Benefits of Trademark and Copyright Enforcement at the Border (Canada and US)

  • AuthorPalmer IP
  • Date 5 June 2015
  • CategoryNews

border

Canada Border Services Agency Protection

Canada has recently enacted the Combating Counterfeit Products Act (presented as Bill C-8) on December 9, 2014, which provides a relatively new program that provides a first layer of intellectual property rights protection, in terms of both import and export, such as for Canadian trademark and copyright enforcement, wherein a rightful owner of Canadian intellectual property (IP) rights may request that the Canada Border Services Agency (CBSA) temporarily detain suspected counterfeit goods encountered at the Canadian border while the rightful owner seeks legal redress, e.g., in a Canadian trademark, or copyright, infringement action.

For instance, a holder, e.g., an owner, of a Canadian trademark registration is eligible to file a Request for Assistance (RFA) application with the CBSA.  Such RFA documents help the CBSA to effectively identify and detain commercial shipments that are suspected of containing goods bearing a counterfeit trademark.  Similarly, as a holder, e.g., an owner, of a valid Canadian copyright, is eligible to file an RFA application with the CBSA as well.  RFAs will help the CBSA to effectively identify and detain commercial shipments that are suspected of containing pirated copyright goods.  If suspected counterfeit-trademark, or pirated-copyright, goods are discovered during a commercial examination, the information contained in the RFA application allows the CBSA’s ability to contact, and inform, the IP rights holder of the details regarding the detained goods which facilitates pursuing a civil court action by the IP rights holder.

Filing an RFA application with the CBSA is a relatively simple and cost-effective endeavor which may yield both protection and valuable evidence of infringement, e.g., in relation to a Canadian trademark registration or a copyright registration.  The Canadian seizure and detention program requires that the Canadian trademark is registered with the Canadian Intellectual Property Office (CIPO) and that the owner’s information is up to date; however, the program does not require that the Canadian copyright is registered with CIPO, but copyright registration is recommended.  The program also requires submission of a completed RFA form to the CBSA for processing.  Thereafter, the IP rights holder will await confirmation by way of an enrollment and approval letter that outlines specific details of the program.  After approval, if suspected counterfeit goods are intercepted by the CBSA, the IP rights holder is notified and given the opportunity to take appropriate action.  Further, the Royal Canadian Mounted Police (RCMP) is responsible for leading any criminal investigations related to commercial-scale counterfeiting and piracy activities.  However, by filing an RFA, the IP rights holder acknowledges liability to the government for any costs related to storage, handling, and destruction of detained goods that arise, beginning the day after a notice of detention is sent to the IP rights holder, but the holder can often minimize these costs by responding promptly to the CBSA and advising that the goods are not counterfeit or pirated, or that the holder will forgo legal action in relation to the detained shipment.

 

US Customs & Border Protection

The US Customs and Border Protection (CBP) acts as a first layer of intellectual property rights protection, such as for trademark and copyright enforcement, wherein a rightful owner of US intellectual property (IP) rights may apply for recordation of IP rights to the CBP (“customs recordation”), e.g., in relation to a US trademark, or a copyright, registration.  This first layer of US intellectual property rights protection provides a procedure for seizure at the US border before counterfeiters have an opportunity to distribute infringing goods.  After customs recordation, the CBP officers will undergo a familiarization process for recognizing the characteristics of genuine products.  The CBP now provides an official Seizure Notice to importers regarding a seizure and also provides seizure information regarding the seized goods to the rightful owner of the US intellectual property.  This seizure information provides useful and valuable information to the IP rights owner for a second layer of protection, such as evidence that would be useful in a trademark, or copyright, infringement lawsuit.

Applying to record IP rights is a relatively simple and cost-effective endeavor which may yield both protection and valuable evidence of infringement.  For instance, the government fee for an application to record trademark rights is only approximately US$190 per class of goods.  The Applicant furnishes relevant information, such as the registration number(s) related to the IP rights, a list of manufacturers and/or licensees who have a valid right to import goods that are covered by the trademark, or copyright, registration, names of related entities, such as parent companies or subsidiaries, and the name of a person who would act as the contact on behalf of the IP rights owner.  With respect to the first layer of protection, for example, the customs recordation of a trademark registration endures for the duration of the trademark registration, i.e., up to ten (10) years, and must be renewed at the time that the trademark registration, itself, is renewed.  Further, the government fee for renewing a customs recordation is only approximately US$80 per class of goods.

Our Services

Our firm provides assistance to IP rights owners in relation to seeking the first layer of protection via both the CBSA and the CBP.  Please contact us if you would like to further explore the first layer of protection in terms of your overall IP enforcement strategy.

If you would like to learn more,  please do not hesitate to contact us by telephone at 604-677-7727 or by email at info[at]palmerip.com.

By May Lin DeHaan

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