02/07/2020

4) Counterfeit Goods
Liz Afolabi

Counterfeit Goods

Counterfeit products are

fakes or unauthorized replicas
of the real product.
Counterfeit products are often produced
with the intent to take advantage
of the superior value of the imitated product.

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Counterfeit Goods

• Counterfeit goods
• Knock-off bags, drugs, DVDs...

Counterfeit goods are often replicas of the original products and part of being a replica is the
producer of the counterfeit goods will copy of will infringe the trademarks and the copyright
protection in the original product ( same logos, trade name, designer good- patterns copied).

Counterfeit Goods

• S. 20 infringement for registered TMs

• Passing off for unregistered TMs
• But... both of these require proof of confusion by the
consumer
• What if the consumer knows exactly what they are
getting? they knew they’re fake to get cheaper price
• If you buy a Louise Vuitten bag out of a van in a
parking lot, you know it’s not real...

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Counterfeit Goods

• S. 22 depreciation of goodwill, no confusion required

• S. 19 exclusive right to TM in Canada, no confusion
mentioned
• Courts don’t seem to care too much about the confusion
problem
• Louis Vuitton v. Singh (2011 Federal Court)
• $2.5 million for selling counterfeit goods

Counterfeit Goods

• Copyright infringement re logos and patterns

• If you have a logo protected by copyright, you can also
sue based on copyright infringement
• Sue for copyright infringement and trademark
infringement under same lawsuit

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Counterfeit Goods

• Combating Counterfeit Products Act

• Certain sections came into force January 1, 2015
• Includes new “Request for Assistance” procedure
• Includes new criminal sanctions

Combating Counterfeit Products Act

• Request for Assistance Procedure

– Addresses the import of counterfeit goods
– Allows owner of ® or © registration to file a “Request
for Assistance” to take action against counterfeit
trademark goods and pirated copyright works before
the goods enter or leave the Canadian market
– Detain goods for a period of time
– Provide information to the ® or © owner
– Allows rights owner time to assess whether to bring a
court action

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Combating Counterfeit Products Act

• Request for Assistance Form must include:

– The rights holder’s name and address
– Name & address of Canadian representative mostly lawyer
– Information about the trademark registrations or
copyrighted work
– Also include: counterfeit training materials (which
assist the boarder agents in identifying counterfeit
products)
• Description of authentic goods, list of authorized
dealers, list of known unauthorized dealers

Combating Counterfeit Products Act

• Once submitted, takes 4-6 weeks to process

• Valid for 2 years, and can be renewed
• Does not apply to small packages of goods intended for
personal use target for big importer or exporters only

• Detain goods for three days, rights holder is alerted,

rights holder must indicate whether they want to pursue
an action
• If not, goods will be released
• If so, goods will be detained longer

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Combating Counterfeit Products Act

• Criminal Sanctions
– Allows courts to order the destruction or disposal of
infringing goods, equipment, materials
– Fine up to $1 million dollars and/or 5 years in prison
for an indictment
– $25,000 fine and/or 6 months in prison for summary
offence

Thank You!
Liz Afolabi
lafolabi@bereskinparr.com