How to stop counterfeit products at the border

Canadian IP Voices is a podcast where we talk intellectual property (IP) with a range of professionals and stakeholders across Canada and abroad.

In episode 3 of IP Voices, Becky Illson-Skinner, senior program advisor and the program and policy lead for the Intellectual Property Rights Program at the Canadian Border Services Agency (CBSA), explains Canada's border enforcement measures to combat counterfeit products and goods entering Canada.

Whether you're an entrepreneur, artist, inventor or just curious, you've surely heard a thing or two about counterfeit products.

Do you really know what counterfeit products are?

Counterfeit products, or knockoffs, are illegal imitations of someone else's creation that is protected by copyright, a trademark or a protected geographical indication.

So, what can IP owners do to stop these illegal copies from entering Canada?

To illustrate the process and available resources, let's look at a fictitious example of someone we'll call Sam, who owns a clothing business.

Sam creates high-quality clothing for teenagers and young adults. After experiencing a huge boost in sales and popularity, Sam faced a wave of criticism on social media. Clients were posting photos of his products showing faded colours, a problem Sam hadn't heard anything about. After doing some digging, Sam discovered that counterfeit products of his brand were being sold.

Thankfully, one of the first things Sam did when establishing his business was to file for IP rights to protect his idea, business model and product creations. He did so by hiring an IP professional to file for trademark rights.

"If there is a request for assistance on file, the Canada Border Service Agency will contact the rights holder or their representative to advise them about the intercepted shipment and to find out if they will be taking steps to enforce their IP rights."

Sam visited the CBSA website to submit a request for assistance from the CSBA for suspected counterfeit goods entering Canada. As the legitimate rights holder, Sam is eligible to apply for no-cost assistance from the CBSA because his business meets the assistance eligibility criteria, which require a Canadian trademark or geographic indication be registered with the Canadian Intellectual Property Office (CIPO). Sam provided as much detail as possible, including approved suppliers and manufacturers, and examples of authentic goods versus counterfeit ones.

Within a few months, the CBSA contacted Sam to let him know the service had intercepted suspected pirated goods being imported to Canada. Because he had a request for assistance on file, Sam could take legal action to stop the counterfeit. The intercepted shipments were not released so the goods never entered the Canadian marketplace but were destroyed by the CBSA.

To summarize, the CBSA will contact the rights holder or owner when suspected counterfeit or pirated goods are intercepted and give them the details they need to take legal action. The CBSA will then take action as instructed by the rights holder.

It's important to note that the rights holder is liable to the government for any costs related to storage, handling and destruction of detained goods beginning the day after a notice of detention is sent.

Ultimately, seeking formal protection for your IP rights from CIPO as soon as possible and filling an submitting a request for assistance from the CBSA are important steps to ensure eligibility and to protect yourself in similar situations. Without formal IP rights, an IP rights holder cannot file a request for assistance with the CBSA and the CBSA would have to release any counterfeit goods as long as they meet all other importing requirements.

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