IF YOU BUILD IT, THEY WILL COME
Canada Needs an IPR Coordination Center
David S. Lipkus, Esq.
Kestenberg Siegal Lipkus, LLP and Member of The Canadian
Canada has long been the “thorn in the side” of many brands that boast robust anti-counterfeiting enforcement programs in countries around the world. If you expect Canada Border Services Agency (CBSA) to “seize and destroy” counterfeit merchandise, then expect to wait for a looooong time. Currently, unless there is a health and safety issue, law enforcement may lack the resources to dedicate to your brand protection efforts. You should not expect our Courts to come down hard on unknowing sellers of counterfeit merchandise, either. The Courts do not have the power to award statutory damages, so unfortunately the provisions in the Trade-marks Act do not deter the sale of counterfeit merchandise.
In my opinion as a Canadian, Canada has a very unique approach to address the sale of counterfeit merchandise. Canadians are kind. Canadians also love to apologize. It’s not normally a problem, until the apologies and kindness are being directed to the criminal importer of counterfeit merchandise bearing your intellectual property. It is significant to note that Canada for several years now has been on the Office of the U.S. Trade Representative 301 Report of Notorious Markets which calls out areas of IPR risks. Furthermore, the 2018 report moved it from its “Watch List” to its “Priority Watch List”.
Brands were understandably excited when the Canadian government gave CBSA the right to detain counterfeit merchandise imports (see Canada’s New Trademark Legislation: The Combating Counterfeit Products Act – What Practitioners Should Know, BPP September, 2016). Effective January 1, 2015, this was a small step in the right direction. However, the numbers are now in and CBSA has detained only 48 shipments in the first three years of the program, most of which were released to the importer because the brand hadn’t filed a Request for Assistance (recorded their trademark with CBSA). (See CBC, March 22, 2018 “Canada Seizing Few Shipments of Fake Goods Despite Law Targeting Counterfeits“) The good news is that many of those shipments resulted in the destruction of large quantities of counterfeit merchandise without the need to litigate – and the storage and destruction was paid for by the importer.
On behalf of their members, Canadian and international trademark owner associations have asked CBSA to conduct product identification training. Due to resource issues, most CBSA officers have not been trained on how to identify suspected counterfeit merchandise. Such training could greatly assist officers. Many brands provide training materials which are then distributed directly by CBSA (internally). Unfortunately, it’s not enough. A recent visit to the U.S. National Intellectual Rights Coordination Center in Washington, D.C. (“IPR Center”) helped highlight for me the importance of rights owners working directly with law enforcement, including through training sessions, to help combat the illegal importation of counterfeit merchandise.
On February 22, 2018, I was honored to be invited by the IPR Center along with the CACN (The Canadian Anti-Counterfeiting Network) to learn how the Canadian government might further curb counterfeit goods. Among the strategies we seek to pursue are establishing a Canadian intellectual property rights center to bring together law enforcements agencies and rights owners. Above all, the Canadian government must publicly prioritize stopping the sale of counterfeit merchandise. Once it has done so, and after the Canadian government learns that brands have a plethora of experience worldwide that can benefit public anti-counterfeiting efforts, it will be easy for the government to establish partnerships. In addition to the immensely popular Canadian brands with counterfeiting issues, there are many foreign brands with a significant presence in Canada that are waiting for Canadian law enforcement to assist their brand protection efforts.
Canada does have great champions of IP protection at the Canadian Anti-Fraud Centre, Toronto Police Service, and other organizations. However, the Royal Canadian Mounted Police, CBSA, and all local law enforcement agencies across the country need to collaborate and share intelligence and resources through something like an IPR Center in order to effectively combat the sale of counterfeit merchandise in Canada. In addition to education, all Canadians (brands and the public) will benefit from the intelligence gathering and effective response and enforcement mechanisms that an IPR Center can coordinate.
The lack of a coordinated intellectual property enforcement strategy is a disservice to hardworking law enforcement and to the brands currently active in civil and criminal enforcement efforts in Canada. Canada needs a centralized information and coordination office to complement law enforcement and brand efforts in stopping the sale of counterfeit merchandise.
CALL TO ACTION:
INCLUDE CANADA IN BRAND PROTECTION EFFORTS
If your brand has a counterfeiting problem online or in the United States, then you may want to consider including Canada in your brand protection efforts.
File your Request for Assistance. There is no cost for filing.
Reach out to your local or international trade association(s) and make sure your brand is active in supporting and participating in lobbying efforts. Your brand may not be based in Canada, but this should not act as a deterrent. Your brand likely contributes to the Canadian economy if it is sold or distributed there and may be paying taxes or own assets such as trademarks.
Reach out to the CBSA. Provide them with training materials. Ask them to participate in training efforts for your brand. You can reach CBSA by toll-free phone at 1-800-461-9999 (Border Information Services) or by email at firstname.lastname@example.org
Report suspicious activities to CBSA’s Border Watch Line. CBSA announced in September 2017 that it would accept tips relating to shipments of dangerous counterfeit goods.
Complain. Complain. Complain. Contact the RCMP and local law enforcement to voice your frustrations so they have a full understanding of the issues.
Reach out to your local counsel to address any specific issues and to learn how to effectively address the sale of counterfeit goods in Canada.
THE BRAND PROTECTION PROFESSIONAL | JUNE 2018 | VOLUME 3 NUMBER 2
2018 COPYRIGHT MICHIGAN STATE UNIVERSITY BOARD OF TRUSTEES