Understanding the Canada Border Services' Request for Assistance Program - Part 1

When developing strategies to address counterfeit goods, a great place to start is the border. Curbing the importation of counterfeits is vital in the fight to keep consumers safe from dangerous products. In 2015, Canada’s Border Services Agency (CBSA) introduced the Request for Assistance (RFA) program, which enables rights holders to record their registered trademarks, copyrights, and geographical indications with the CBSA, and empowers Border Services Officers to detain commercial imports and exports containing suspected counterfeit and/or pirated goods pertaining to those recorded IP rights[1]. The RFA program does not apply to parallel imports, goods imported or exported for personal use, nor does it extend to goods in-transit (passing through Canada). Eligibility for the RFA program requires the applicant be a legitimate rights holder in Canada and the requested trademarks and geographical indications be registered with the Canadian Intellectual Property Office. Unregistered copyrights may also be recorded. The RFA program applies to goods, packaging and labels, and once notified, rights holders are given specific timeframes to respond to CBSA to continue detention of the goods. 

The Recordal Process 

The RFA application form is available online and rights holders are encouraged to include any additional materials that will permit Customs Officers to easily identify suspected counterfeit goods, such as training guides and information as it pertains to known importers. There is no government registration fee (although a bond may be required in certain circumstances). Applications are processed in approximately four to six weeks (although it’s typically less, and can usually be obtained the same or next day if there is some urgency). Once approved, an RFA is valid for two years and is eligible for renewal for subsequent two-year periods. If a rights holder wishes to amend their RFA, (including the schedule of marks on file), they may do so by notifying CBSA via email.  Rights holders should also notify CBSA immediately upon any change to their registered mark or in the case where there has been a change in the goods for which the mark is registered. 

Detainment & Action 

When suspect counterfeit goods are detained, the first step is for the CBSA to notify the rights holder (or its representative) and provide initial details about the stopped goods, such as a description of the goods, their date of import, quantities, and country of origin. Photographs of the stopped may be provided at the detaining Officer’s discretion. The rights holder then has three days to confirm if the goods are counterfeit and inform CBSA of an intention to move forward with a civil remedy. This triggers the formal detention and delivery of a “Rights Holders Notice of Detention for Suspected Goods of Contravening IPR”, which contains additional information about the stopped goods, including the name ad address of the importer, exporter, and (where applicable) consignee. To continue the seizure, the rights holder must then commence litigation (or reach settlement) within a set period— ten business days for non-perishable goods, and five business days for perishable goods. This period is subject to extension (and rarely granted unless there are circumstances beyond the rights holder’s control). It is important to be mindful of storage fees being incurred during this period (note that there are no storage fees during the above-noted 3-day period). If the rights holder fails to respond to the CBSA during the initial three-day period, or, triggers a formal seizure but does not commence litigation or reach settlement within the set period, the stopped goods are released. 

By the Numbers

Over the last year, there has been promising growth in the number of RFA’s filed and seizures made. Since the program commenced in January 2015, 281 rights holders have filed applications, representing the recordal of 140 copyright registrations and 3,570 trademark registrations (175 new registrations in the past year), and approximately 138 suspected shipments have been stopped—63 within the first half of the 2019–2020 term. According the CBSA’s statistics, rights holders have reached approximately 21 out of court settlements, and obtained successful civil court rulings in 3 cases. 

Keeping up with the Importers

Recording IP rights in the RFA program is simple and a relatively inexpensive tool in the anti-counterfeiting toolbox. It represents an opportunity for rights holders to take advantage of an approach to help prevent the import and distribution of counterfeit goods in Canada. In the fight against counterfeiters, information matters. A shipment of any size can play an important role in uncovering facts about criminal networks and suppliers that trade counterfeit goods. In part two of this blog series, we will be looking into the behavioural changes that have impacted the way Infringers import and distribute goods and how the internet and social media has played a pivotal role in these changes.

Additional information about CBSA’s RFA Program can be found here: here.

[1] RFA program allows border services officers to detain commercial shipments, as per section 101 of the Customs Act, that contain suspected counterfeit and/or pirated goods; and share certain information about those shipments as per sections 107(5)(l.1) and (l.2) of the Customs Act, sections 44.03 and 44.04(1) of the Copyright Act, and sections 51.05 and 51.06(1) of the Trade-marks Act with registered rights holders to allow them to seek a remedy in civil court.