Empowering CBSA to fight counterfeit
The CBA supports stronger legislation to catch peddlers of fake goods.
If you went to a flea market in the days before the internet and were offered a pair of Vuarnet sunglasses for $10, you knew they were fake. Today’s counterfeiters are incredibly more sophisticated and difficult to catch than their 20th-century predecessors working in unregulated cash-only markets.
The ability to sell counterfeit goods in mainstream online marketplaces has levelled up the proliferation of counterfeit dealers that used to ply their trade in questionable settings, wrote May Cheng of Osler, Hoskin & Harcourt LLP in 2020. She noted that OECD numbers show “a staggering 154% increase in the international sale of counterfeit goods” between 2005 and 2015.
The availability of 3D printing and unverified but genuine-looking online marketplaces is only making that problem worse. According to Georgina Starkman Danzig, partner with Kestenberg Siegel Lipkus LLP and the chair of the CBA Intellectual Property Section, counterfeiting is a significant, global and ongoing problem. It affects governance, public safety and the rule of law. It also has negative effects on the legitimate competitive advantage of intellectual property rights owners and repercussions for innovation, employment and long-term economic growth.
The CBA Intellectual Property Section, along with the Anti-Counterfeiting and Trade Offences Committee, support the Intellectual Property Institute of Canada’s White Paper on the Canadian Border Safety Agency and Request for Assistance Program (RFA), endorsing IPIC’s call for “stronger legislation and politics to buttress the RFA system and better combat counterfeiting in Canada.”
The RFA program was implemented in 2015, to empower customs officials to detain counterfeit trademark goods and pirated copyright works at the border. The CBA Section reviewed the program and concluded it was “cumbersome and placing disproportionate financial and procedural burdens on Rights Owners.”
The CBA Section endorses the RFA Paper’s submissions and recommendations including:
• Rights holders offering direct product identification training to CBSA officers via no- charge online webinars and in-person presentations
• Appointing task dedicated customs officers with the detention of counterfeit goods being imported into, exported out of, or moving in-transit through, Canada
• Allowing rights holders and their representatives to review and confirm information on file with CBSA with respect to their RFA
• Simplifying renewal requests
• Ensuring predictable and consistent expiry/renewal anniversaries for RFAs
• Implementing a revenue neutral, simplified administrative procedure for abandonment and destruction, without judicial intervention, of uncontested counterfeit goods
• Facilitating coordination and information-sharing among consenting Rights Holders implicated in the same import
• Streamlining the recordal of publicly available information as between CIPO and CBSA with respect to changes in intellectual property ownership, validity and scope of rights.