WHAT TO DO IF CHARGED WITH A CRIMINAL OFFENCE RELATING TO TRADEMARK ALLEGATIONS

Being charged in connection with a trademark dispute is a serious matter. Prompt, informed action can protect your rights, your business, and your future.

Actions to Take If Charged with a Trademark Offence

Facing criminal charges tied to a trademark criminal offence requires immediate and careful attention. Whether the allegation involves counterfeit goods, unauthorized distribution, or use of a confusing trademark, the consequences can include monetary damages, reputational harm, and even imprisonment.

The first step any person or company should take is to seek legal advice to understand the scope of the allegation and the applicable law. Under the Trademarks Act, both civil and criminal remedies may apply where infringement is alleged, particularly where activities occur on a commercial scale.

It is critical to determine whether the trademark in question is a registered trademark, whether the mark has been properly used in association with goods or services, and whether any confusion could arise in the marketplace. For example, disputes involving luxury brands such as Louis Vuitton often hinge on whether a similar trademark creates confusion among consumers.

You should also avoid taking any steps that could be interpreted as continuing the alleged infringement. Continuing to distribute such goods or services after receiving notice may increase liability and strengthen the trademark owner’s claim in court proceedings.

Handling Search Warrants and Seizures

In some cases, enforcement authorities may execute search warrants against a business or individual suspected of trademark infringement or other IP infringement. These actions are typically authorized by a court and may involve the seizure of goods, documents, and digital devices.

If a search warrant is executed:

• Remain cooperative but do not volunteer unnecessary information.
• Request to review the warrant to understand its scope.
• Contact an IP lawyer immediately.

Authorities must act within the limits set by the warrant and applicable law. Any overreach may later be challenged in court. Evidence obtained improperly, such as through unlawful search and seizure, could be excluded from proceedings, which may affect the outcome of the case.

Where counterfeit goods or materials bearing a similar trademark are seized, including those found in the possession of the alleged infringing party, it is important to carefully document what was taken. This documentation may become important during trial or appeal.

Preserving Documents and Digital Evidence

Preservation of records is essential once a trademark infringement allegation arises. Destruction or alteration of documents, whether intentional or not, can negatively impact your defence and may be viewed as contrary to the interests of justice.

Relevant materials may include:

• Emails and internal communications.
• Product designs and packaging.
• Records of distribution and sales.
• Registration and filing documents with the Canadian Intellectual Property Office or Trademarks Office.

Maintaining proper proof of your use of a trade name or mark, including evidence of good faith, can be critical. For example, demonstrating that a business adopted a mark without knowledge of a registered trademark may influence how a court evaluates the key elements of infringement.

Risks of Speaking to Investigators

Individuals and companies under investigation often feel compelled to explain their position. However, speaking to investigators without legal counsel carries significant risk.

Statements made during an investigation can later be used as evidence in court proceedings. Even seemingly harmless explanations may be interpreted as admissions that the act was committed or that the accused had knowledge of the alleged infringement.

It is important to remember:

• You are not obliged to provide statements without counsel.
• Anything said may be used to support criminal charges.
• Misstatements can undermine your credibility.

An experienced lawyer can guide you on whether and how to communicate with enforcement authorities while protecting your trademark rights and broader IP rights.

Early Legal Defence Strategies

Developing a defence strategy early is essential in trademark infringement cases, particularly where criminal charges are involved. The approach will depend on the specific circumstances, including the nature of the mark, the goods or services in question, and whether the trademark owner can prove infringement.

Key considerations include:

• Whether the trademark was validly registered and enforceable.
• Whether the alleged use created confusion in the marketplace.
• Whether the use occurred with consent or under licence.
• Whether the limitation period has expired.

In Canada, both federal and provincial limitation period rules may apply, depending on the nature of the claim and where the proceedings are brought. Determining which province applies and whether the issue spans a single province or the entire country can influence jurisdiction and strategy.

Defences may also involve challenging the validity of the registration, disputing the likelihood or confusion, or demonstrating that the mark was used in good faith. In some cases, related companies may rely on shared use of a trade name or mark to defend against allegations.

Where necessary, matters may proceed through multiple levels of court, including the Federal Court and potentially Supreme Court on appeal.

Seek Legal Help to Respond to an Allegation of Trademark Infringement

Responding effectively to a trademark infringement allegation requires experienced legal guidance. Whether you are an individual or a business, early intervention can significantly affect the outcome. Obtaining a qualified legal opinion at the outset can help you understand your position in respect of the alleged infringement and determine the most appropriate course of action.

At Chand & Co., our lawyers can:

• Assess the strength of the trademark owner’s claim.
• Advise on compliance with the Trademarks Act and applicable law.
• Represent you in court proceedings or negotiations.
• Help enforce or defend IP rights.
• Assist with filings before the Canadian Intellectual Property Office or Trademarks Office.

Timely action is especially important given applicable limitation period requirements. Missing a limitation period may prevent you from advancing a defence, pursuing a claim, or responding effectively to related lawsuits.

Depending on the circumstances, a person or business may be found liable for damages if trademark infringement is established. Our approach is to mitigate that risk while protecting your commercial interests and reputation.

Ultimately, the goal is to protect your business, minimize exposure to monetary damages, and ensure that your rights are properly represented before the court. In complex cases involving multiple proceedings or appeals, having knowledgable counsel is essential to navigating the legal landscape and achieving a fair outcome.