Counterfeiting in the Canadian Market - Manitoba Chambers of ...

enforcement procedures … are available under theirlaws as to permit effective action against any act ofinfringement of intellectual property rights.” 111 In theabsence of laws for contributory liability for suppliersin the counterfeiting chain and the absence of summaryproceedings for cases of trade-mark infringement, onemust question if the remedies available in Canada aretruly effective. Article 58 further outlines proceduresfor ex officio powers of customs officials, which havenot yet been implemented.It is clear that borders can be used effectively byrights holders to enforce their IP rights. In Canada theeffectiveness of border enforcement is significantlyimpaired by the inability of border officials to seize andhold counterfeit products at their own initiative. Unlessthe RCMP becomes involved and provides specificinformation about a shipment, CBSA agents are unableto act when encountering commercial shipments ofcounterfeit goods. What Canada needs at its bordersis legislation that adequately addresses the realities ofIPR theft and empowers our law enforcement officialsto protect legitimate channels of trade. To achieve this,the Canadian government must grant CBSA agentsex officio authority to search detain, seize and destroycounterfeit and pirated goods.Canada recently signed the ACTA, the preamble to thisagreement acknowledging that “The proliferation ofcounterfeit and pirated goods, as well as services thatdistribute infringing material, undermines legitimatetrade and sustainable development of the worldeconomy, causes significant financial losses for rightsholders and for legitimate businesses, and, in somecases, provides a source of revenue for organizedcrime and otherwise poses risks to the public.” 112This agreement introduces numerous provisions thatwill require amendments to Canadian law, includingprovisions which require the introduction of ex officiopowers for border officials in order for this country tokeep up with international best practices.Recommendation 1Amend Canadian law to ensure Canada is meetingthe minimum requirements of the internationalagreements to which it is a signatory. In addition toimplementing the revisions contemplated in Bill C-11,specific amendments that are required include:1) Clarify the Trade-marks Act to ensure that trademarkowners have the right to expeditious legalprocess in respect of counterfeiting activities2) Introduce ex officio powers for border officials thatgive these officials the ability to detain, seize anddestroy counterfeit products outside the normalchannels of commerce.3) Amend Canadian law to introduce the abilityto obtain injunctions against third-partyintermediaries as suggested by Article 8.1 ofACTA.4) Introduce provisions of Canadian law toensure that those who induce, jointly act withor materially aid and abet another person incommitting an infringement of copyright or trademarkare also infringing the law.Inconsistencies in National LawIn addition to these changes to the law that arerequired by international commitments, there areinternal inconsistencies and shortcomings in Canadianlaw that are a barrier to effective enforcement of IPR.As we have seen from case law, litigation is a costlyand lengthy affair. In the recent case Louis VuittonMalletier S.A. v. Singga Enterprises (Canada) Inc., theplaintiffs demonstrated that the defendants knowinglyand wilfully manufactured, imported, advertisedand sold counterfeit articles. Their operation wasconducted on a large scale over an extended periodof time, confused consumers and caused harm to thebrands involved because of the inferior quality of the111 TRIPS, Article 41112 ACTA, Preamble.Counterfeiting in the Canadian Market | The Canadian Intellectual Property Council 27