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

Summary of Recommendations:Recommendation 1Amend Canadian law to ensure Canada is meetingthe minimum requirements of the internationalagreements to which it is a signatory. Amendmentsinclude:1. Clarify the Trade-marks Act to ensure that trademarkowners have the right to expeditious legalprocess in respect of counterfeiting activities.2. 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 of theAnti-Counterfeiting Trade Agreement.4. Introduce legal provisions to ensure that those whoinduce, jointly act with, or materially aid and abetanother person in committing an infringement ofcopyright or trade-mark are liable for their actions.Recommendation 2Amend Canadian law to overcome internalinconsistencies in its applications. Specific amendmentsthat are required include:1. Introduce criminal provisions for wilful trademarkinfringement to make the Trade-marks Actconsistent with the Copyright Act and internationalbest practices.2. Introduce civil remedies for trade-markinfringement to make the Trade-mark Act consistentwith the Copyright Act.3. Introduce provisions to make it illegal to importcounterfeit goods under the Customs Act.4. Introduce provisions in the Criminal Code thatmake wilful trade-mark counterfeiting a criminaloffence.Recommendation 3The government must encourage officials to seekstrong remedies in the case of IPR infringement andensure prosecutors exploit the full range of remediesavailable to them including the proceeds of crimeregime.Recommendation 4Canada needs to develop a tactical response to thechallenges of counterfeiting in the digital age.Specifically, the government should:1. Identify new remedies and approaches that canaddress the challenge of small shipments ofcounterfeit goods that do not require the rightsholder to obtain a court order to suspend each andevery shipment.2. Develop a system for recordation of rights. Sucha system will ensure border officials have theinformation they need to effectively exercise exofficio powers.3. Develop a team of properly funded and dedicatedenforcement professionals in order to effectivelyface the challenges presented by counterfeiting inthe digital age. In the absence of such a team, it willbe impossible to respond to the challenges of smallshipments of counterfeit product ordered online,and Canada will not be effectively positioned topartner with our international counterparts intackling multinational operations.Recommendation 5The government of Canada needs to take a proactivestance in combatting counterfeiting and piracy.Specifically, the government should:1. Create an interagency intellectual propertycouncil consisting of senior officials fromvarious government departments, including theDepartment of Justice and the Royal CanadianCounterfeiting in the Canadian Market | The Canadian Intellectual Property Council 31