In Canada, trademarks and copyrights are typically the subject matter for criminal proceedings, with the Trademarks Act and Copyright Act provisions addressing counterfeiting and piracy. While provincial superior courts have concurrent jurisdiction for enforcement of intellectual property rights, the country-wide jurisdiction of the Federal Court gives it the cost effective and practical ability to grant relief throughout Canada in a single proceeding.

The Trademarks Act incorporates offence provisions under Article 51.01 and the Copyright Act includes several offence provisions relating to the use of works that infringe copyright (section 42(1)), as well as for the circumvention of technological protection measures (section 42 (3.1)) and the infringement of rights management information (section 42 (3.2)).

The Criminal Code also outlines offences relating to forgery of a trademark, fraud, passing off goods as those of another, and making use, in association with goods, of a description that is false in a material respect respecting certain enumerated items such as quality, mode of manufacture and geographical origin, among others. While the Trademarks Act and Copyright Act both provide for penalties upon conviction of indictment to a fine of up to CAD 1 million, imprisonment for up to five years or both; and upon summary conviction to a fine of up to CAD 25,000 or imprisonment for a term of not more than six months, or both, in practice the penalties awarded by Canadian courts are at the lower end of the spectrum except in the most egregious and extreme cases. It is extremely rare for the court to impose jail time.

Criminal prosecutions in Canada require proof, beyond reasonable doubt, of the act itself (actus reus) and subjective knowledge (mens rea) of the prohibited act to secure a conviction. Courts have found that mens rea can be proved by circumstantial evidence, such as prior civil lawsuits or judgments of infringement or possession of previously delivered cease and desist letters from rights holders. 

When imposing penalties for copyright or trademark offences, courts apply statutory principles of sentencing. The fundamental purpose of sentencing is to contribute, along with crime prevention initiatives, to respect for the law and maintenance of a just, peaceful and safe society by imposing just penalties that have one or more of the following objectives: 

• to denounce unlawful conduct; 
• to deter the offender and other persons from committing offences; 
• to separate offenders from society where necessary; 
• to assist in rehabilitating offenders; 
• to provide reparations for harm done to victims or the community; and 
• to promote a sense of responsibility in offenders and acknowledgement of the harm done to victims and the community. 

A sentence must be proportionate to the gravity of the offence and the degree of responsibility of the offender.

Civil remedies are the most commonly employed means to address counterfeiting issues. The framework for civil actions is primarily statutory through the Trademarks Act and the Copyright Act. While there are common law prohibitions against passing off registered or unregistered trademarks, section 7 of the Trademarks Act embodies the substance of common law passing off and is most frequently used. Actions commenced for infringement under these statutes may be brought in a provincial court or in the Federal Court. The applicable statutes may include the following remedies: 

• injunctions; 
• preservation orders; 
• damages; 
• accounting of profits; 
• destruction of infringing goods; 
• punitive damages; and
• recovery of a portion of legal costs. 

Under the Trademarks Act, damages and accounting for profits are alternative remedies. Under the Copyright Act, damages and disgorgement of the infringer’s profits are both recoverable. 

The Federal Courts Rules expressly provide for the preservation of the subject matter of litigation. Typically, motions for preservation are brought on notice to the alleged infringer and, if successful, an order is issued requiring the alleged infringer to deliver up the subject merchandise pending the final outcome of the lawsuit. 

An Anton Piller order (typically granted ex parte) allows the plaintiff, with the defendant’s permission, to enter the defendant’s premises and remove applicable evidence, including documents, devices and items. While refusal potentially subjects a party to contempt of court proceedings, compliance is nevertheless voluntary and parties executing Anton Piller orders cannot breach the peace if the party served refuses to cooperate. An independent supervising solicitor, who does not represent the rights holder, supervises the execution of Anton Piller orders and must fully explain the terms of the order, supervise any permitted searches of the subject premises and ensure that any potentially privileged documents are preserved in a manner that allows the party served to assert privilege before they are disclosed. Law enforcement typically attends to keep the peace and to assure the party served that the process is legitimate. 

Canadian courts have issued rolling Anton Piller orders in John Doe and Jane Doe actions, in which the identities of the infringers are not yet ascertained. Following execution of a rolling Anton Piller order, the courts have an established mechanism for reviewing execution of the service and adding the party served as a named party defendant. 

Civil remedies for trademark and copyright infringement have the potential for greater damages than have been awarded as fines in the criminal context. However, where counterfeiters fail to keep business records, ascertaining appropriate damages or quantification of profits is difficult. In such circumstances, the Federal Court jurisprudence has accepted the concept of minimum compensatory damage awards for trademark counterfeiting and piracy. Where no documents are delivered up by the defendant to quantify sales, profits and/or damages, the court regularly awards damages to successful litigants using a defined scale of damages, depending on the nature of the business (for example, itinerant vendor, fixed retail, wholesaler or importer). Minimum compensatory damages have been awarded on a ‘per instance of infringement’ basis or on a ‘per inventory turnover’ basis.

Most recently, in the Federal Court decision of Lululemon Athletica Canada Inc. v. Campbell, 2022 FC 194, the Court awarded an injunction, compensatory damages, and punitive damages to the rights holder by way of summary trial. On a summary trial, the Court renders judgment on the basis of affidavit evidence, which may be subject to cross-examination out of court. As noted in the decision, a summary trial may lead to a quicker and less expensive resolution of the matter and is increasingly becoming an attractive option for rights holders seeking an efficient alternative to a complex trial. When there is unquestionable evidence of trademark infringement, summary proceedings should be considered by rights holders and their counsel.

In Canada, grey market goods, also referred to as parallel imports, are trademarked goods that are imported into a market where they were not intended or authorized to be sold. Since the goods were manufactured by the brand owner, they are not considered to be counterfeit, and traditional trademark and copyright avenues may not be readily available. However, if the activity depreciates the value of the goodwill of the trademark/rights holder, or the goods do not adhere to the labelling requirements in Canada, a successful action may be brought. A successful action may also be brought if an unauthorized seller is using rights holder’s trademarks and/or copyrights to facilitate and market the sale of the goods. Additionally, Canadian courts have found, specifically in Mars Canada Inc. v. Bemco Cash & Carry Inc. (2018 ONCA 239, see www.ontariocourts.ca/decisions/2018/2018ONCA0239.htm), that a settlement agreement was sufficient and enforceable to enjoin the defendant from continuing in grey marketing activities. 

In addition to the legislation discussed above, the Consumer Product Safety Act (RSC 2010, c 21) and Consumer Packaging and Labelling Act (RSC, 1985, c C-38) prohibit the manufacture, import, sale or advertisement of consumer products that could pose an unreasonable danger to the health or safety of Canadians. Other prohibitions relate to the packaging, labelling or advertisement of a consumer product in a manner that is false, misleading or deceptive in respect of its safety. For example, the unauthorised use of certification marks is prohibited. The prohibitions and powers in the act, including a right of recall, may prove to be useful tools in the fight against counterfeit consumer products, provided that the consumer product poses a danger to human health or safety. The Competition Act (RSC, 1985, c. C-34) also contains both criminal and civil provisions that are geared towards the prevention of anti-competitive practices in the marketplace, which include the marketing and promotion of a product in a false and/or misleading way. 

While it is often difficult to convince law enforcement to proceed with a criminal investigation/enforcement litigation of counterfeiting and piracy cases are often a cost-effective strategy if the illegal conduct is clear and the evidence is easy to obtain.

Counterfeiters are constantly evolving their methods to exploit gaps in enforcement and detection protocols and methods. Online, specifically on online platforms, counterfeiters are increasingly using e-commerce websites and social media platforms to sell and market counterfeit goods. Some are taking advantage of new features that are rolled out to prey on consumers, using sophisticated online storefronts that mimic legitimate businesses, making it harder for consumers to distinguish between authentic and counterfeit products. In addition to mimicking the look and feel of a brand’s website, many bad actors are also registering domain names and social media profiles that closely resemble those of well-known brands. Overall, the biggest and most popular method has been the leveraging of social media platforms and influencer marking to reach a broader audience and promote counterfeit and unauthorized goods.

Since the COVID-19 pandemic there has been a notable resurgence of in-person retail. Counterfeit goods are increasingly appearing not only in storefronts but also prominently displayed and marketed in physical locations, alongside their online promotion and sales. Many enterprising counterfeiters are utilizing brick-and-mortar home based businesses alongside their online business.

Online, while “live shopping” through video streams may not be as prevalent as it was in previous years, it remains a popular avenue for commerce. Many continue to participate in live sales and temporary events that are not archived online. This method provides a convenient means for individuals to evade detection and enforcement, allowing them to showcase and distribute counterfeit goods while discreetly informing shoppers about their inventory.

Top of Form

Bottom of Form

Dupe culture, characterized by the growing trend of imitating luxury and high-end brands with affordable “replicas” that are often blatant counterfeits, has exacerbated the counterfeit problem by normalizing and glamorizing counterfeit goods. This culture fuels demand for fake products, making them more socially acceptable and desirable. As a result, counterfeiters face less resistance, and the market for such goods expands, complicating enforcement efforts and increasing the prevalence of counterfeit items.

This cultural shift has led to an increase in listings online on both online marketplaces and social media platforms. Both of these mediums feature a higher volume of counterfeit goods, as sellers capitalize on the trend to reach eager buyers. The ease of creating and managing online storefronts amplifies this effect. It appears easier to evade detection when selling “dupes” because the rules and protocols of online marketplaces and social media platforms are often ambiguous regarding certain types of infringements. Physical stores have followed suit, inspired by the popularity of dupes, offering a broader range of imitation products to meet the heightened demand. Overall, dupe culture has contributed to a significant rise in the availability and sales of counterfeit goods, both in digital spaces and traditional retail environments.

There is a continued push towards the sharing of both costs and information on counterfeiters and their illicit businesses and to promote legislative change to allow rights owners to know whether other rights owners are involved in the same customs case. Presently, if the Canada Border Services Agency (CBSA) detains a suspected shipment of counterfeit goods, that information is not allowed to be shared by customs officers between brands who filed Requests for Assistance (RFA’s) with CBSA and whose suspected counterfeit goods are on the same shipment, due to privacy legislation concerns.

Platforms that have proven to be popular with counterfeiters and therefore problematic for rights owners in recent years include: 

• Meta: Facebook and Instagram.
• Facebook Marketplace.
• TikTok.
• Alibaba/AliExpress.
• DHGate
• Etsy.
• Amazon.

Instagram and TikTok have remained problematic in the last 12-18 months. TikTok’s growth in North America has led to a surge in user-generated content and commercial activity. This increase has provided a generative ground for sellers of counterfeit goods to exploit the platform’s wide reach and high engagement levels. Furthermore, counterfeiters are increasingly leveraging popular influencers to promote their counterfeit and/or unauthorized products — in many cases the “Dupe Influencer” has become fashionable and popular. Overall, the high-paced and dynamic online environments curated by social media have created the urge for more robust and adaptive measures to address these growing issues. 

Apart from the Copyright Act, Canada has no specific legislation addressing the online sale of counterfeit goods. Instead, traditional methods are used. By way of example, copyright owners alleging infringement against unidentified BitTorrent users have advanced motions to compel third-party discovery of the Internet Service Provider (ISP), requesting the handover of subscriber information. In addition, rights holders submit takedown requests directly to the ISP, registrar, third-party marketplace or social media platform in an effort to remove the counterfeit goods, citing the Trademarks Act, Copyright Act and often the terms of service/use prescribed by the online platform. 

Generally, when faced with an online infringer that may also advertise and sell goods through a physical storefront, before engaging with law enforcement or determining a plan that includes enforcement on the ground, additional open source intelligence is performed to determine quantities and the breadth of goods and rights holders involved. 

The CDRP is the administrative procedure set up by the Canadian Internet Registration Authority (CIRA, see www.cira.ca) to assist rights holders that meet CIRA’s Canadian Presence Requirements in obtaining quick, out-of-court and low-cost dispute resolution of bad faith registration of .ca domain names. A complaint may be filed against the registrant of a domain name if: 

• the rights holder can prove its rights in the trademark; 
• the registrant has no legitimate interest in the domain name; and
• the domain name was registered in bad faith. 

The Canadian International Internet Dispute Resolution Centre (CIIDRC, see www.ciidrc.org) was approved by ICANN in 2019 to become a Uniform Domain Name Dispute Resolution Policy (UDRP) service provider. 

Though not specific to Canada, there has been an increasing trend towards the registration of domains related to the COVID-19 pandemic. Also, in recent months, there has been a significant rise in the registration of domains that infringe on well-known brands and rights holders as it relates to the virtual world, “Metaverse” and popular, new relevant generic top-level domains. 

There has been an unprecedented surge in the creation of fake websites and domains. Advanced web development tools and easy domain registration make it simple and cheap for people to create deceptive sites that look like real businesses. The internet’s anonymity lets these individuals hide their identities and intentions. The growing size of the digital world and the fast pace of online transactions make it hard to catch and stop these fraudsters. Consequently, the number of fake websites and domains keeps increasing, taking advantage of weak oversight to trick consumers.

Top of Form

Bottom of Form

Some of the most notable trends in domain misuse involves malicious actors employing country abbreviations within domain names, implementing geo-blocking to restrict access from specific IP addresses, and utilizing subdomains and third-level domains.

New top-level domains (TLDs) have exacerbated the domain issue for rights holders by providing additional avenues for fraudulent networks to set up fake websites and online stores. New TLDs and frequently used, older TLDs such as .shop and .store expand the range of available domain names, making it easier for fraudsters to register convincing and deceptive domains that mimic legitimate businesses. This proliferation of TLDs increases the opportunities for creating fraudulent sites, complicating efforts to identify and address deceptive online activities. New TLDS as well as common generic TLDs remain popular among various types of websites, including many that engage in spamming, phishing, and other fraudulent activities due to their low cost and wide availability.Top of FormBottom of Form

Canadians have spent much of the last few years online following the COVID-19 pandemic. This shift has been accompanied by an increase in the need and demand for the online sale of goods and many social media outlets and online marketplaces have ramped up their technologies and functionalities to cater to the new normal. Unfortunately, counterfeit networks have been able to capitalize on the live stream features and selling functions that many online platforms have incorporated. The updates and changes to Canadian specific marketplace do not differ from the global marketplace with a Canadian extension (eBay, Amazon, Etsy). 

The use of abbreviations, pseudonyms and typographical devices, among other techniques, have assisted bad actors in their attempt to evade enforcement online. Additionally, the proliferation of hidden links on popular e-commerce platforms is a popular strategy, often based on an “Order This – Get This” model where, typically, sellers advertise for sale a generic, non-branded item and then send a different product to the purchaser - which is oftentimes counterfeit or infringing. With respect to live streams through online and social media platforms, it is increasingly difficult to detect, capture, and enforce against sellers who use these various features to “go live” and sell through a livestream because the content can be deleted immediately at the end of the sale. Additionally, the recent surge of NFTs in the counterfeit space and new online platforms catering to the digital world will be an important area for rights holders and brands to monitor. The rampant surge of counterfeit NFTs and digital content will certainly create a shift in priorities with respect to online brand protection for the foreseeable future. 

Social media serves as a powerful catalyst for the sale of counterfeit goods, offering a broad platform that facilitates the promotion and distribution of such illicit products. Despite efforts to address the issue, social media platforms remain overwhelmed by individuals selling counterfeit goods. Controlling this problem is challenging, but platforms must improve their responsiveness to emerging trends and evolving tactics that attempt to bypass enforcement measures.

In Canada, it is anticipated that regulations related to AI at the federal level will be introduced by way of the Artificial Intelligence and Data Act (AIDA), which is part of Bill C-27. This bill also encompasses the Consumer Privacy Protection Act, which updates existing federal privacy legislation, and the Personal Information and Data Protection Tribunal Act. Under the AIDA, the Minister’s powers to gather, compel the production of, or disclose relevant information for regulatory or administrative purposes are consistent with similar powers upheld as reasonable in other regulatory contexts

As detailed by the Government of Canada in the AIDA Companion document published by Innovation, Science and Economic Development Canada (ISED): “the Government has developed a framework intended to ensure the proactive identification and mitigation of risks in order to prevent harms and discriminatory outcomes, while recognizing the unique nature of AI ecosystem and ensuring that research and responsible innovation are supported. As the technology evolves, new capabilities and uses of AI systems will emerge, and Canada needs an approach that can adapt to the shifting landscape. The Government will take an agile approach to AI regulation in the coming years by developing and evaluating regulations and guidelines in close collaboration with stakeholders on a regular cycle and adapting enforcement to the needs of the changing environment.” 

The Government has indicated that the provisions of AIDA would come into force no sooner than 2025, pursuant to their detailed consultation process. 

At the provincial level, no specific AI regulation laws have been introduced yet. However, the Innovation Council of Quebec, a government-mandated organization, has recently recommended that the provincial legislature enact legislation specifically aimed at regulating AI. As anticipated, intellectual property laws may affect several aspects of AI development and use.

In September 2023, the Federal Government of Canada announced a “Voluntary Code of Conduct on the Responsible Development and Management of Advanced Generative AI Systems.” The Code is designed to offer Canadian companies temporary common standards, allowing them to voluntarily show that they are responsibly developing and using generative AI systems until formal regulations are established (see www.ised-isde.canada.ca/site/ised/en/voluntary-code-conduct-responsible-development-and-management-advanced-generative-ai-systems).

Five Canadian law societies have provided guidance for lawyers using generative AI in their practice. The Law Societies of Alberta, Manitoba, Saskatchewan, British Columbia, and Ontario offer resources detailing the professional and ethical responsibilities of licensees when employing AI technology. The Law Society of Ontario, by way of example, has published a White Paper, Practice Notice, Checklist and Practice Tips Tool to provide guidance for licensees on the topic of AI and generative AI. The key takeaway for any lawyer before using any new technology is that they keep their professional and legal obligations at the forefront and obtain all of the necessary information to ensure compliance with ethical standards and responsibilities. 

The Federal Court’s Strategic Plan 2020-2025 mentions the court’s interest in exploring the use of AI (see www.fct-cf.gc.ca/content/assets/pdf/base/2020-07-15%20Strategic%20Plan%202020-2025.pdf). Courts and tribunals now mandate that lawyers reveal if any part of their submissions has been generated by AI. In December 2023, the Federal Court released an updated notice on AI usage in proceedings. As stated in the notice, the court expects parties to proceedings before the court to inform it, and each other, if they have used AI to create or generate new content in preparing a document filed with the court. If any such content has been included in a document submitted to the court, by or on behalf of a party or a third-party participant (“intervener”), the first paragraph of the text in that document must disclose that AI has been used to create or generate that content. (See www.fct-cf.gc.ca/en/pages/law-and-practice/artificial-intelligence.)

This notice applies to all documents that are: 

• submitted to the court; and 
• prepared for the purpose of litigation. 

The court firmly states that, for its part, the court will not use AI (or automated decision-making tools) to make its decisions or render its judgments, without first engaging in public consultation.

The AIDA aims to protect individuals against a range of serious risks associated with the use of AI systems, including risks of physical or psychological harm or biased output with adverse impacts on individuals. Regulatory requirements are to be set out in future regulations that must satisfy Charter of Rights and Freedoms standards. As detailed in the Charter Statements published in relation to the proposed B C-27 Legislation, “any potential impacts on protected expression may be viewed as proportionate to the pressing public interest in addressing exploitation of unlawful practices with personal information in the development of AI systems or the making available of AI systems that are likely to, and do, cause serious harms to individuals, their property or other economic interests.”

The Government of Canada remains actively involved in global discussions on AI regulations and is committed to collaborating with international partners to promote responsible development and use of AI.

In practice, we do not deal with deepfakes on a regular basis. Deepfakes are often based on advanced AI where images, voices, videos or text are digitally altered or fully generated by AI. The Canadian Security Intelligence Service published a notice on the Evolution of Disinformation (A Deepfake Future, see www.canada.ca/en/security-intelligence-service/corporate/publications/the-evolution-of-disinformation-a-deepfake-future/deepfakes-a-real-threat-to-a-canadian-future.html) and shared a statistic that over 90% of deepfakes available online are non-consensual pornographic clips of women. As of October 2022, there were over 57 million hits for ‘deepfake porn’ on Google alone. Women are almost always the non-consenting targets or subjects of pornographic deepfake videos, and current legislation offers victims little protection or justice, however not all harm caused by deepfakes is of the NSFW variety. 

In the context of rights holders, anti-counterfeiting and brand protection, when a brand’s reputation is jeopardized by the misuse of deepfakes, it is crucial to act swiftly. Establishing robust protocols with platforms is essential for the prompt and effective reporting and removal of harmful content. In addition to having a protocol in place, it is vital to stay informed about the actions taken by various platforms and jurisdictions regarding deepfakes and their reporting mechanisms. 

Cryptocurrency trading is legal in Canada, however, as stated by the Financial Consumer Agency of Canada, cryptoassets are not legal tender in Canada. A government or central bank doesn’t issue or oversee them. While cryptocurrencies like Bitcoin and Ethereum are legal and can be used for transactions, they are not recognized as official currency by the Canadian government. Federal and provincial/territorial deposit insurance plans do not cover cryptoassets. By way of example, the Canada Deposit Insurance Corporation (CDIC) covers eligible deposits in Canadian dollars at member financial institutions if the institution fails but not crypto currencies.

As it relates to cryptocurrencies and pertinent crypto technology dealings, all relevant regulations must be carefully considered, including but not limited to federal banking laws, provincial loan and trust regulations, consumer protection laws, privacy laws, proposed retail payments legislation, trade and economic sanctions, extra-provincial business registration, advertising and marketing laws, anti-spam regulations, and language laws. 

In Canada, cryptocurrency regulation is spread across different government levels and agencies, depending on the activity involved. Despite this complexity, Canadian regulators are generally open and innovative. Canada has various regulations and guidelines governing the use and trading of cryptocurrencies, although it does not have a single comprehensive piece of legislation specifically dedicated to cryptocurrency. Various regulatory bodies and frameworks address different aspects of cryptocurrency activity, including but not limited to the Canadian Securities Administrators (CSA), The Financial Transactions and Reports Analysis Centre of Canada (FINTRAC), Canada Revenue Agency (CRA), and the Office of the Superintendent of Financial Institutions (OSFI). 

In 2022, the Canadian Federal Court granted a novel dynamic website-blocking injunction to aid copyright holders in combating online piracy. In the case of Rogers Media Inc. v. John Doe 1, 2022 FC 775, the plaintiff media companies requested an interlocutory injunction to compel Canadian internet service providers to block IP addresses hosting copyright-infringing live streams of National Hockey League (NHL) broadcasts. Building on its prior precedent of issuing site-blocking injunctions for specific websites, the Federal Court expanded this approach by directing ISPs to block access to certain IP addresses identified in real time during NHL games.

This order was a groundbreaking decision in North America. The Court aimed to balance the plaintiffs’ financial and copyright interests with public access to content and the ISPs’ network and competitive concerns. ISPs are required to implement dynamic blocking based on their capacity during each game. ISPs are not obligated to verify if the IP addresses provided are hosting infringing content and the order confirms that ISPs can raise objections and challenge the order or similar future orders. 

After the NHL site-blocking order, a similar order was swiftly granted for FIFA World Cup streaming. Building on these successes, sports rights holders targeted Major League Baseball (MLB) and other sports league pirates next. These blocking injunctions are part of broader lawsuits against pirate streaming server operators. The injunctions serve as temporary measures to mitigate damage while pursuing legal claims against the defendants. Rather than filing lawsuits solely for blocking, this approach is more practical. Since the 2022 Rogers Media Inc. v. John Doe decision, rights holders have refined their strategy in Canada, broadening their blocking efforts to cover more ground. 

In Rogers Media Inc et al v. John Doe 1 et al, 2024 FC 1082, the court issued a “wide” injunction against the unknown John Doe Respondents who, without authorization from the applicants, provided access to pirated sports streams of protected live content, specifically NHL games, National Basketball Association (NBA) games, and Premier League soccer matches. As stated in the order, “this Judgment will terminate two years after it is issued, other than the permanent injunction against the John Doe Respondents. Practically speaking, that injunction will end when the applicants’ infringed rights come to an end. If motions are filed to amend Schedule 1, the Court may revisit the sunset provision in the Judgment as it concerns the permanent injunction.” This “wide” injunction requires Canadian ISPs to block their subscribers’ access to pirated streams of NHL, NBA and Premier League games in real time as they are identified and notified to them by the Applicants. This can also extend to other sports leagues and was implemented in July 2024, when the court issued an order to include the eagerly awaited final match of UEFA European Football Championship. The Court’s swift action enabled the blocking of pirated streams for this event, a feat that previous site-blocking measures could not have achieved.

While combating piracy remains a global challenge, recent orders demonstrate that Canadian rights holders are actively optimizing and streamlining their blocking measures. Canadian jurisprudence, notably in the Federal Court of Canada, has been open to adopting existing and creative remedies in the case of new and emerging technologies. Query whether Canadian legislation could be more protective of intellectual property rights in providing a useful and more consistent approach in this area.

Not applicable.

The CBSA border enforcement program has been in place since 2015. IP rights holders can file a RFA (see www.cbsa-asfc.gc.ca/publications/forms-formulaires/bsf738-eng.html) document with Customs (valid for two years and renewable in two-year increments) and, in doing so, record their registered trademarks, copyrights and geographical indications with Customs. Customs has ex officio powers to detain (pending a civil remedy being pursued by the IP owner) suspected shipments of counterfeit products or pirated works. 

If a request for assistance is filed (there is no government fee to file), Customs is authorized to detain suspected shipments of counterfeit products or pirated works pertaining to the recorded rights, and to share information with the rights holder to give it an opportunity to pursue a civil remedy. Detention by Customs cannot exceed 10 working days (subject to a further 10 working days (or five days for perishable goods) on request of the rights holder). If the goods are counterfeit or the works pirated, and the importer does not agree to a settlement of the matter, the rights holder must use this detention period to commence proceedings in court against the importer and seek an order for seizure and destruction of the counterfeit products or pirated works. The rights holder is responsible for all applicable storage, handling and destruction charges of the detained goods. Customs has no authority to seize or destroy counterfeit products or pirated works on its own. In practice, in the vast majority of cases in the past several years the importer has paid the cost of storage and destruction as part of the settlement process. 

There is significant permitted disclosure by Customs to the rights holder that includes providing a sample of the goods and information about the goods that could assist the rights holder in pursuing a remedy. Limitations restrict the use of that information for any purpose other than to determine whether the import or export of the goods at issue is an infringement of the recorded rights, or to pursue civil proceedings in court or for the purpose of reaching an out-of-court settlement. 

If the rights holder commences proceedings, substantive remedies – both equitable and statutory – are available under the Trademarks Act and the Copyright Act, including declaratory relief, injunctive relief, mandatory relief (i.e. forfeiture and destruction) damages and costs. Statutory damages are available, only under the Copyright Act. Notwithstanding that the legislation permits Customs to exercise discretion when contacting registered rights holders to initiate enquiries regarding the authenticity of goods at the border, in practice, Customs does not exercise that discretion unless the registered rights holder has filed a request for assistance. 

Since 2020, the CBSA’s RFA program has seen significant and promising growth. More than 4,455 IPRs have been recorded at the Border and over 2,600 shipments have been intercepted in the past 12 months. In addition to the encouraging work done by the Border Services Officers, the response by rights holders has also been positive and nearly 90% of the detained shipments (based on the statistics from the past two years) result in either the abandonment of the shipment or an out-of-court settlement and subsequent destruction of the goods. 

The RFA program in Canada is a beneficial and inexpensive tool for rights holders and provides an opportunity for enhanced brick-and-mortar and online enforcement. Rights holders are strongly encouraged to register their rights with the CBSA and engage in training customs, in addition to law enforcement, on their relevant and well-known counterfeiting concerns and product identification. 

The COVID-19 pandemic created a new normal and law enforcement, brand owners, and IP practitioners in Canada shifted their focus to targeting unlawful activities connected to individuals attempting to exploit the pandemic for quick profit and personal gain. A heightened importance was placed on the health and safety of Canadians and rights owners will likely continue to focus on the fraud and illegal activities that accompany the increased demand for medical supplies, protective wear and related accessories as they monitor their global brand protection efforts. In Canada, specifically, from 2020 through 2021, there was an increase in protective wear, specifically cloth masks, detained at the border and involved in enforcement by rights holders both online and at physical storefronts. This trend will likely continue for the immediate future.

Currently, Canada does not have a national intellectual property law enforcement coordination body, though it has been the subject of recent discussions had by the Canadian Anti-Counterfeiting Network (CACN, see www.cacn.ca/law-enforcement-education-resources). CACN represents a coalition of brand owners, legal, certification and investigative firms and associations that have united in the fight against product counterfeiting, fraud and copyright piracy in Canada. Additionally, in March 2022, the Ontario government announced the launch of a new agency aimed to assist businesses and serve as a “go-to resource for IP expertise.” The provincial government has stressed the importance of driving long-term competitiveness through the prioritization of IP and IP-related initiatives. 

6.1 Can I record pending trademark registration (Applications) at the Border with CBSA?

No. You can only file registered trademarks and geographical indications. While not mandatory, it is recommended to register one’s copyright before filing an RFA as well. You can update your RFA on file as necessary, this includes adding newly registered trademarks and identification documents to your file. It is imperative to notify the CBSA of a change or lapse in ownership of copyright, trademarks, or geographical indications. 

6.2 Is there a fee to file a Request for Assistance with Canada Border Services Agency?

There is no government registration fee to file an RFA with the CBSA. Although rare, a bond may be required in certain circumstances. 

6.3 Are there statutory damages for trademark counterfeiting and piracy?

There are no statutory damages for trademark counterfeiting, but several groups have been urging the government to amend its legislation to incorporate statutory damages. There are statutory damages provisions contained in the Copyright Act, although there is discretion for the court to reduce the amounts even below minimum limits.

Recently, some Canadian politicians have become more interested in addressing the counterfeiting issues that affect Canadian consumers, most notably in the automotive sector. 

Organizations active in Canada and helpful to rights owners in protecting brands include the following.

Canadian Anti-Counterfeiting Network (CACN)

CACN is an organization focused on combating counterfeiting and protecting intellectual property rights in Canada. CACN’s primary mission is to prevent and reduce the prevalence of counterfeit goods in Canada. They work to safeguard the interests of businesses and consumers by promoting the enforcement of intellectual property laws and fighting against counterfeiting. CACN advocates for stronger IP protection and enforcement measures. They engage with policymakers, law enforcement, and other stakeholders to influence legislation and improve the legal framework for combating counterfeiting. The organization fosters collaboration among various stakeholders, including businesses, government agencies, and law enforcement. By working together, they aim to create a more effective response to counterfeiting.

More information can be found here: www.cacn.ca

Canadian Anti-Fraud Centre (CAFC) 

CAFC is a key resource in Canada for addressing and combating fraud. CAFC serves as a central repository for reporting various types of fraud, including scams, financial fraud, and cybercrime. They collect and analyze data on fraud incidents to understand trends and improve responses. CAFC offers assistance and guidance to individuals and businesses who have been affected by fraud. This includes advice on steps to take if you’ve been defrauded and how to report incidents. Importantly, CAFC provides resources and information to educate the public about different types of fraud, how to recognize them, and how to protect themselves.

More information can be found here: www.antifraudcentre-centreantifraude.ca

Intellectual Property Institute of Canada (IPIC)

IPIC is a professional organization that supports and advocates for intellectual property rights holders in Canada. IPIC provides valuable services and resources to its members, who include IP professionals such as patent and trademark agents, lawyers, and other practitioners. IPIC represents the interests of IP professionals and rights holders in policy discussions and legislative processes. IPIC is dedicated to assisting in shaping IP laws and regulations to better protect and promote the interests of rights holders. IPIC also engages in public outreach to increase awareness about the importance of intellectual property rights and anti-counterfeiting efforts across Canada. 
More information can be found here: www.ipic.ca

It should be noted that the International Anti-counterfeiting Coalition (IACC) and the International Trademark Association (INTA) are international organizations very involved and helpful in respect of intellectual property matters affecting Canada, with robust Committees devoted to Canadian issues.