Pursuant to the Criminal Code of Canada, (Section 406 and following, Section 380 relating to fraud and Section 489 relating to plain view seizures), and the Copyright Act and Trademarks Act, law enforcement can seize counterfeit merchandise and lay criminal charges.
At times they seize the products and use their discretion in not laying charges. Other time’s customs officials, acting on specific information we provide or pursuant to the terms of the Protocol between Canada Customs Revenue Agency and the RCMP, will detain counterfeit product.
Canada Border Services Agency (CBSA) now has *ex officio* powers to detain suspected shipments of counterfeit products.
We have developed a substantial number of law enforcement and customs contacts across Canada. We regularly exchange information on anti-counterfeiting and provide the expert evidence necessary to proceed with criminal charges. In many instances we assist the investigating officers or crown prosecutors in both the obtaining of the search warrant and the prosecution of the criminal charges.
Kestenberg Siegal Lipkus LLP, on behalf of numerous rights holders, has been working with the RCMP and providing information regarding the sale of counterfeit items on domain names throughout the world. Based on relationships with several payment processors (VISA, MasterCard, Western Union, PayPal etc.), the merchant account information is terminated thereby eliminating the ability to conduct business at the domain. Through this process we have been in receipt of useful information allowing follow-up investigation and enforcement in appropriate cases.
These are usually effective when there are small quantities of counterfeit merchandise. We also use them if we are enforcing Court Orders for some of our clients and a trade-mark or copyright holder is in the process of obtaining an Anton Piller Order.
Corporate/business/internet searches are usually required in respect of all enforcement methods in order to properly identify the persons served or to be served.
In the event we are able to negotiate a resolution without recourse to litigation, we anticipate using a relatively standard form of agreement; we often refer to it as an Acknowledgment and Undertaking, which may include some or all of the following terms:
We regularly attend with law enforcement on anti-counterfeiting operations. This flexibility allows us to assist in the more serious cases in which criminal charges are properly laid and to conduct civil follow-up at a later date to ensure the counterfeiter is enjoined by a Federal Court injunction from continuing with the illegal activity. The exchange of information with law enforcement has and will continue to have a positive effect on our efforts to enforce your intellectual property rights.
Typically, if we’ve served a retail store, we seek to obtain a judgment which includes, declaratory and injunctive relief and a monetary judgment. If we are settling, then we like to try to obtain that judgment on consent but agree to forebear from relying in the full value of the judgment upon the payment of a lesser sum. The documents are designed such that if the person served counterfeits your product again, you could seek to realize on the difference between the amount paid and the amount of the judgment plus any additional damages and costs would be yours to try to recover.
In respect of enforcement at Flea Market, the ability to recover monetary damages is significantly reduced because often these vendors are un-traceable, without an investment of money that is ultimately not recoverable. If the vendor is served only with a cease and desist letter, a monetary recovery is less likely.
Typically, if we’ve served a significantly large counterfeiter, we seek to obtain a judgment which includes, declaratory and injunctive relief and a large monetary judgment to cover all legal and investigator costs incurred. We also focus on obtaining the appropriate documentation to assist in cross-border enforcement and identifying the source of supply of counterfeit merchandise.
In order to realize on a Judgment, enforcement proceedings would have to be commenced against the defendants (now known as the Judgment Debtors):
You can proceed to enforce on a Judgment by way of:
Enforcement is commenced by issuing a Writ of Seizure and Sale against the Judgment Debtors and filing same with the Sheriff in the jurisdiction where the business is carried on and/or where the individual resides. Once the Writ of Seizure and Sale is issued and filed with the Sheriff, a Direction to Enforce is then filed with the Sheriff. The Direction to Enforce sets out specifically what seized merchandise would then be sold at auction by the Sheriff, and the net proceeds paid to the Judgment Creditor. Other assets owned by the business or individual, such as bank accounts, real property and vehicles, can also be seized and sold by way of Writ of Seizure and Sale. In every case, however, there is a requirement for a monetary deposit to be made with Sheriff. The amount of deposit varies depending upon the type of property to be seized.
Garnishment proceedings are generally commenced against individuals who are employed and receive paycheques or have their pay automatically deposited into their bank accounts. This is due to the fact that the Notice of Garnishment would be issued to the employer, obligating the employer to deduct a specified amount from the individual’s pay, which deduction is then paid to the Judgment Creditor. This method is not effective against individuals who are self-employed or paid in cash as there is not a third party to police the payment under the Notice of Garnishment. Garnishment proceedings are commenced by way of an ex parte motion to the Federal Court, by the Judgment Creditor, seeking a Show Cause Order that the Judgment Debtor attend at a specified place and time to show cause why the Judgment Debtor should not have to satisfy the judgment. Once obtained, the Show Cause Order must be served upon the Judgment Debtor personally, at least seven (7) days prior to the hearing. If the Judgment Debtor fails to attend the hearing, or does not show cause, to the Federal Court’s satisfaction, why the debt should not be paid, the Federal Court shall then issue a Final Garnishment Order. Upon obtaining the Final Garnishment Order, the Judgment Creditor may then issue a Notice of Garnishment to the Judgment Debtor’s employer.
Prior to deciding on the method of enforcement, you may wish to conduct an examination in aid of execution (formerly referred to as a Judgment Debtor examination). This examination is a fact-finding tool used to determine the extent of a Judgment Debtor’s assets and income. This type of examination may be conducted against an individual or a company and is very helpful in assisting in the determination of the method of enforcement or whether commencing enforcement proceedings is financially feasible.