Combating Counterfeit Products Act (S.C. 2014, c. 32)
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Assented to 2014-12-09
R.S., c. T-13TRADE-MARKS ACT
37. (1) Subsection 40(1) of the Act is replaced by the following:
Marginal note:Registration of trade-marks
40. (1) When an application for the registration of a trade-mark, other than a proposed trade-mark or proposed certification mark, is allowed, the Registrar shall register the trade-mark and issue a certificate of its registration.
(2) Subsection 40(2) of the French version of the Act is replaced by the following:
Marginal note:Marque de commerce projetée
(2) Lorsqu’une demande d’enregistrement d’une marque de commerce projetée est admise, le registraire en donne avis au requérant. Il enregistre la marque de commerce et délivre un certificat de son enregistrement après avoir reçu une déclaration portant que le requérant, son successeur en titre ou l’entité à qui est octroyée, par le requérant ou avec son autorisation, une licence d’emploi de la marque de commerce aux termes de laquelle il contrôle directement ou indirectement les caractéristiques ou la qualité des produits et services a commencé à employer la marque de commerce au Canada, en liaison avec les produits ou services spécifiés dans la demande.
(3) Subsection 40(3) of the Act is replaced by the following:
Marginal note:Proposed certification mark
(2.1) When an application for the registration of a proposed certification mark is allowed, the Registrar shall give notice to the applicant accordingly and shall register the certification mark and issue a certificate of registration on receipt of a declaration that the use of the certification mark in Canada, in association with the goods or services specified in the application, has been commenced by an entity that is licensed by or with the authority of the applicant to use the certification mark.
Marginal note:Abandonment of application
(3) An application for registration referred to in subsection (2) or (2.1) is deemed to be abandoned if the Registrar has not received the declaration before the later of
(a) six months after the date of the Registrar’s notice, and
(b) three years after the filing date of the application in Canada.
38. (1) The portion of subsection 41(1) of the Act before paragraph (a) is replaced by the following:
Marginal note:Amendments to register
41. (1) The Registrar may, on application by the registered owner of a trade-mark made in the prescribed manner and on payment of the prescribed fee, make any of the following amendments to the register:
(2) Subsection 41(1) of the Act is amended by striking out “or” at the end of paragraph (d), by adding “or” at the end of paragraph (e) and by adding the following after paragraph (e):
(f) subject to the regulations, merge registrations of the trade-mark that stem, under section 39.1, from the same original application.
(3) Section 41 of the Act is amended by adding the following after subsection (2):
Marginal note:Obvious error
(3) The Registrar may, within six months after an entry in the register is made, correct any error in the entry that is obvious from the documents relating to the registered trade-mark in question that are, at the time that the entry is made, on file in the Registrar’s office.
39. Subsection 45(1) of the Act is replaced by the following:
Marginal note:Registrar may request evidence of user
45. (1) The Registrar may at any time — and, at the written request made after three years from the date of the registration of a trade-mark by any person who pays the prescribed fee, the Registrar shall, unless he or she sees good reason to the contrary — give notice to the registered owner of the trade-mark requiring the registered owner to furnish within three months an affidavit or a statutory declaration showing, with respect to all the goods or services specified in the registration or to those that the Registrar may specify in the notice, whether the trade-mark was in use in Canada at any time during the three-year period immediately preceding the date of the notice and, if not, the date when it was last so in use and the reason for the absence of such use since that date.
40. Section 48 of the Act is amended by adding the following after subsection (3):
Marginal note:Removal of registration
(4) The Registrar shall remove the registration of a transfer of a registered trade-mark on being furnished with evidence satisfactory to him or her that the transfer should not have been registered.
41. Section 49 of the Act and the heading before it are replaced by the following:
CHANGE OF PURPOSE IN USE OF TRADE-MARK
Marginal note:Change of purpose
49. If a sign or combination of signs is used by a person as a trade-mark for any of the purposes or in any of the manners mentioned in the definition “certification mark” or “trade-mark” in section 2, no application for the registration of the trade-mark shall be refused and no registration of the trade-mark shall be expunged, amended or held invalid merely on the ground that the person or a predecessor in title uses the trade-mark or has used it for any other of those purposes or in any other of those manners.
42. The Act is amended by adding the following after section 51:
OFFENCES AND PUNISHMENT
Marginal note:Sale, etc., of goods
51.01 (1) Every person commits an offence who sells or offers for sale, or distributes on a commercial scale, any goods in association with a trade-mark, if that sale or distribution is or would be contrary to section 19 or 20 and the person knows that
(a) the trade-mark is identical to, or cannot be distinguished in its essential aspects from, a trade-mark registered for such goods; and
(b) the owner of that registered trade-mark has not consented to the sale, offering for sale, or distribution of the goods in association with the trade-mark.
(c) [Deleted]
Marginal note:Manufacture, etc., of goods
(2) Every person commits an offence who manufactures, causes to be manufactured, possesses, imports, exports or attempts to export any goods, for the purpose of their sale or of their distribution on a commercial scale, if that sale or distribution would be contrary to section 19 or 20 and the person knows that
(a) the goods bear a trade-mark that is identical to, or that cannot be distinguished in its essential aspects from, a trade-mark registered for such goods; and
(b) the owner of that registered trade-mark has not consented to having the goods bear the trade-mark.
(c) [Deleted]
Marginal note:Services
(3) Every person commits an offence who sells or advertises services in association with a trade-mark, if that sale or advertisement is contrary to section 19 or 20 and the person knows that
(a) the trade-mark is identical to, or cannot be distinguished in its essential aspects from, a registered trade-mark registered for such services; and
(b) the owner of the registered trade-mark has not consented to the sale or advertisement in association with the trade-mark.
(c) [Deleted]
Marginal note:Labels or packaging
(4) Every person commits an offence who manufactures, causes to be manufactured, possesses, imports, exports or attempts to export any label or packaging, in any form, for the purpose of its sale or of its distribution on a commercial scale or for the purpose of the sale, distribution on a commercial scale or advertisement of goods or services in association with it, if that sale, distribution or advertisement would be contrary to section 19 or 20 and the person knows that
(a) the label or packaging bears a trade-mark that is identical to, or that cannot be distinguished in its essential aspects from, a registered trade-mark;
(b) the label or packaging is intended to be associated with goods or services for which that registered trade-mark is registered; and
(c) the owner of that registered trade-mark has not consented to having the label or packaging bear the trade-mark.
(d) [Deleted]
Marginal note:Trafficking in labels or packaging
(5) Every person commits an offence who sells or offers for sale, or distributes on a commercial scale, any label or packaging, in any form, if the sale, distribution or advertisement of goods or services in association with the label or packaging would be contrary to section 19 or 20 and the person knows that
(a) the label or packaging bears a trade-mark that is identical to, or that cannot be distinguished in its essential aspects from, a registered trade-mark;
(b) the label or packaging is intended to be associated with goods or services for which that registered trade-mark is registered;
(c) the owner of that registered trade-mark has not consented to having the label or packaging bear the trademark.
Marginal note:Registration of trade-mark
(5.1) In a prosecution for an offence under any of subsections (1) to (5), it is not necessary for the prosecutor to prove that the accused knew that the trade-mark was registered.
Marginal note:Punishment
(6) Every person who commits an offence under any of subsections (1) to (5) is liable
(a) on conviction on indictment, to a fine of not more than $1,000,000 or to imprisonment for a term of not more than five years or to both; or
(b) on summary conviction, to a fine of not more than $25,000 or to imprisonment for a term of not more than six months or to both.
Marginal note:Limitation Period
(7) Proceedings by way of summary conviction for an offence under this section may be instituted no later than two years after the day on which the subject-matter of the proceedings arose.
Marginal note:Disposition order
(8) The court before which any proceedings for an offence under this section are taken may, on a finding of guilt, order that any goods, labels, or packaging in respect of which the offence was committed, any advertising materials relating to those goods and any equipment used to manufacture those goods, labels or packaging be destroyed or otherwise disposed of.
Marginal note:Notice
(9) Before making an order for the destruction or other disposition of equipment under subsection (8), the court shall require that notice be given to the owner of the equipment and to any other person who, in the opinion of the court, appears to have a right or interest in the equipment, unless the court is of the opinion that the interests of justice do not require that the notice be given.
43. The Act is amended by adding the following after section 51.01:
IMPORTATION AND EXPORTATION
Interpretation
Marginal note:Definitions
51.02 The following definitions apply in sections 51.03 to 51.12.
“customs officer”
« agent des douanes »
“customs officer” has the meaning assigned by the definition “officer” in subsection 2(1) of the Customs Act.
“Minister”
« ministre »
“Minister” means the Minister of Public Safety and Emergency Preparedness.
“relevant registered trade-mark”
« marque de commerce déposée en cause »
“relevant registered trade-mark” means a trade-mark registered for goods that is identical to, or cannot be distinguished in its essential aspects from, a trade-mark on such goods, including their labels or packaging, that are detained by a customs officer.
“working day”
« jour ouvrable »
“working day” means a day other than a Saturday or a holiday.
Prohibition
Marginal note:No importation or exportation
51.03 (1) Goods shall not be imported or exported if the goods or their labels or packaging bear — without the consent of the owner of a registered trade-mark for such goods — a trade-mark that is identical to, or that cannot be distinguished in its essential aspects from, that registered trade-mark.
Marginal note:Exception
(2) Subsection (1) does not apply if
(a) the trade-mark was applied with the consent of the owner of the trade-mark in the country where it was applied;
(b) the sale or distribution of the goods or, in the case where the trade-mark is on the goods’ labels or packaging, of the goods in association with the labels or packaging would not be contrary to this Act;
(c) the goods are imported or exported by an individual in their possession or baggage and the circumstances, including the number of goods, indicate that the goods are intended only for their personal use; or
(d) the goods, while being shipped from one place outside Canada to another, are in customs transit control or customs transhipment control in Canada.
Marginal note:Restriction
(3) The contravention of subsection (1) does not give rise to a remedy under section 53.2.
Request for Assistance
Marginal note:Request for assistance
51.04 (1) The owner of a registered trade-mark may file with the Minister, in the form and manner specified by the Minister, a request for assistance in pursuing remedies under this Act with respect to goods imported or exported in contravention of section 51.03.
Marginal note:Information in request
(2) The request for assistance shall include the trade-mark owner’s name and address in Canada and any other information that is required by the Minister, including information about the registered trade-mark and the goods for which it is registered.
Marginal note:Validity period
(3) A request for assistance is valid for a period of two years beginning on the day on which it is accepted by the Minister. The Minister may, at the request of the trade-mark owner, extend the period for two years, and may do so more than once.
Marginal note:Security
(4) The Minister may, as a condition of accepting a request for assistance or of extending a request’s period of validity, require that the trade-mark owner furnish security, in an amount and form fixed by the Minister, for the payment of an amount for which the trade-mark owner becomes liable under section 51.09.
Marginal note:Update
(5) The trade-mark owner shall inform the Minister in writing, as soon as practicable, of any changes to
(a) the validity of the registered trade-mark that is the subject of the request for assistance;
(b) the ownership of the trade-mark; or
(c) the goods for which the trade-mark is registered.
Measures Relating to Detained Goods
Marginal note:Provision of information by customs officer
51.05 A customs officer who is detaining goods under section 101 of the Customs Act may, in the officer’s discretion, to obtain information about whether the importation or exportation of the goods is prohibited under section 51.03, provide the owner of a relevant registered trade-mark with a sample of the goods and with any information about the goods that the customs officer reasonably believes does not directly or indirectly identify any person.
Marginal note:Provision of information to pursue remedy
51.06 (1) A customs officer who is detaining goods under section 101 of the Customs Act and who has reasonable grounds to suspect that the importation or exportation of the goods is prohibited under section 51.03 may, in the officer’s discretion, if the Minister has accepted a request for assistance with respect to a relevant registered trade-mark filed by its owner, provide that owner with a sample of the goods and with information about the goods that could assist them in pursuing a remedy under this Act, such as
(a) a description of the goods and their characteristics;
(b) the name and address of their owner, importer, exporter and consignee and of the person who made them;
(c) their quantity;
(d) the countries in which they were made and through which they passed in transit; and
(e) the day on which they were imported, if applicable.
Marginal note:Detention
(2) Subject to subsection (3), the customs officer shall not detain, for the purpose of enforcing section 51.03, the goods for more than 10 working days — or, if the goods are perishable, for more than five days — after the day on which the customs officer first sends or makes available a sample or information to the owner under subsection (1). At the request of the owner made while the goods are detained for the purpose of enforcing section 51.03, the customs officer may, having regard to the circumstances, detain non-perishable goods for one additional period of not more than 10 working days.
Marginal note:Notice of proceedings
(3) If, before the goods are no longer detained for the purpose of enforcing of section 51.03, the owner of a relevant registered trade-mark has provided the Minister, in the manner specified by the Minister, with a copy of a document filed with a court commencing proceedings to obtain a remedy under this Act with respect to the detained goods, the customs officer shall continue to detain them until the Minister is informed in writing that
(a) the proceedings are finally disposed of, settled or abandoned;
(b) a court directs that the goods are no longer to be detained for the purpose of the proceedings; or
(c) the trade-mark owner consents to the goods no longer being so detained.
Marginal note:Continued detention
(4) The occurrence of any of the events referred to in paragraphs (3)(a) to (c) does not preclude a customs officer from continuing to detain the goods under the Customs Act for a purpose other than with respect to the proceedings.
Marginal note:Restriction on information use — section 51.05
51.07 (1) A person who receives a sample or information that is provided under section 51.05 shall not use the information, or information that is derived from the sample, for any purpose other than to give information to the customs officer about whether the importation or exportation of the goods is prohibited under section 51.03.
Marginal note:Restriction on information use — subsection 51.06(1)
(2) A person who receives a sample or information that is provided under subsection 51.06(1) shall not use the information, or information that is derived from the sample, for any purpose other than to pursue remedies under this Act.
Marginal note:For greater certainty
(3) For greater certainty, subsection (2) does not prevent the confidential communication of information about the goods for the purpose of reaching an out-of-court settlement.
Marginal note:Inspection
51.08 After a sample or information has been provided under subsection 51.06(1), a customs officer may, in the officer’s discretion, give the owner, importer, exporter and consignee of the detained goods and the owner of the relevant registered trade-mark an opportunity to inspect the goods.
Marginal note:Liability for charges
51.09 (1) The owner of a relevant registered trade-mark who has received a sample or information under subsection 51.06(1) is liable to Her Majesty in right of Canada for the storage and handling charges for the detained goods — and, if applicable, for the charges for destroying them — for the period beginning on the day after the day on which a customs officer first sends or makes available a sample or information to that owner under that subsection and ending on the first day on which one of the following occurs:
(a) the goods are no longer detained for the purpose of enforcing section 51.03 or, if subsection 51.06(3) applies, for the purpose of the proceedings referred to in that subsection;
(b) the Minister receives written notification in which the trade-mark owner states that the importation or exportation of the goods does not, with respect to the owner’s relevant registered trade-mark, contravene section 51.03;
(c) the Minister receives written notification in which the trade-mark owner states that they will not, while the goods are detained for the purpose of enforcing section 51.03, commence proceedings to obtain a remedy under this Act with respect to them.
Marginal note:Exception — paragraph (1)(a)
(2) Despite paragraph (1)(a), if the goods are forfeited under subsection 39(1) of the Customs Act and the Minister did not, before the end of the detention of the goods for the purpose of enforcing section 51.03, receive a copy of a document filed with a court commencing proceedings to obtain a remedy under this Act with respect to the detained goods or the written notification referred to in paragraph (1)(b) or (c), the period ends on the day on which the goods are forfeited.
Marginal note:Exception — paragraph (1)(c)
(3) Despite paragraph (1)(c), if the goods are forfeited under subsection 39(1) of the Customs Act after the Minister has received the written notification referred to in that paragraph, the period ends on the day on which the goods are forfeited.
Marginal note:Joint and several or solidary liability
(4) The owner and the importer or exporter of goods that are forfeited in the circumstances set out in subsection (2) or (3) are jointly and severally, or solidarily, liable to the owner of the relevant registered trade-mark for all the charges under subsection (1) paid by the owner of the relevant registered trade-mark with respect to the period
(a) in the circumstances referred to in subsection (2), beginning on the day on which the goods are no longer detained for the purpose of enforcing section 51.03 and ending on the day on which the goods are forfeited; and
(b) in the circumstances referred to in subsection (3), beginning on the day on which the Minister receives the written notification referred to in paragraph (1)(c) and ending on the day on which the goods are forfeited.
Marginal note:Exception
(5) Subsections (1) to (3) do not apply if
(a) the detention of the goods for the purpose of enforcing section 51.03 ends before the expiry of 10 working days — or, if the goods are perishable, before the expiry of five days — after the day on which the customs officer first sends or makes available a sample or information to the trade-mark owner under subsection 51.06(1); and
(b) the Minister has not, by the end of the detention, received a copy of a document filed with a court commencing proceedings to obtain a remedy under this Act with respect to the detained goods or the written notification referred to in paragraph (1)(b) or (c).
No Liability
Marginal note:No liability
51.1 Neither Her Majesty nor a customs officer is liable for any loss or damage suffered in relation to the enforcement or application of sections 51.03 to 51.06 and 51.08 because of
(a) the detention of goods, except if the detention contravenes subsection 51.06(2);
(b) the failure to detain goods; or
(c) the release or cessation of detention of any detained goods, except if the release or cessation contravenes subsection 51.06(3).
Powers of Court Relating to Detained Goods
Marginal note:Application to court
51.11 (1) In the course of proceedings referred to in subsection 51.06(3), the court may, on the application of the Minister or a party to the proceedings,
(a) impose conditions on the storage or detention of the goods that are the subject of the proceedings; or
(b) direct that the goods are no longer to be detained for the purpose of the proceedings, on any conditions that the court may impose, if their owner, importer, exporter or consignee furnishes security in an amount fixed by the court.
Marginal note:Minister’s consent
(2) If a party applies to have the detained goods stored in a place other than a bonded warehouse or a sufferance warehouse, as those terms are defined in subsection 2(1) of the Customs Act, the Minister must consent to the storage of the goods in that place before a condition to that effect is imposed under subsection (1).
Marginal note:Customs Act
(3) The court may impose a condition described in subsection (2) despite section 31 of the Customs Act.
Marginal note:Continued detention
(4) A direction under paragraph (1)(b) that the goods are no longer to be detained for the purpose of the proceedings does not preclude a customs officer from continuing to detain the goods under the Customs Act for another purpose.
Marginal note:Security
(5) In the course of proceedings referred to in subsection 51.06(3), the court may, on the application of the Minister or a party to the proceedings, require the owner of the relevant registered trade-mark to furnish security, in an amount fixed by the court,
(a) to cover duties, as defined in subsection 2(1) of the Customs Act, storage and handling charges, and any other amount that may become chargeable against the goods; and
(b) to answer any damages that may by reason of the detention be sustained by the owner, importer, exporter or consignee of the goods.
Marginal note:Damages against trade-mark owner
51.12 A court may award damages against the owner of a relevant registered trade-mark who commenced proceedings referred to in subsection 51.06(3) to the owner, importer, exporter or consignee of the goods who is a party to the proceedings for losses, costs or prejudice suffered as a result of the detention of goods if the proceedings are dismissed or discontinued.
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