Episode 3: How to stop counterfeit products at the border

Lisa Desjardins (LD):  You're listening to Canadian IP voices, a podcast where we talk intellectual property with a range of professionals and stakeholders across Canada and abroad. Whether you are an entrepreneur, artist, inventor or just curious, you will learn about some of the real problems and get real solutions for how trademarks, patents, copyrights and industrial designs and trade secrets work in real life. I'm Lisa Desjardins and I'm your host. 

The views and opinions expressed in this podcast are those of the individual podcasters and do not necessarily reflect the official policy or position of the Canadian Intellectual Property Office. 

Owners of brands, logos and creations can apply to register their brand, geographic indication and copyright with the Intellectual Property Office. If the application is accepted, they become the owner of that IP right. And, if someone else is using it without the owners' permission, they are committing infringement. 

Counterfeit or knockoffs are illegal imitations of someone else's protected creation. These are a growing concern in today's global economy where many of the purchasing decisions happen in our homes in front of a screen where we don't get to see or feel the product until it has been delivered. 

Quite often consumers are misled by photos of authentic products, but the product delivered is a counterfeit. 

So what can IP owners do to stop these copies from entering into Canada? To find out more, I'm joined by Becky Illson-Skinner who's a senior program advisor and the program and policy lead for the intellectual Property Rights program at the Canadian Border Services Agency.

Becky, welcome to the podcast. 

Becky Illson-Skinner (BIS):  Thank you for having me. It's a pleasure to be here. 

LD: Can you tell me a little bit about yourself and the work you do at the Canadian Border Services Agency? 

BIS: Certainly! I've been with the Canada Border Services Agency since 2007 and was promoted to a senior program advisor in December 2019. In my various roles within the agency I became responsible for the implementation of Canada's new border enforcement measures that were included in the combating counterfeit products at the Canada Border Services Agency's intellectual property Rights program launched in 2015. And since then, it has been expanded to include geographical indications and in transit goods. 

LD: It's an important program. If a rightsholder of a trademark, copyright or geographic indication suspects that there are illegal copies of these flowing into Canada, what what can they do? 

BIS: Well, the best thing that they can do to protect their IP rights is to file a request for assistance with the Canada Border Services Agency. By filing this request, they are providing the agency with the authority that is required for our officers to share all available information about a suspected shipment with them, which includes providing a sample of the goods. Rightsholders that do not file this request with the Canada Border Services Agency cannot receive any information that would directly or indirectly identify any person. This means that the information provided wouldn't be enough for the rights holder to enforce their IP rights when the agency interdict suspected counterfeit or pirated goods shipment.

I truly believe that the overall success of the Canada Border Services Agency's IPR program is dependent on the rightsholders taking that first step and submitting a request for assistance. 

LD: That really becomes the key for the entire chain of actions that follows. What does the IP right holder need in order to file that request for assistance application? 

BIS: I'm glad you asked. In order for an IP rights holder to file the request for assistance application, they can visit the Canada Border Services Agency website and conduct a search using the keywords combating counterfeit products. The link for the request for assistance application is on that page. There is no cost to submit this request to the Canada Border Services Agency, and once your application is approved, it is valid for two years, but it can be renewed for additional 2 year periods. The service standard for application approval is approximately 4 to six weeks. However, there have been instances when an application has been approved on an urgent basis. 

We encourage rightsholders to provide as much detail as possible to the Canada Border Services Agency in their request for assistance application. This includes any known bad actors, approved manufacturers or resellers and examples of authentic goods versus counterfeit ones. Keep in mind: the more information that a rightsholder can provide, the easier it will be for an officer to determine whether or not the goods they are examining may be counterfeit. 

LD: So now we've moved beyond registering the rights and we have filed a request for assistance and we're looking at when the package arrives at the customs. Can you walk me through the process of a package of illegal copies being detected by the Canadian Border Services Agency? 

BIS: Certainly. It all starts when an officer intercepts what they suspect to be a counterfeit and or pirated good. The first thing an officer will do is temporarily detain the shipment so it cannot be released. Next, the officer will determine whether or not the goods present a health, safety or security concern as these types of entries are referred to the Royal Canadian Mounted Police or Health Canada for processing. 

If the shipment in question does not have a related health, safety, or security concern, then the officer will verify whether or not the rights holder has filed a request for assistance with the Canada Border Services Agency. If there is no request for assistance filed, the officer may reach out to the rightsholder to advise them that the suspected shipment has been intercepted, if it is operationally feasible for them to do so. Otherwise, they would simply release the goods as long as all other import requirements have been met. This is yet another reason why I highly recommend that rightsholders file a request for assistance. 

If there is a request for assistance on file, the Canada Border Services Agency will contact the rightsholder 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. If the rights holder declines to take any action, the goods are released as long as all other import requirements have been met. 

But if they decide to take action, then the shipment is formally detained. The goods will continue to be detained from this point on until such time as the Canada Border Services Agency receives notification from a court, is provided documentation of an out of court settlement, or is advised by the rightsholder that the goods no longer be detained. 

LD: OK, but let's say I as a private person buy something from a website outside Canada and the company ships a product to me. And then I realize that this brand of the product is infringing… Who's infringing then? 

BIS: Well, as per the Trademarks Act and Copyright Act, personal imports are actually excluded from the IP policy. As such, they are out of scope for the Canada Border Services Agency's IPR program. 

LD: Let's not talk about some of the outcomes of the program. Since the start of the program, almost half of suspected shipments have resulted in what we call out of court settlements. Could you give some examples of how many of these counterfeit instances are solved in real life? 

BIS: Certainly. Since the I PR program was implemented in 2015, the Canada Border Services Agency has intercepted a total of 620 shipments and of these 58 rightsholders did not have a request for assistance on file. As a result, these entries were released because they met all other importing requirements. In addition to that, 59 rightsholders declined to pursue any kind of remedy, so those shipments were also released if they met the importing requirement. 

This means that there were 474 rightsholders willing to pursue remedy and all decided cases to date have been in favor of the rights holder. Moreover, 64% of these were settled out of court within a few days, and in all cases where some type of remedy was pursued, the goods in question never entered the Canadian marketplace as they were destroyed by the Canada Border Services Agency. 

I'd like to share a few myths, actually, with regard to the IPR program:

Myth number one: it isn't important whether or not rightsholders pursue remedy. This statement is false. A rightsholders willingness to enforce their IP rights is a signal to officers that this work is important and required. It also sends a message to the bad actors that are out there that you will not condone their activity. 

Myth number 2: The quantity of goods that have been intercepted isn't worth the time and effort to go through the process. Again, this is false because some bad actors will only bring in small quantities, but will have numerous importations in a month. When rightsholders take action each time, regardless of the quantity, officers within the region gather that intelligence and that will guide them in identifying future shipments. 

Myth #3: it is too expensive to enforce my IP rights. This is a misconception too, as the majority of IP our cases are settled out of court and any associated costs are normally included in the settlement and payable by the importer.

I'd like to end this podcast with a call to action for rights holders who have not yet filed a request for assistance with the Canada Border Services Agency to do so as soon as possible to ensure that the next shipment containing suspected, counterfeit and or pirated goods is detained, and then you can protect your IP rights. 

LD: Thank you Becky and thanks for explaining some of that amazing outcome of the programs and how easy it is to register and proceed with this program. Thank you so much for taking your time to explain that to us.

BIS: My pleasure. 

LD: You've listened to Canadian IP voices where we explore intellectual property. In this episode you met with Becky Illson-Skinner, who works as a senior program advisor at the Canada Border Services Agency. Becky explained the work that the Canada Border Services Agency does to stop counterfeit products at the border. If you suspect that there are illegal copies of your trademark, geographic indication or copyright coming into Canada, and you wish to file a request for assistance, visit www.canada.ca/combat-counterfeits