The sale of counterfeit goods is a significant worldwide issue.
After initial studies carried out by the Organization for Economic Cooperation and Develop (OECD), the OECD and the European Union Intellectual Property Office (EUIPO) updated these studies in 2016. OECD/EUIPO estimated that the trade in pirated products accounted for as much as 2.5% of the value of international trade, or $461 billion, in 2013. In addition, these products frequently present health and safety issues.
Much of this counterfeiting activity takes place on the Internet since counterfeiters can conceal their identity while taking advantage of the flexible nature of the Internet. To deal with these issues, a brand owner must ensure that steps have been taken to protect relevant intellectual property, monitor the marketplace, and enforce their rights. The amount of Internet traffic generated by specific sites should be an important factor in deciding what steps should be taken.
Relevant employees should be trained and engaged in monitoring infringement. They should understand what activities are actionable and compile records of infringement including screenshots.
Brand owners should consider the amendments brought about by the Combating Counterfeit Products Act.
The amendments provide the Canada Border Services Agency (CBSA) with the authority to act against the commercial movement of counterfeit goods at the border, add criminal offences relating to counterfeit goods and allow rights holders to file a request for assistance with the CBSA enabling border officers to share information with them regarding suspect shipments. The amendments and their application have been far from perfect but are a clear improvement over the rights previously available. More recently, steps are being taken to make the existing system more effective.
Besides these rights, Amazon has launched a Brand Registry service that gives rights owners advanced tools to protect their brands. The tools include text-and image-based search capabilities and automated protections. To take advantage of the service, the owners of registered trademarks need to register their marks directly with Amazon. eBay and Alibaba offer somewhat similar programs. In addition, Google has a policy that allows for the removal of web pages selling counterfeit goods from Google search results. To initiate the removal process, brand owners or their authorized agents must submit a complaint.
If you have questions, please contact me at mckeown@gsnh.com
Goldman Sloan Nash & Haber LLP
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Toronto, Ontario M5G 1V2
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Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.