Doing Business in Canada: Protecting Luxury Brands From Counterfeiting (Part 2)

This article is Part 2 of Protecting Luxury Brands From Counterfeiting, a four-part series on the legal and practical issues luxury brands most often face when operating in or selling to Canada. Part 1 addressed the upstream question of legal and operational readiness. Part 2 turns to the border itself: the statutory framework, the operational mechanics of the Canada Border Services Agency (“CBSA”) Intellectual Property Rights (“IPR”) Program and the response planning a luxury brand should have in place before a detention occurs.

For luxury brands, Canada’s border is a critical early point of intervention against counterfeit goods and, in many cases, a commercially efficient way to prevent infringing products from entering the Canadian market. The Combating Counterfeit Products Act, in force since January 1, 2015, and subsequently amended, introduced a variety of additional statutory mechanisms to assist brand owners in the enforcement of their valuable intellectual property rights, including a regime that empowered the CBSA to: (i) detain commercial shipments of suspected counterfeit and/or pirated goods at the point of entry; and (ii) notify the relevant brand owner for further action.

Brand owners must, however, formally enrol in the CBSA’s IPR Program to take advantage of these mechanisms. Absent an accepted Request for Assistance, the CBSA will not ordinarily contact a rights holder when it encounters a suspect shipment. Further, once enrolled, brand owners must be prepared to act quickly: timelines for responding to a notice of detention are short, the consequences of missing them are immediate and certain cost and liability obligations may begin to accrue. The chart below summarizes the program’s scope, operational constraints and cost exposure as luxury brands should practically expect to encounter them.

Click here to read the full article.