IP Protection at the Border: The Trans Pacific Partnership

The Trans Pacific Partnership (TPP) is a trade agreement signed on February 4, 2016 in Auckland, New Zealand.  The TPP is not yet in force as it still needs to be ratified by the twelve member countries.  The TPP will expand the rights and responsibilities of customs officials with respect to identifying and detaining goods that infringe upon the intellectual property rights of others.  However, not everybody is in agreement that border officials have the legal background to be able to assess trade-mark infringement.  Others argue more broadly that the TPP will not benefit Canada’s economy and is designed to promote the interests of other countries such as the U.S. and China.

As the TPP was being negotiated, in recent years the Canada Border Services Agency (CBSA) has established an intellectual property rights program for intellectual property rights holders in Canada.  Under this program, the CBSA has established a process whereby IP rights holders can file a Request for Assistance (“RFA”) asking for the CBSA to detain (temporarily) suspected counterfeit goods encountered at the border while the IP rights holder seeks legal redress.  If the CBSA identifies suspected counterfeit goods at the border, they can use the information contained in the RFA application to contact the IP rights holder and inform them of the details they need to allow them to pursue their remedies in the Courts.  Any criminal investigations relating to large scale commercial counterfeiting operations are handled by the Royal Canadian Mounted Police.

The TPP would require Canada to enact further special requirements related to border measures, including allowing for applications to detain confusingly similar goods.  This particular change is somewhat controversial as it would require border officials to make a legal assessment as to whether or not a particular trademark is “confusingly similar” (a legal term of art) with another trade-mark.

Leaked drafts of the TPP suggest that Canada originally opposed the extension to confusingly similar trade-mark (as did a number of other countries).  However, the final TPP agreement ultimately included this extension of the authority of border officials.  Of course, the TPP still needs to be ratified, a process that could take a number of years, and in order to enact these changes we would need to amend domestic Canadian legislation in order to provide for new rules relating to the extended authority of border officials in this regard.

Jim Balsillie, the former CEO of Research in Motion, has spoken out strongly against the TPP, arguing that it is designed to benefit the United States (the world’s largest exporter of intellectual property) rather than a country like Canada, with some large-scale innovators but also with a heavy reliance on other industries like agriculture and natural resources.  Mr. Balsillie is scathing in his criticism, arguing that the TPP will extend and enforce the U.S. intellectual property regime and interests to all TPP countries.

The current Liberal government has attempted to distinguish between signing the TPP versus formally ratifying the agreement.  This prompted some criticism from the opposition (with NDP leader Tom Mulcair asking “Does the Prime Minister often sign things he doesn’t agree with?”) but ultimately the TPP will now be studied and debated in the House of Commons.

Unless and until the TPP is formally ratified, intellectual property rights holder still have a more limited mechanism with the CBSA in the form of the current RFA application process.  This allows for IP rights holders to take some action against counterfeiters (i.e. third parties producing knock off goods), but the current RFA application process does not cover situations involving goods using a confusingly similar trademark (i.e. a competitor selling goods under a similar name that would be likely to cause confusing with consumers).

Paul Braunovan is a Partner and Trade-mark Agent in the firm’s Intellectual Property Law Group.