Counterfeit goods in Canada – How to leverage the Request for Assistance program

Counterfeiting, or the free-riding on the goodwill and reputation for quality associated with a brand’s trademark, damages a brand’s reputation. For brands that are vulnerable to counterfeiting practices, the protections provided by the law are critical to protecting their hard-earned and valuable goodwill in the Canadian marketplace.

The Request for Assistance (the “RFA”) program allows registered trademark owners to take legal action against importers of counterfeit goods upon detection by the Canadian Border Services Agency (“CBSA”). Upon filing an RFA, the CBSA can detain suspected counterfeit goods for up to ten business days, which can be extended by initiating court proceedings.

On the one hand, the RFA program has demonstrated its potential as an effective tool – the majority of detentions have resulted in positive outcomes for rights holders. On the other hand, in the years following the implementation of the RFA program, the CBSA reported minimal seizures, consisting primarily of low-volume, low-value shipments.

The limited effectiveness of the RFA program can be attributed, in part, to:

• personal and commercial use exemptions, and
• lacking communication and training for CBSA officers.

Despite these limitations, the RFA can be a powerful tool for rights holders. This article discusses strategies for trademark owners in Canada to take full advantage of the RFA program’s benefits and minimize its shortcomings.

Personal and commercial use exceptions

The legislative debates preceding the RFA program were focused on protecting consumers deceived into buying inferior or dangerous products as the primary victims of counterfeiting. As a result, the scope of the RFA avoids further victimization of the consumer through exemptions from infringement for personal use and non-commercial imports of counterfeit goods.

Such exemptions were based on a misconception of the consumer as a victim of deceptive practices. In reality, a significant proportion of today's counterfeit buyers are not simply deceived. Studies show that a growing number of consumers deliberately seek out counterfeit products because they offer an affordable alternative while signaling authentic goods.

In effect, these exemptions have created a significant loophole in the RFA program that fraudsters can exploit by distributing goods in small quantities, effectively bypassing the scrutiny intended for larger commercial shipments. Widespread importation of counterfeit goods results in an increased prevalence of such goods in Canada – harming the rights of trademark owners by undermining the investment put into a trademark and reducing the value of its goodwill. Consequently, consumers are further victimized in the secondary market where they are more susceptible to deception through peer-to-peer sales.

Canada should follow the lead of the many jurisdictions that do not create exceptions for personal and non-commercial importation of counterfeit goods – the goal of protecting innocent consumers can be achieved without creating broad exceptions to infringement.

In the meantime, investigating and effectively targeting commercial importers is crucial to accounting for the potential drawbacks of the commercial and personal use exemptions. Known importers, once identified, can be listed on Form 13 of the RFA and aide the CBSA at the outset of enforcement.   

Lacking communication and training for CBSA officers

Limitations in enforcement are further exacerbated by insufficient training and communication between rights holders and CBSA officers.

During the reading of the Bill which enacted the RFA program, a pertinent concern was raised: “[…] is the government planning a training program to […] be able to determine if the goods are, in fact, counterfeit?”. The response emphasized that the training of officers and the specialized development of officer skill sets at the border was a tremendous gap in the process – stressing the need for well-trained border officers.

Despite the expectation that these concerns would be addressed before the implementation of the RFA program, no such refinements were made.

Form 11 of the RFA allows rights holders to describe the identifiers of authentic goods, such as product features, packaging, and trademark locations – intended to facilitate detection at the border. However, the space provided by the RFA form for rights holders to list such identifiers is limited to a text-box that offers approximately half of the space occupied by this sentence:

 

 

In addition, counterfeits are frequently updated by their manufacturers – thus increasing in similarity over time to the authentic goods they aim to replicate. This further exacerbates the need for continuous communication mechanisms, training, and guidance between rights holders and CBSA officers in order to stay ahead of counterfeiters.

These limitations can be mitigated by informed correspondence with the CBSA throughout the RFA period, continuing after the initial submission of the RFA.

Takeaways for registered and unregistered rights holders

Until legislative and administrative changes are made, it is crucial for brands that are vulnerable to the harms of counterfeit to ensure that they are making the most use of the legislative protections – including but not limited to the RFA program.

The Intellectual Property Team at DLA Piper (Canada) LLP is prepared to assist you in understanding the intricacies of the current legislative framework and maximizing the protections offered by the RFA Program. Our services include:

• Counterfeit management: Implementing strategies to combat counterfeits of your brand at their source.
• RFA program enrollment and support: Enrolling your trademarks into the RFA program and managing the RFA process post-enrollment.
• Importer investigations: Conducting thorough investigations aimed to identify counterfeiters and support the CBSA at the outset of enforcement.
• Monitoring and reporting: Monitoring services to track and report instances of counterfeiting, including updates on the counterfeit market as it relates to your brand.
• Legal support and representation: Representing you in legal proceedings related to counterfeit goods, ensuring that your rights are protected and that counterfeit products are removed from the market.
• Customs training and collaboration: Facilitating informed, ongoing, and direct communication with CBSA officers, providing them with the necessary tools and information to effectively identify and seize counterfeit goods of your brand.
• Comprehensive trademark review: Conducting thorough audits of your registered or unregistered trademarks to identify any vulnerabilities that counterfeiters might exploit.