the rights holder and importer to join the proceedings? Are there any consequences of failure to join such proceeding, if any?
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.
Before disposal/destruction of infringing goods, does the rights holder need to submit a ‘no objection’ or concurrence document?
Are there any disadvantages of Custom Recordal of IPRs in Canada? If yes, then kindly give 2-3 points?
If an IP rights holder is not satisfied with the action taken by the customs department/authority, can he/she initiate separate legal proceedings to enforce his/her IP rights?
To establish if the goods are counterfeit before the court of justice, will the affidavit by the IP rights holder suffice or any other documentary requirement is there?
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.
Upon conclusion of proceedings before the Court of Justice, what are the possible remedies awarded by the court?
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.
Is the rights holder under an obligation to inform customs authority when his Intellectual Property Right ceases to be valid/ he ceases to be the owner of such IPR?