Trademarks Act · GlobalLawDB

Contents

1Short title#

This Act may be cited as the Trademarks Act.^note

2Definitions#

In this Act,

certification mark means a sign or combination of signs that is used or proposed to be used for the purpose of distinguishing or so as to distinguish goods or services that are of a defined standard from those that are not of that defined standard, with respect to

(a)the character or quality of the goods or services,

(b)the working conditions under which the goods are produced or the services performed,

(c)the class of persons by whom the goods are produced or the services performed, or

(d)the area within which the goods are produced or the services performed; (marque de certification)

confusing, when applied as an adjective to a trademark or trade name, means, except in sections 11.13 and 11.21, a trademark or trade name the use of which would cause confusion in the manner and circumstances described in section 6; (créant de la confusion)

Convention means the Convention of the Union of Paris made on March 20, 1883 and any amendments and revisions thereof made before or after July 1, 1954 to which Canada is party; (Convention)

country of origin means

(a)the country of the Union in which the applicant for registration of a trademark had at the date of the application a real and effective industrial or commercial establishment, or

(b)if the applicant for registration of a trademark did not at the date of the application have in a country of the Union an establishment as described in paragraph (a), the country of the Union where he on that date had his domicile, or

(c)if the applicant for registration of a trademark did not at the date of the application have in a country of the Union an establishment as described in paragraph (a) or a domicile as described in paragraph (b), the country of the Union of which he was on that date a citizen or national; (pays d’origine)

country of the Union means

(a)any country that is a member of the Union for the Protection of Industrial Property constituted under the Convention, or

(b)any WTO Member; (pays de l’Union)

distinctive, in relation to a trademark, describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them; (distinctive)

distinguishing guise [Repealed, 2014, c. 20, s. 319]

geographical indication means an indication that identifies a wine or spirit, or an agricultural product or food of a category set out in the schedule, as originating in the territory of a WTO Member, or a region or locality of that territory, if a quality, reputation or other characteristic of the wine or spirit or the agricultural product or food is essentially attributable to its geographical origin; (indication géographique)

Nice Classification means the classification established by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, signed at Nice on June 15, 1957, including any amendments, modifications and revisions made from time to time to which Canada is a party; (classification de Nice)

owner, in relation to a certification mark, means the person by whom the defined standard has been established; (propriétaire)

package [Repealed, 2014, c. 32, s. 7]

person includes any lawful trade union and any lawful association engaged in trade or business or the promotion thereof, and the administrative authority of any country, state, province, municipality or other organized administrative area; (personne)

person interested includes any person who is affected or reasonably apprehends that he may be affected by any entry in the register, or by any act or omission or contemplated act or omission under or contrary to this Act, and includes the Attorney General of Canada; (personne intéressée)

prescribed means prescribed by or under the regulations; (prescrit)

proposed trade-mark [Repealed, 2014, c. 20, s. 319]

protected geographical indication means a geographical indication that is on the list kept pursuant to subsection 11.12(1); (indication géographique protégée)

register means the register kept under section 26; (registre)

registered trademark means a trademark that is on the register; (marque de commerce déposée)

registered user [Repealed, 1993, c. 15, s. 57]

Registrar means the Registrar of Trademarks who is described in subsection 63(1); (registraire)

related companies means companies that are members of a group of two or more companies one of which, directly or indirectly, owns or controls a majority of the issued voting stock of the others; (compagnies connexes)

release has the same meaning as in subsection 2(1) of the Customs Act; (dédouanement)

representative for service [Repealed, 2014, c. 20, s. 319]

sign includes a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign; (signe)

trademark means

(a)a sign or combination of signs that is used or proposed to be used by a person for the purpose of distinguishing or so as to distinguish their goods or services from those of others, or

(b)a certification mark; (marque de commerce)

trade name means the name under which any business is carried on, whether or not it is the name of a corporation, a partnership or an individual; (nom commercial)

use, in relation to a trademark, means any use that by section 4 is deemed to be a use in association with goods or services; (emploi ou usage)

wares [Repealed, 2014, c. 32, s. 7]

WTO Agreement has the meaning given to the word Agreement by subsection 2(1) of the World Trade Organization Agreement Implementation Act; (Accord sur l’OMC)

WTO Member means a Member of the World Trade Organization established by Article I of the WTO Agreement. (membre de l’OMC)

^note

2.1Reference to person#

Unless the context requires otherwise, a reference to person in this Act, in relation to a trademark, includes two or more persons who, by agreement, do not have the right to use the trademark in Canada except on behalf of both or all of them.^note

3When deemed to be adopted#

A trademark is deemed to have been adopted by a person when that person or his predecessor in title commenced to use it in Canada or to make it known in Canada or, if that person or his predecessor had not previously so used it or made it known, when that person or his predecessor filed an application for its registration in Canada.^note

4When deemed to be used#

(1)A trademark is deemed to be used in association with goods if, at the time of the transfer of the property in or possession of the goods, in the normal course of trade, it is marked on the goods themselves or on the packages in which they are distributed or it is in any other manner so associated with the goods that notice of the association is then given to the person to whom the property or possession is transferred.

(2)A trademark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.

(3)A trademark that is marked in Canada on goods or on the packages in which they are contained is, when the goods are exported from Canada, deemed to be used in Canada in association with those goods.

^note

5When deemed to be made known#

A trademark is deemed to be made known in Canada by a person only if it is used by that person in a country of the Union, other than Canada, in association with goods or services, and

(a)the goods are distributed in association with it in Canada, or

(b)the goods or services are advertised in association with it in

(i)any printed publication circulated in Canada in the ordinary course of commerce among potential dealers in or users of the goods or services, or

(ii)radio broadcasts ordinarily received in Canada by potential dealers in or users of the goods or services,

and it has become well known in Canada by reason of the distribution or advertising.^note

6When mark or name confusing#

(1)For the purposes of this Act, a trademark or trade name is confusing with another trademark or trade name if the use of the first mentioned trademark or trade name would cause confusion with the last mentioned trademark or trade name in the manner and circumstances described in this section.

(2)The use of a trademark causes confusion with another trademark if the use of both trademarks in the same area would be likely to lead to the inference that the goods or services associated with those trademarks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class or appear in the same class of the Nice Classification.

(3)The use of a trademark causes confusion with a trade name if the use of both the trademark and trade name in the same area would be likely to lead to the inference that the goods or services associated with the trademark and those associated with the business carried on under the trade name are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class or appear in the same class of the Nice Classification.

(4)The use of a trade name causes confusion with a trademark if the use of both the trade name and trademark in the same area would be likely to lead to the inference that the goods or services associated with the business carried on under the trade name and those associated with the trademark are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class or appear in the same class of the Nice Classification.

(5)In determining whether trademarks or trade names are confusing, the court or the Registrar, as the case may be, shall have regard to all the surrounding circumstances including

(a)the inherent distinctiveness of the trademarks or trade names and the extent to which they have become known;

(b)the length of time the trademarks or trade names have been in use;

(c)the nature of the goods, services or business;

(d)the nature of the trade; and

(e)the degree of resemblance between the trademarks or trade names, including in appearance or sound or in the ideas suggested by them.

^note

Unfair Competition and Prohibited Signs

7Prohibitions#

No person shall

(a)make a false or misleading statement tending to discredit the business, goods or services of a competitor;

(b)direct public attention to his goods, services or business in such a way as to cause or be likely to cause confusion in Canada, at the time he commenced so to direct attention to them, between his goods, services or business and the goods, services or business of another;

(c)pass off other goods or services as and for those ordered or requested; or

(d)make use, in association with goods or services, of any description that is false in a material respect and likely to mislead the public as to

(i)the character, quality, quantity or composition,

(ii)the geographical origin, or

(iii)the mode of the manufacture, production or performance

of the goods or services.

(e)[Repealed, 2014, c. 32, s. 10] (repealed)

^note

8Warranty of lawful use#

Every person who in the course of trade transfers the property in or the possession of any goods bearing, or in packages bearing, any trademark or trade name shall, unless before the transfer he otherwise expressly states in writing, be deemed to warrant, to the person to whom the property or possession is transferred, that the trademark or trade name has been and may be lawfully used in connection with the goods.^note

9Prohibited marks#

(1)No person shall adopt in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for,

(a)the Royal Arms, Crest or Standard;

(b)the arms or crest of any member of the Royal Family;

(c)the standard, arms or crest of His Excellency the Governor General;

(d)any word or symbol likely to lead to the belief that the goods or services in association with which it is used have received, or are produced, sold or performed under, royal, vice-regal or governmental patronage, approval or authority;

(e)the arms, crest or flag adopted and used at any time by Canada or by any province or municipal corporation in Canada in respect of which the Registrar has, at the request of the Government of Canada or of the province or municipal corporation concerned, given public notice of its adoption and use;

(f)the emblem of the Red Cross on a white ground, formed by reversing the federal colours of Switzerland and retained by the Geneva Convention for the Protection of War Victims of 1949 as the emblem and distinctive sign of the Medical Service of armed forces and used by the Canadian Red Cross Society, or the expression “Red Cross” or “Geneva Cross”;

(g)the emblem of the Red Crescent on a white ground adopted for the same purpose as specified in paragraph (f);

(g.1)the third Protocol emblem — commonly known as the “Red Crystal” — referred to in Article 2, paragraph 2 of Schedule VII to the Geneva Conventions Act and composed of a red frame in the shape of a square on edge on a white ground, adopted for the same purpose as specified in paragraph (f);

(h)the equivalent sign of the Red Lion and Sun used by Iran for the same purpose as specified in paragraph (f);

(h.1)the international distinctive sign of civil defence (equilateral blue triangle on an orange ground) referred to in Article 66, paragraph 4 of Schedule V to the Geneva Conventions Act;

(i)any territorial or civic flag or any national, territorial or civic arms, crest or emblem, of a country of the Union, if the flag, arms, crest or emblem is on a list communicated under article 6^ter of the Convention or pursuant to the obligations under the Agreement on Trade-related Aspects of Intellectual Property Rights set out in Annex 1C to the WTO Agreement stemming from that article, and the Registrar gives public notice of the communication;

(i.1)any official sign or hallmark indicating control or warranty adopted by a country of the Union, if the sign or hallmark is on a list communicated under article 6^ter of the Convention or pursuant to the obligations under the Agreement on Trade-related Aspects of Intellectual Property Rights set out in Annex 1C to the WTO Agreement stemming from that article, and the Registrar gives public notice of the communication;

(i.2)any national flag of a country of the Union;

(i.3)any armorial bearing, flag or other emblem, or the name or any abbreviation of the name, of an international intergovernmental organization, if the armorial bearing, flag, emblem, name or abbreviation is on a list communicated under article 6^ter of the Convention or pursuant to the obligations under the Agreement on Trade-related Aspects of Intellectual Property Rights set out in Annex 1C to the WTO Agreement stemming from that article, and the Registrar gives public notice of the communication;

(j)any scandalous, obscene or immoral word or device;

(k)any matter that may falsely suggest a connection with any living individual;

(l)the portrait or signature of any individual who is living or has died within the preceding thirty years;

(m)the words “United Nations” or the official seal or emblem of the United Nations;

(n)any badge, crest, emblem or mark

(i)adopted or used by any of Her Majesty’s Forces as defined in the National Defence Act,

(ii)of any university, or

(iii)adopted and used by any public authority, in Canada as an official mark for goods or services,

in respect of which the Registrar has, at the request of Her Majesty or of the university or public authority, as the case may be, given public notice of its adoption and use;

(n.1)any armorial bearings granted, recorded or approved for use by a recipient pursuant to the prerogative powers of Her Majesty as exercised by the Governor General in respect of the granting of armorial bearings, if the Registrar has, at the request of the Governor General, given public notice of the grant, recording or approval; or

(o)the name “Royal Canadian Mounted Police” or “R.C.M.P.” or any other combination of letters relating to the Royal Canadian Mounted Police, or any pictorial representation of a uniformed member thereof.

(2)Nothing in this section prevents the adoption, use or registration as a trademark or otherwise, in connection with a business, of any mark

(a)described in subsection (1) with the consent of Her Majesty or such other person, society, authority or organization as may be considered to have been intended to be protected by this section; or

(b)consisting of, or so nearly resembling as to be likely to be mistaken for

(i)an official sign or hallmark mentioned in paragraph (1)(i.1), except in respect of goods that are the same or similar to the goods in respect of which the official sign or hallmark has been adopted, or

(ii)an armorial bearing, flag, emblem, name or abbreviation mentioned in paragraph (1)(i.3), unless the use of the mark is likely to mislead the public as to a connection between the user and the organization.

(3)For greater certainty, and despite any public notice of adoption and use given by the Registrar under paragraph (1)(n), subparagraph (1)(n)(iii) does not apply with respect to a badge, crest, emblem or mark if the entity that made the request for the public notice is not a public authority or no longer exists.

(4)In the circumstances set out in subsection (3), the Registrar may, on his or her own initiative or at the request of a person who pays a prescribed fee, give public notice that subparagraph (1)(n)(iii) does not apply with respect to the badge, crest, emblem or mark.

^note

10Further prohibitions#

If any sign or combination of signs has by ordinary and bona fide commercial usage become recognized in Canada as designating the kind, quality, quantity, destination, value, place of origin or date of production of any goods or services, no person shall adopt it as a trademark in association with the goods or services or others of the same general class or use it in a way likely to mislead, nor shall any person so adopt or so use any sign or combination of signs so nearly resembling that sign or combination as to be likely to be mistaken for it.^note

10.1Further prohibitions#

Where a denomination must, under the Plant Breeders’ Rights Act, be used to designate a plant variety, no person shall adopt it as a trademark in association with the plant variety or another plant variety of the same species or use it in a way likely to mislead, nor shall any person so adopt or so use any mark so nearly resembling that denomination as to be likely to be mistaken therefor.^note

11Further prohibitions#

No person shall use in connection with a business, as a trademark or otherwise, any sign or combination of signs adopted contrary to section 9 or 10.^note

11.01Exception#

Despite section 11, a person may use a badge, crest, emblem or mark described in subparagraph 9(1)(n)(iii) if, at the time of use, the entity that made the request for a public notice under paragraph 9(1)(n) with respect to the badge, crest, emblem or mark is not a public authority or no longer exists.^note

11.1Further prohibitions#

No person shall use in connection with a business, as a trademark or otherwise, any denomination adopted contrary to section 10.1.^note

Geographical Indications

11.11Definitions#

(1)The following definitions apply in this section and in sections 11.12 to 11.24.

Minister means the Minister designated under subsection (2). (ministre)

responsible authority means, in relation to a wine or spirit, or an agricultural product or food of a category set out in the schedule, the person, firm or other entity that, in the Minister’s opinion, is, by reason of state or commercial interest, sufficiently connected with and knowledgeable about that wine or spirit or that agricultural product or food to be a party to any proceedings under this Act. (autorité compétente)

(2)The Governor in Council may, by order, designate any federal minister to be the Minister for the purposes of this section and sections 11.12 to 11.24.

(3)For the purposes of sections 11.13 and 11.21, an indication identifying an agricultural product or food is confusing with a trademark if the use of both the indication and the trademark in the same area would be likely to lead to the inference that the agricultural product or food associated with the indication originates from the same source as the goods or services associated with the trademark.

(4)For the purposes of sections 11.13 and 11.21, in determining whether an indication is confusing with a trademark, the Registrar or the Federal Court, as the case may be, shall have regard to all the surrounding circumstances, including

(a)the length of time that the indication has been used to identify the agricultural product or food with which it is associated as originating in the territory, or the region or locality of a territory, and the extent to which it has become known;

(b)the degree of resemblance between the indication and the trademark, including in appearance or sound or in the ideas suggested by them; and

(c)with respect to the trademark,

(i)its inherent distinctiveness and the extent to which it has become known,

(ii)the length of time that it has been in use, and

(iii)the nature of the goods, services or business that is associated with it.

^note

11.12List#

(1)There shall be kept under the supervision of the Registrar a list of geographical indications and, in the case of geographical indications identifying an agricultural product or food, translations of those indications.

(2)If a statement by the Minister in respect of an indication is published on the website of the Canadian Intellectual Property Office setting out the information mentioned in subsection (3), the Registrar shall enter the indication, and any translation of the indication set out in the statement, on the list if

(a)no statement of objection has been filed and served on the responsible authority in accordance with subsection 11.13(1) and the time for the filing of a statement of objection has expired; or

(b)a statement of objection has been so filed and served, but it has been withdrawn or deemed under subsection 11.13(6) to have been withdrawn or it has been rejected under subsection 11.13(7) or, if an appeal is taken, it is rejected in the final judgment given in the appeal.

(2.1)If a statement by the Minister is published on the website of the Canadian Intellectual Property Office setting out the information mentioned in subsection (3.1) in respect of a translation of an indication on the list that identifies an agricultural product or food, the Registrar shall enter the translation on the list if

(a)no statement of objection has been filed and served on the responsible authority in accordance with subsection 11.13(1) and the time for the filing of the statement of objection has expired; or

(3)For the purposes of subsection (2), the statement by the Minister must set out all of the following information:

(a)that the Minister proposes that the indication and, if applicable, a translation of the indication, in the case of an indication that identifies an agricultural product or food, be entered on the list;

(b)in the case of an indication that identifies a wine or spirit, that the indication identifies a wine or that the indication identifies a spirit;

(b.1)in the case of an indication that identifies an agricultural product or food, the common name of the agricultural product or food and the category set out in the schedule to which it belongs;

(c)the territory, or the region or locality of a territory, in which the wine or spirit or the agricultural product or food is identified as originating;

(d)the name of the responsible authority in relation to the wine or spirit or the agricultural product or food and the address of the responsible authority’s principal office or place of business in Canada or, if the responsible authority has no office or place of business in Canada, the name and address in Canada of a person or firm on whom any document may be served with the same effect as if it had been served on the responsible authority itself;

(e)the quality, reputation or other characteristic of the wine or spirit or the agricultural product or food that, in the Minister’s opinion, qualifies that indication as a geographical indication;

(f)that, except in the case of an indication identifying a wine or spirit or an agricultural product or food as originating in Canada, the indication is protected by the law applicable to the territory in which the wine or spirit or the agricultural product or food is identified as originating, as well as particulars of the protection.

(3.1)For the purposes of subsection (2.1), the statement by the Minister must set out all of the following information:

(a)that the Minister proposes that the translation be entered on the list;

(b)the indication on the list that corresponds to the translation;

(c)the common name of the agricultural product or food that the indication identifies and the category set out in the schedule to which it belongs;

(d)the name of the responsible authority in relation to the agricultural product or food and the address of the responsible authority’s principal office or place of business in Canada or, if the responsible authority has no office or place of business in Canada, the name and address in Canada of a person or firm on whom any document may be served with the same effect as if it had been served on the responsible authority itself.

(4)The Registrar shall remove an indication or any translation of an indication from the list

(a)on the publication of a statement by the Minister on the website of the Canadian Intellectual Property Office specifying that the indication or the translation is to be removed; or

(b)if the Federal Court makes an order under subsection 11.21(1) for the removal of the indication or the translation.

(5)The Registrar may, within six months after the day on which an indication or a translation of an indication is entered on the list, correct any error in that entry that is obvious from the documents relating to the indication or the translation in question that are, at the time that the entry is made, on file in the Registrar’s office.

(6)A copy of any entry on the list purporting to be certified to be true by the Registrar is evidence of the facts set out in it.

(7)Evidence of a statement by the Minister may be given by the production of a copy of the statement purporting to be certified to be true by the Registrar.

(8)The Registrar shall, on request and on payment of the prescribed fee, furnish a copy certified by the Registrar of any entry on the list or of any statement by the Minister.

^note

11.13Statement of objection#

(1)Within two months after the publication of a statement referred to in subsection 11.12(2) or (2.1), any person interested may, on payment of the prescribed fee, file with the Registrar, and serve on the responsible authority in the prescribed manner, a statement of objection.

(2)A statement of objection with respect to an indication may be based on any of the following grounds:

(a)that, when the statement by the Minister is published, the indication is not a geographical indication;

(b)that, when the statement by the Minister is published, the indication is identical to a term customary in common language in Canada as the common name for the wine or spirit or the agricultural product or food;

(c)that, except in the case of an indication identifying a wine or spirit or an agricultural product or food as originating in Canada, when the statement by the Minister is published, the indication is not protected by the law applicable to the territory in which the wine or spirit or the agricultural product or food is identified as originating;

(d)in the case of an indication identifying an agricultural product or food, that, when the statement by the Minister is published, the indication is confusing with

(i)a registered trademark,

(ii)a trademark that was previously used in Canada and that has not been abandoned, or

(iii)a trademark in respect of which an application for registration was previously filed in Canada and remains pending.

(2.1)A statement of objection with respect to a translation may be based on any of the following grounds:

(a)that, when the statement by the Minister is published, the translation is not a faithful translation of the indication;

(b)that, when the statement by the Minister is published, the translation is identical to a term customary in common language in Canada as the common name for the agricultural product or food;

(c)that, when the statement by the Minister is published, the translation is confusing with

(i)a registered trademark,

(ii)a trademark that was previously used in Canada and that has not been abandoned, or

(iii)a trademark in respect of which an application for registration was previously filed in Canada and remains pending.

(3)A statement of objection shall set out

(a)each ground of objection in sufficient detail to enable the responsible authority to reply to it; and

(b)the address of the objector’s principal office or place of business in Canada, if any, and if the objector has no office or place of business in Canada, the address of the principal office or place of business abroad and the name and address in Canada of a person or firm on whom service of any document in respect of the objection may be made with the same effect as if it had been served on the objector.

(3.1)At any time before the day on which the responsible authority files a counter statement, the Registrar may, at the responsible authority’s request or on his or her own initiative, reject the statement of objection if the Registrar considers that the statement does not raise a substantial issue for decision and shall give notice of his or her decision to the objector and to the responsible authority.

(3.2)At any time before the day on which the responsible authority files a counter statement, the Registrar may, at the responsible authority’s request, strike all or part of the statement of objection if the statement or part of it

(a)is not based on any of the grounds set out in subsection (2) or (2.1); or

(b)does not set out a ground of objection in sufficient detail to enable the responsible authority to reply to it.

(4)Within two months after a statement of objection has been served on the responsible authority, the responsible authority may file a counter statement with the Registrar and serve a copy on the objector in the prescribed manner, and if the responsible authority does not so file and serve a counter statement, the indication or the translation shall not be entered on the list kept under subsection 11.12(1). The counter statement need only state that the responsible authority intends to respond to the objection.

(5)Both the objector and the responsible authority shall be given an opportunity, in the prescribed manner and within the prescribed time, to submit evidence and to make representations to the Registrar unless

(a)the responsible authority does not file and serve a counter statement in accordance with subsection (4) or if, in the prescribed circumstances, the responsible authority does not submit evidence or a statement that the responsible authority does not wish to submit evidence; or

(b)the objection is withdrawn or deemed under subsection (6) to have been withdrawn.

(5.1)The objector and the responsible authority shall, in the prescribed manner and within the prescribed time, serve on each other any evidence and written representations that they submit to the Registrar.

(6)The objection is deemed to have been withdrawn if, in the prescribed circumstances, the objector does not submit and serve evidence or a statement that the objector does not wish to submit evidence.

(6.1)The indication or the translation shall not be entered on the list if, in the prescribed circumstances, the responsible authority does not submit and serve evidence or a statement that the responsible authority does not wish to submit evidence.

(6.2)If, in the opinion of the Registrar, an objector is in default in the continuation of an objection, the Registrar may, after giving notice to the objector of the default, treat the objection as withdrawn unless the default is remedied within the time specified in the notice.

(7)After considering the evidence and representations of the objector and the responsible authority, the Registrar shall accept or reject the objection, in whole or in part, and notify the parties of the decision and the reasons for it.

(8)The Registrar shall not enter any translation of an indication on the list if the Registrar accepts the objection with respect to the indication or, if an appeal is taken, the objection is accepted in the final judgment given in the appeal.

(9)Subject to the regulations, the Registrar may, by order, award costs in a proceeding under this section.

(10)A certified copy of an order made under subsection (9) may be filed in the Federal Court and, on being filed, the order becomes and may be enforced as an order of that Court.

^note

11.14Prohibited adoption of indication for wines#

(1)No person shall adopt in connection with a business, as a trademark or otherwise,

(a)a protected geographical indication identifying a wine in respect of a wine not originating in the territory indicated by the protected geographical indication; or

(b)a translation in any language of the geographical indication in respect of that wine.

(2)No person shall use in connection with a business, as a trademark or otherwise,

(a)a protected geographical indication identifying a wine in respect of a wine not originating in the territory indicated by the protected geographical indication or adopted contrary to subsection (1); or

(b)a translation in any language of the geographical indication in respect of that wine.

(3)No person shall use in connection with a business, as a trademark or otherwise,

(a)a protected geographical indication identifying a wine in respect of a wine that originates in the territory indicated by the protected geographical indication if that wine was not produced or manufactured in accordance with the law applicable to that territory; or

(b)a translation in any language of the geographical indication in respect of that wine.

(4)No person shall adopt in connection with a business, as a trademark or otherwise,

(a)a protected geographical indication identifying a spirit in respect of a spirit not originating in the territory indicated by the protected geographical indication; or

(b)a translation in any language of the geographical indication in respect of that spirit.

(5)No person shall use in connection with a business, as a trademark or otherwise,

(a)a protected geographical indication identifying a spirit in respect of a spirit not originating in the territory indicated by the protected geographical indication or adopted contrary to subsection (4); or

(b)a translation in any language of the geographical indication in respect of that spirit.

(6)No person shall use in connection with a business, as a trademark or otherwise,

(a)a protected geographical indication identifying a spirit in respect of a spirit that originates in the territory indicated by the protected geographical indication if that spirit was not produced or manufactured in accordance with the law applicable to that territory; or

(b)a translation in any language of the geographical indication in respect of that spirit.

^note

11.15Prohibited adoption of indication for agricultural products or food#

(1)No person shall adopt in connection with a business, as a trademark or otherwise,

(a)a protected geographical indication identifying an agricultural product or food of a category set out in the schedule in respect of an agricultural product or food belonging to the same category that does not originate in the territory indicated by the protected geographical indication; or

(b)a translation on the list kept under subsection 11.12(1) of the protected geographical indication in respect of that agricultural product or food.

(2)No person shall use in connection with a business, as a trademark or otherwise,

(b)a translation on the list kept under subsection 11.12(1) of the protected geographical indication in respect of that agricultural product or food.

(3)No person shall use in connection with a business, as a trademark or otherwise,

(a)a protected geographical indication identifying an agricultural product or food of a category set out in the schedule in respect of an agricultural product or food belonging to the same category that originates in the territory indicated by the protected geographical indication if that agricultural product or food was not produced or manufactured in accordance with the law applicable to that territory; or

(b)a translation on the list kept under subsection 11.12(1) of the protected geographical indication in respect of that agricultural product or food.

^note

11.16Exception when authorized#

(2)Sections 11.14 and 11.15 do not prevent a person from using, in the course of trade, the person’s name or the name of the person’s predecessor in title, except where the name is used in such a manner as to mislead the public.

(3)Sections 11.14 and 11.15 do not prevent a person from using a protected geographical indication, or any translation of it in any language, in comparative advertising.

(4)Subsection (3) does not apply to comparative advertising on labels or packaging.

^note

11.17Continued use — wines or spirits#

(1)Section 11.14 does not apply to the continued and similar use of a protected geographical indication identifying a wine or spirit, or any translation of it in any language, by a Canadian who has used it in a continuous manner in relation to any business or commercial activity in respect of goods or services

(a)in good faith before April 15, 1994; or

(b)for at least 10 years before that date.

(2)For the purposes of subsection (1), Canadian means

(a)a Canadian citizen;

(b)a permanent resident as defined in subsection 2(1) of the Immigration and Refugee Protection Act who has been ordinarily resident in Canada for not more than one year after the day on which they first became eligible to apply for Canadian citizenship; and

(c)an entity that carries on business in Canada.

(3)Section 11.15 does not apply to the use, in connection with a business, of any of the indications “Asiago”, “Feta”, “Φέτα” (Feta), “Fontina”, “Gorgonzola” or “Munster”, or any translation of them in any language, by a person if they or their predecessor in title used the indication or the translation in relation to any business or commercial activity in respect of an agricultural product or food of the category of cheeses, as set out in the schedule, before October 18, 2013.

(4)Section 11.15 does not apply to the use, in connection with a business, of any of the indications “Asiago”, “Feta”, “Φέτα” (Feta), “Fontina”, “Gorgonzola” or “Munster”, or any translation of them in any language, in respect of an agricultural product or food of the category of cheeses, as set out in the schedule, if

(a)a qualifying term such as “kind”, “type”, “style” or “imitation” is used in connection with the indication or the translation; and

(b)the geographical origin of the cheese is clearly displayed on the cheese or on the packaging in which it is distributed, or is in any other manner associated with the cheese so that notice of the cheese’s origin is given to the person to whom the cheese is transferred.

(5)Section 11.15 does not apply to the use, in connection with a business, of the indication “Beaufort”, or any translation of it in any language, by a person if

(a)the person or their predecessor in title used the indication or the translation for at least 10 years before October 18, 2013 in relation to any business or commercial activity in respect of an agricultural product or food of the category of cheeses, as set out in the schedule; or

(b)the person uses the indication or the translation in relation to any business or commercial activity in respect of a cheese product that was produced in the proximity of the Beaufort Range on Vancouver Island in British Columbia.

(6)Section 11.15 does not apply to the use, in connection with a business, of the indication “Nürnberger Bratwürste”, or any translation of it in any language, by a person, if they or their predecessor in title used the indication or the translation in relation to any business or commercial activity in respect of an agricultural product or food of the category of fresh, frozen and processed meats, as set out in the schedule, for at least five years before October 18, 2013.

(7)Section 11.15 does not apply to the use, in connection with a business, of the indication “Jambon de Bayonne”, or any translation of it in any language, by a person, if they or their predecessor in title used the indication or the translation in relation to any business or commercial activity in respect of an agricultural product or food of the category of dry-cured meats, as set out in the schedule, for at least 10 years before October 18, 2013.

(8)For the purposes of subsections (3) and (5) to (7), no person is a predecessor in title if they only transferred the right to use the indication or the translation, or both.

^note

11.18Exception for disuse#

(1)Sections 11.14 and 11.15 and paragraphs 12(1)(g) to (h.1) do not prevent the adoption, use or registration as a trademark or otherwise, in connection with a business, of a protected geographical indication, or any translation of it in any language, if the indication has ceased to be protected by the law applicable to the territory in which the wine or spirit or the agricultural product or food is identified as originating, or has fallen into disuse in that territory.

(2)Sections 11.14 and 11.15 and paragraphs 12(1)(g) to (h.1) do not prevent the adoption, use or registration as a trademark or otherwise, in connection with a business, of a protected geographical indication that is identical to

(a)a term customary in common language in Canada as the common name for the wine or spirit or the agricultural product or food;

(b)a customary name of a grape variety existing in Canada on or before the day on which the WTO Agreement comes into force; or

(c)a customary name of a plant variety or an animal breed existing in Canada on or before the day on which the indication is entered on the list kept under subsection 11.12(1).

(2.1)Sections 11.14 and 11.15 and paragraphs 12(1)(g) to (h.1) do not prevent the adoption, use or registration as a trademark or otherwise, in connection with a business, of a translation of a protected geographical indication that is identical to a term customary in common language in Canada as the common name for a wine or spirit or an agricultural product or food.

(3)Subsections 11.14(1) to (3) and paragraph 12(1)(g) do not prevent the adoption, use or registration as a trademark or otherwise, in connection with a business, of the following indications in respect of wines:

(4)Subsections 11.14(4) to (6) and paragraph 12(1)(h) do not prevent the adoption, use or registration as a trademark or otherwise, in connection with a business, of the following indications in respect of spirits:

(a)[Repealed, SOR/2004-85] (repealed)

(b)Marc;

(c)[Repealed, SOR/2004-85] (repealed)

(d)Sambuca;

(e)Geneva Gin;

(f)Genièvre;

(g)Hollands Gin;

(h)London Gin;

(i)Schnapps;

(j)Malt Whiskey;

(k)Eau-de-vie;

(l)Bitters;

(m)Anisette;

(n)Curacao; and

(o)Curaçao.

(4.1)Section 11.15 and paragraph 12(1)(h.1) do not prevent the adoption, use or registration as a trademark or otherwise, in connection with a business, of the following indications in respect of an agricultural product or food:

(a)Valencia Orange;

(b)Orange Valencia;

(c)Valencia;

(d)Black Forest Ham;

(e)Jambon Forêt Noire;

(f)Tiroler Bacon;

(g)Bacon Tiroler;

(h)Parmesan;

(i)St. George Cheese;

(j)Fromage St-George; and

(k)Fromage St-Georges.

(4.2)For purposes of subsection (4.1), the indications set out in paragraphs (f) and (g) include spelling variations of those indications in English and French.

(4.3)Section 11.15 and paragraph 12(1)(h.1) do not prevent the adoption, use or registration as a trademark or otherwise, in connection with a business, of the term “county”, or any translation of it in any language, in association with an agricultural product or food if that term is used to refer to the name of a territorial division or an administrative division of a territory.

(5)The Governor in Council may, by order, amend any of subsections (3) to (4.1) by adding or deleting an indication in respect of a wine or spirit or an agricultural product or food, as the case may be.

^note

11.19Exception for failure to take proceedings#

(1)Sections 11.14 and 11.15 do not apply to the adoption or use of a trademark by a person if no proceedings are taken to enforce those sections in respect of that person’s use or adoption of the trademark within five years after use of the trademark by that person or that person’s predecessor-in-title has become generally known in Canada or the trademark has been registered by that person in Canada, unless it is established that that person or that person’s predecessor-in-title first used or adopted the trademark with knowledge that such use or adoption was contrary to section 11.14 or 11.15, as the case may be.

(2)In proceedings respecting a registered trademark commenced after the expiry of five years from the earlier of the date of registration of the trademark in Canada and the date on which use of the trademark by the person who filed the application for registration of the trademark or that person’s predecessor in title has become generally known in Canada, the registration must not be expunged or amended or held invalid on the basis of any of paragraphs 12(1)(g) to (h.1) unless it is established that the person who filed the application for registration of the trademark did so with knowledge that the trademark was in whole or in part a protected geographical indication.

^note

11.2Acquired rights — wines#

(1)Section 11.14 and paragraph 12(1)(g) do not prevent the adoption, use or registration as a trademark in association with a wine of a protected geographical indication, or any translation of it in any language, by a person if they have, in good faith, before the later of January 1, 1996 and the day on which protection of the indication in the territory indicated by the indication begins,

(a)filed an application in accordance with section 30 for, or secured the registration of, the trademark in association with a wine; or

(b)acquired rights through use to the trademark in respect of a wine.

(2)Section 11.14 and paragraph 12(1)(h) do not prevent the adoption, use or registration as a trademark in association with a spirit of a protected geographical indication, or any translation of it in any language, by a person if they have, in good faith, before the later of January 1, 1996 and the day on which protection of the indication in the territory indicated by the indication begins,

(a)filed an application in accordance with section 30 for, or secured the registration of, the trademark in association with a spirit; or

(b)acquired rights through use to the trademark in respect of a spirit.

(3)Section 11.15 and paragraph 12(1)(h.1) do not prevent the adoption, use or registration as a trademark in association with an agricultural product or food of a category set out in the schedule of a protected geographical indication, or any translation of it in any language, by a person if they have, in good faith, before the day on which a statement by the Minister is published under subsection 11.12(2) or (2.1) in respect of the indication or translation,

(a)filed an application in accordance with section 30 for, or secured the registration of, the trademark in association with an agricultural product or food belonging to the same category; or

(b)acquired rights through use to the trademark in respect of an agricultural product or food belonging to the same category.

^note

11.21Removal from the list#

(1)On the application of any person interested, the Federal Court has exclusive jurisdiction to order the Registrar to remove an indication or a translation from the list of geographical indications kept under subsection 11.12(1) on any of the grounds set out in subsection (2) or (3), as the case may be.

(2)The grounds for the removal of an indication are

(a)that, on the day on which the application is made, the indication is not a geographical indication;

(b)that, on the day on which the application is made, the indication is identical to a term customary in common language in Canada as the common name for the wine or spirit or the agricultural product or food;

(c)that, except in the case of an indication identifying a wine or spirit or an agricultural product or food as originating in Canada, when the statement by the Minister in respect of the indication is published or on the day on which the application is made, the indication is not protected by the law applicable to the territory in which the wine or spirit or the agricultural product or food is identified as originating;

(d)in the case of an indication identifying an agricultural product or food, that, when the statement by the Minister is published, the indication is confusing with

(i)a registered trademark, or

(ii)a trademark that was previously used in Canada and that has not been abandoned; or

(e)in the case of an indication identifying an agricultural product or food, that

(i)when the statement by the Minister is published, the indication is confusing with a trademark in respect of which an application for registration was previously filed in Canada, and

(ii)on the day on which the application is made, that application for registration remains pending or the trademark is registered.

(3)The grounds for the removal of a translation are

(a)that, on the day on which the application is made, the translation is identical to a term customary in common language in Canada as the common name for the agricultural product or food;

(b)that, when the statement by the Minister in respect of the translation is published, the translation is confusing with

(i)a registered trademark, or

(ii)a trademark that was previously used in Canada and that has not been abandoned;

(c)that

(i)when the statement by the Minister in respect of the translation is published, the translation is confusing with a trademark in respect of which an application for registration was previously filed in Canada, and

(ii)on the day on which the application is made, that application for registration remains pending or the trademark is registered; or

(d)that, when the statement by the Minister in respect of the translation is published, the translation is not a faithful translation of the indication.

(4)An application shall be made by the filing of an originating notice of motion, by counter-claim in an action for an act contrary to section 11.14 or 11.15, or by statement of claim in an action claiming additional relief under this Act.

(5)The proceedings on an application shall be heard and determined summarily on evidence adduced by affidavit unless the Federal Court directs otherwise.

(6)If the Federal Court orders the removal of an indication identifying an agricultural product or food from the list, the Registrar shall remove any translation of that indication from the list.

^note

11.22CETA indications#

Paragraph 11.18(2)(a) and section 11.21 do not apply with respect to a protected geographical indication that is listed in Part A of Annex 20-A, as amended from time to time, of Chapter Twenty of the Comprehensive Economic and Trade Agreement between Canada and the European Union and its Member States, done at Brussels on October 30, 2016.^note

11.23Canada — Korea indications#

Paragraphs 11.18(2)(a) and (c) and section 11.21 do not apply with respect to an indication that is a protected geographical indication and that is included in the following list:

(a)GoryeoHongsam;

(b)GoryeoBaeksam;

(c)GoryeoSusam;

(d)IcheonSsal;

(e)ginseng rouge de Corée;

(f)ginseng blanc de Corée;

(g)ginseng frais de Corée;

(h)riz Icheon;

(i)Korean Red Ginseng;

(j)Korean White Ginseng;

(k)Korean Fresh Ginseng;

(l)Icheon Rice.

^note

11.24Powers of Governor in Council#

The Governor in Council may, by order, amend the schedule by adding or deleting a category of agricultural product or food.^note

Registrable Trademarks

12When trademark registrable#

(1)Subject to subsection (2), a trademark is registrable if it is not

(a)a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years;

(b)whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the goods or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin;

(c)the name in any language of any of the goods or services in connection with which it is used or proposed to be used;

(d)confusing with a registered trademark;

(e)a sign or combination of signs whose adoption is prohibited by section 9 or 10;

(f)a denomination the adoption of which is prohibited by section 10.1;

(g)in whole or in part a protected geographical indication identifying a wine, where the trademark is to be registered in association with a wine not originating in a territory indicated by the geographical indication;

(h)in whole or in part a protected geographical indication identifying a spirit, where the trademark is to be registered in association with a spirit not originating in a territory indicated by the geographical indication;

(h.1)in whole or in part a protected geographical indication, and the trademark is to be registered in association with an agricultural product or food — belonging to the same category, as set out in the schedule, as the agricultural product or food identified by the protected geographical indication — not originating in a territory indicated by the geographical indication; and

(i)subject to subsection 3(3) and paragraph 3(4)(a) of the Olympic and Paralympic Marks Act, a mark the adoption of which is prohibited by subsection 3(1) of that Act.

(2)A trademark is not registrable if, in relation to the goods or services in association with which it is used or proposed to be used, its features are dictated primarily by a utilitarian function.

(3)A trademark that is not registrable by reason of paragraph (1)(a) or (b) is registrable if it is distinctive at the filing date of an application for its registration, determined without taking into account subsection 34(1), having regard to all the circumstances of the case including the length of time during which it has been used.

^note

13 #

[Repealed, 2014, c. 20, s. 327] (repealed)

14 #

[Repealed, 2014, c. 20, s. 328] (repealed)

15Registration of confusing trademarks#

Despite section 12, confusing trademarks are registrable if the applicant is the owner of all of the confusing trademarks.^note

Persons Entitled to Registration of Trademarks

16Entitlement to registration#

(1)Any applicant who has filed an application in accordance with subsection 30(2) for the registration of a registrable trademark is entitled, subject to section 38, to secure its registration in respect of the goods or services specified in the application, unless at the filing date of the application or the date of first use of the trademark in Canada, whichever is earlier, it was confusing with

(a)a trademark that had been previously used in Canada or made known in Canada by any other person;

(b)a trademark in respect of which an application for registration had been previously filed in Canada by any other person; or

(c)a trade name that had been previously used in Canada by any other person.

(2)The right of an applicant to secure registration of a registrable trademark is not affected by the previous filing of an application for registration of a confusing trademark by another person, unless the application for registration of the confusing trademark was pending on the day on which the applicant’s application is advertised under subsection 37(1).

(3)The right of an applicant to secure registration of a registrable trademark is not affected by the previous use or making known of a confusing trademark or trade name by another person, if the confusing trademark or trade name was abandoned on the day on which the applicant’s application is advertised under subsection 37(1).

(4)[Repealed, 2014, c. 20, s. 330] (repealed)

(5)[Repealed, 2014, c. 20, s. 330] (repealed)

^note

Validity and Effect of Registration

17Effect of registration in relation to previous use, etc.#

(1)No application for registration of a trademark that has been advertised in accordance with section 37 shall be refused and no registration of a trademark shall be expunged or amended or held invalid on the ground of any previous use or making known of a confusing trademark or trade name by a person other than the applicant for that registration or his predecessor in title, except at the instance of that other person or his successor in title, and the burden lies on that other person or his successor to establish that he had not abandoned the confusing trademark or trade name at the date of advertisement of the applicant’s application.

(2)In proceedings commenced after the expiration of five years from the date of registration of a trademark or from July 1, 1954, whichever is the later, no registration shall be expunged or amended or held invalid on the ground of the previous use or making known referred to in subsection (1), unless it is established that the person who adopted the registered trademark in Canada did so with knowledge of that previous use or making known.

^note

18When registration invalid#

(1)The registration of a trademark is invalid if

(a)the trademark was not registrable at the date of registration;

(b)the trademark is not distinctive at the time proceedings bringing the validity of the registration into question are commenced;

(c)the trademark has been abandoned;

(d)subject to section 17, the applicant for registration was not the person entitled to secure the registration; or

(e)the application for registration was filed in bad faith.

(2)No registration of a trademark that had been so used in Canada by the registrant or his predecessor in title as to have become distinctive at the date of registration shall be held invalid merely on the ground that evidence of the distinctiveness was not submitted to the competent authority or tribunal before the grant of the registration.

^note

18.1Not to limit art or industry#

The registration of a trademark may be expunged by the Federal Court on the application of any person interested if the Court decides that the registration is likely to unreasonably limit the development of any art or industry.^note

19Rights conferred by registration#

Subject to sections 21, 32 and 67, the registration of a trademark in respect of any goods or services, unless shown to be invalid, gives to the owner of the trademark the exclusive right to the use throughout Canada of the trademark in respect of those goods or services.^note

20Infringement#

(1)The right of the owner of a registered trademark to its exclusive use is deemed to be infringed by any person who is not entitled to its use under this Act and who

(a)sells, distributes or advertises any goods or services in association with a confusing trademark or trade name;

(b)manufactures, causes to be manufactured, possesses, imports, exports or attempts to export any goods in association with a confusing trademark or trade name, for the purpose of their sale or distribution;

(c)sells, offers for sale or distributes any label or packaging, in any form, bearing a trademark or trade name, if

(i)the person knows or ought to know that the label or packaging is intended to be associated with goods or services that are not those of the owner of the registered trademark, and

(ii)the sale, distribution or advertisement of the goods or services in association with the label or packaging would be a sale, distribution or advertisement in association with a confusing trademark or trade name; or

(d)manufactures, causes to be manufactured, possesses, imports, exports or attempts to export any label or packaging, in any form, bearing a trademark or trade name, for the purpose of its sale or distribution or for the purpose of the sale, distribution or advertisement of goods or services in association with it, if

(i)the person knows or ought to know that the label or packaging is intended to be associated with goods or services that are not those of the owner of the registered trademark, and

(1.01)An infringement under paragraph (1)(b) is presumed, unless the contrary is proven, if a person who is not entitled to use a registered trademark imports goods on a commercial scale that bear a trademark that is identical to, or cannot be distinguished in its essential aspects from, the trademark registered for such goods.

(1.1)The registration of a trademark does not prevent a person from making, in a manner that is not likely to have the effect of depreciating the value of the goodwill attaching to the trademark,

(a)any bona fide use of his or her personal name as a trade name; or

(b)any bona fide use, other than as a trademark, of the geographical name of his or her place of business or of any accurate description of the character or quality of his or her goods or services.

(1.2)The registration of a trademark does not prevent a person from using any utilitarian feature embodied in the trademark.

(2)The registration of a trademark does not prevent a person from making any use of any of the indications mentioned in subsection 11.18(3) in association with a wine, any of the indications mentioned in subsection 11.18(4) in association with a spirit or any of the indications mentioned in subsection 11.18(4.1) in association with an agricultural product or food.

^note

21Concurrent use of confusing marks#

(1)If, in any proceedings respecting a registered trademark the registration of which is entitled to the protection of subsection 17(2), it is made to appear to the Federal Court that one of the parties to the proceedings, other than the registered owner of the trademark, had in good faith used a confusing trademark or trade name in Canada before the filing date of the application for that registration, and the Court considers that it is not contrary to the public interest that the continued use of the confusing trademark or trade name should be permitted in a defined territorial area concurrently with the use of the registered trademark, the Court may, subject to any terms that it considers just, order that the other party may continue to use the confusing trademark or trade name within that area with an adequate specified distinction from the registered trademark.

(2)The rights conferred by an order made under subsection (1) take effect only if, within three months from its date, the other party makes application to the Registrar to enter it on the register in connection with the registration of the registered trademark.

^note

22Depreciation of goodwill#

(1)No person shall use a trademark registered by another person in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto.

(2)In any action in respect of a use of a trademark contrary to subsection (1), the court may decline to order the recovery of damages or profits and may permit the defendant to continue to sell goods bearing the trademark that were in the defendant’s possession or under their control at the time notice was given to them that the owner of the registered trademark complained of the use of the trademark.

^note

Certification Marks

23Registration of certification marks#

(1)A certification mark may be adopted and registered only by a person who is not engaged in the manufacture, sale, leasing or hiring of goods or the performance of services such as those in association with which the certification mark is used or proposed to be used.

(2)The owner of a certification mark may license others to use it in association with goods or services that meet the defined standard, and the use of the certification mark accordingly is deemed to be use by the owner.

(3)The owner of a registered certification mark may prevent its use by unlicensed persons or in association with any goods or services in respect of which it is registered but to which the licence does not extend.

(4)If the owner of a registered certification mark is an unincorporated body, any action or proceeding to prevent unauthorized use of the certification mark may be brought by any member of that body on behalf of themselves and all other members.

^note

24Registration of trademark confusing with certification mark#

With the consent of the owner of a certification mark, a trademark confusing with the certification mark may, if it exhibits an appropriate difference, be registered by some other person to indicate that the goods or services in association with which it is used have been manufactured, sold, leased, hired or performed by him as one of the persons entitled to use the certification mark, but the registration thereof shall be expunged by the Registrar on the withdrawal at any time of the consent of the owner of the certification mark or on the cancellation of the registration of the certification mark.^note

25Descriptive certification mark#

A certification mark that is descriptive of the place of origin of goods or services, and not confusing with any registered trademark, is registrable if the applicant is the administrative authority of a country, state, province or municipality that includes or forms part of the area indicated by the certification mark, or is a commercial association that has an office or representative in that area, but the owner of any certification mark registered under this section shall permit its use in association with any goods or services produced or performed in the area of which it is descriptive.^note

Register of Trademarks

26Register#

(1)There shall be kept under the supervision of the Registrar a register of trademarks and of transfers, disclaimers, amendments, judgments and orders relating to each registered trademark.

(2)The register shall show, with reference to each registered trademark, the following:

(a)the date of registration;

(b)a summary of the application for registration;

(c)a summary of all documents deposited with the application or subsequently thereto and affecting the rights to the trademark;

(d)particulars of each renewal;

(e)particulars of each change of name and address;

(e.1)the names of the goods or services in respect of which the trademark is registered, grouped according to the classes of the Nice Classification, each group being preceded by the number of the class of the Nice Classification to which that group of goods or services belongs and presented in the order of the classes of the Nice Classification; and

(f)such other particulars as this Act or the regulations require to be entered thereon.

^note

27Register under Unfair Competition Act#

(1)The register kept under the Unfair Competition Act, chapter 274 of the Revised Statutes of Canada, 1952, forms part of the register kept under this Act and, subject to subsection 44(2), no entry made therein, if properly made according to the law in force at the time it was made, is subject to be expunged or amended only because it might not properly have been made pursuant to this Act.

(2)Trademarks on the register on September 1, 1932 shall be treated as design marks or word marks as defined in the Unfair Competition Act, chapter 274 of the Revised Statutes of Canada, 1952, according to the following rules:

(a)any trademark consisting only of words or numerals or both without any indication of a special form or appearance shall be deemed to be a word mark;

(b)any other trademark consisting only of words or numerals or both shall be deemed to be a word mark if at the date of its registration the words or numerals or both would have been registrable independently of any defined special form or appearance and shall also be deemed to be a design mark for reading matter presenting the special form or appearance defined;

(c)any trademark including words or numerals or both in combination with other features shall be deemed

(i)to be a design mark having the features described in the application therefor but without any meaning being attributed to the words or numerals, and

(ii)to be a word mark if and so far as it would at the date of registration have been registrable independently of any defined form or appearance and without being combined with any other feature; and

(d)any other trademark shall be deemed to be a design mark having the features described in the application therefor.

(3)Trademarks registered under the Unfair Competition Act, chapter 274 of the Revised Statutes of Canada, 1952, shall, in accordance with their registration, continue to be treated as design marks or word marks as defined in that Act.

^note

28 #

[Repealed, 2018, c. 27, s. 255] (repealed)

29Available to public#

(1)The following shall be made available to the public at the times and in the manner established by the Registrar:

(a)the register;

(b)all applications for the registration of a trademark, including those abandoned;

(c)[Repealed, 2018, c. 27, s. 256] (repealed)

(d)the list of geographical indications kept under subsection 11.12(1);

(e)all requests made under paragraph 9(1)(n); and

(f)all documents filed with the Registrar relating to a registered trademark, an application for the registration of a trademark, a request under paragraph 9(1)(n) and objection proceedings under section 11.13.

(2)The Registrar shall, on request and on payment of the prescribed fee, furnish a copy certified by the Registrar of any entry in the register or list, or of any of those applications, requests or documents.

^note

29.1Destruction of records#

Despite subsection 29(1), the Registrar may destroy

(a)an application for the registration of a trademark that is refused and any document relating to the application, at any time after six years after the day on which the application is refused or, if an appeal is taken, on which final judgment in the appeal upholding the refusal is given;

(b)an application for the registration of a trademark that is abandoned and any document relating to the application, at any time after six years after the day on which the application is abandoned;

(c)a document relating to an expunged registration of a trademark, at any time after six years after the day on which the registration is expunged;

(d)a request under paragraph 9(1)(n) and any document relating to it, at any time after six years after

(i)the day on which the request is abandoned,

(ii)the day on which the request is refused or, if an appeal is taken, on which final judgment in the appeal upholding the refusal is given, or

(iii)the day on which a court declares that the badge, crest, emblem or mark in question is invalid or, if an appeal is taken, on which final judgment in the appeal upholding the declaration is given;

(e)a document relating to objection proceedings under section 11.13 with respect to a geographical indication that is removed from the list of geographical indications under subsection 11.12(4), at any time after six years after the day on which it is removed; and

(f)a document relating to objection proceedings under section 11.13 with respect to which a decision is made that the indication is not a geographical indication, at any time after six years after the day on which the decision is made or, if an appeal is taken, on which final judgment in the appeal upholding the decision is given.

^note

Applications for Registration of Trademarks

30Requirements for application#

(1)A person may file with the Registrar an application for the registration of a trademark in respect of goods or services if they are using or propose to use, and are entitled to use, the trademark in Canada in association with those goods or services.

(2)The application shall contain

(a)a statement in ordinary commercial terms of the goods or services in association with which the trademark is used or proposed to be used;

(b)in the case of a certification mark, particulars of the defined standard that the use of the certification mark is intended to indicate and a statement that the applicant is not engaged in the manufacture, sale, leasing or hiring of goods or the performance of services such as those in association with which the certification mark is used or proposed to be used;

(c)a representation or description, or both, that permits the trademark to be clearly defined and that complies with any prescribed requirements; and

(d)any prescribed information or statement.

(3)The goods or services referred to in paragraph (2)(a) are to be grouped according to the classes of the Nice Classification, each group being preceded by the number of the class of the Nice Classification to which that group of goods or services belongs and presented in the order of the classes of the Nice Classification.

(4)Any question arising as to the class within which any goods or services are to be grouped shall be determined by the Registrar, whose determination is not subject to appeal.

^note

31Standard characters#

An applicant who seeks to register a trademark that consists only of letters, numerals, punctuation marks, diacritics or typographical symbols, or of any combination of them, without limiting the trademark to any particular font, size or colour shall

(a)file a representation under paragraph 30(2)(c) that consists only of characters for which the Registrar has adopted standard characters;

(b)include in their application a statement to the effect that they wish the trademark to be registered in standard characters; and

(c)comply with any prescribed requirements.

^note

32Further evidence in certain cases#

(1)An applicant shall furnish the Registrar with any evidence that the Registrar may require establishing that the trademark is distinctive at the filing date of the application for its registration, determined without taking into account subsection 34(1), if any of the following apply:

(a)the applicant claims that their trademark is registrable under subsection 12(3);

(b)the Registrar’s preliminary view is that the trademark is not inherently distinctive;

(c)the trademark consists exclusively of a single colour or of a combination of colours without delineated contours;

(d)the trademark consists exclusively or primarily of one or more of the following signs:

(i)the three-dimensional shape of any of the goods specified in the application, or of an integral part or the packaging of any of those goods,

(ii)a mode of packaging goods,

(iii)a sound,

(iv)a scent,

(v)a taste,

(vi)a texture,

(vii)any other prescribed sign.

(2)The Registrar shall, having regard to the evidence adduced, restrict the registration to the goods or services in association with which, and to the defined territorial area in Canada in which, the trademark is shown to be distinctive.

^note

33Filing date#

(1)The filing date of an application for the registration of a trademark in Canada is the day on which the Registrar has received all of the following:

(a)an explicit or implicit indication that the registration of the trademark is sought;

(b)information allowing the identity of the applicant to be established;

(c)information allowing the Registrar to contact the applicant;

(d)a representation or description of the trademark;

(e)a list of the goods or services for which registration of the trademark is sought;

(f)any prescribed fees.

(2)The Registrar shall notify the applicant whose application does not contain all the items set out in subsection (1) of the items that are outstanding and require that the applicant submit them within two months of the date of the notice. Despite section 47, that period cannot be extended.

(3)If the Registrar does not receive the outstanding items within those two months, the application is deemed never to have been filed. However, any fees paid in respect of the application shall not be refunded to the applicant.

^note

34Date of application abroad deemed date of application in Canada#

(1)Despite subsection 33(1), when an applicant files an application for the registration of a trademark in Canada after the applicant or the applicant’s predecessor in title has applied, in or for any country of the Union other than Canada, for the registration of the same or substantially the same trademark in association with the same kind of goods or services, the filing date of the application in or for the other country is deemed to be the filing date of the application in Canada and the applicant is entitled to priority in Canada accordingly despite any intervening use in Canada or making known in Canada or any intervening application or registration, if

(a)the filing date of the application in Canada is within a period of six months after the date on which the earliest application was filed in or for any country of the Union for the registration of the same or substantially the same trademark in association with the same kind of goods or services;

(b)the applicant files a request for priority in the prescribed time and manner and informs the Registrar of the filing date and country or office of filing of the application on which the request is based;

(c)the applicant, at the filing date of the application in Canada, is a citizen or national of or domiciled in a country of the Union or has a real and effective industrial or commercial establishment in a country of the Union; and

(d)the applicant furnishes, in accordance with any request under subsections (2) and (3), evidence necessary to fully establish the applicant’s right to priority.

(2)The Registrar may request the evidence before the day on which the trademark is registered under section 40.

(3)The Registrar may specify in the request the manner in which the evidence must be furnished and the period within which it must be furnished.

(4)An applicant may, in the prescribed time and manner, withdraw a request for priority.

(5)An applicant is not permitted to apply under section 47 for an extension of the six-month period referred to in paragraph (1)(a) until that period has ended, and the Registrar is not permitted to extend the period by more than seven days.

^note

35Disclaimer#

The Registrar may require an applicant for registration of a trademark to disclaim the right to the exclusive use apart from the trademark of such portion of the trademark as is not independently registrable, but the disclaimer does not prejudice or affect the applicant’s rights then existing or thereafter arising in the disclaimed matter, nor does the disclaimer prejudice or affect the applicant’s right to registration on a subsequent application if the disclaimed matter has then become distinctive of the applicant’s goods or services.^note

36Abandonment#

If, in the opinion of the Registrar, an applicant is in default in the prosecution of an application filed under this Act, the Registrar may, after giving notice to the applicant of the default, treat the application as abandoned unless the default is remedied within the prescribed time.^note

36.1Withdrawal of opposition#

If, in the opinion of the Registrar, an opponent is in default in the continuation of an opposition referred to in section 38, the Registrar may, after giving notice to the opponent of the default, treat the opposition as withdrawn unless the default is remedied within the time specified in the notice.^note

37When applications to be refused#

(1)The Registrar shall refuse an application for the registration of a trademark if he is satisfied that

(a)the application does not conform to the requirements of subsection 30(2);

(b)the trademark is not registrable,

(c)the applicant is not the person entitled to registration of the trademark because it is confusing with another trademark for the registration of which an application is pending, or

(d)the trademark is not distinctive.

If the Registrar is not so satisfied, the Registrar shall cause the application to be advertised in the prescribed manner.

(2)The Registrar shall not refuse any application without first notifying the applicant of his objections thereto and his reasons for those objections, and giving the applicant adequate opportunity to answer those objections.

(3)Where the Registrar, by reason of a registered trademark, is in doubt whether the trademark claimed in the application is registrable, he shall, by registered letter, notify the owner of the registered trademark of the advertisement of the application.

(4)If, after the application has been advertised but before the trademark is registered, the Registrar is satisfied that the application should not have been advertised or was incorrectly advertised and the Registrar considers it reasonable to do so, the Registrar may withdraw the advertisement. If the Registrar withdraws the advertisement, the application is deemed never to have been advertised.

^note

38Statement of opposition#

(1)Within two months after the advertisement of an application for the registration of a trademark, any person may, on payment of the prescribed fee, file a statement of opposition with the Registrar.

(2)A statement of opposition may be based on any of the following grounds:

(a)that the application does not conform to the requirements of subsection 30(2), without taking into account if it meets the requirement in subsection 30(3);

(a.1)that the application was filed in bad faith;

(b)that the trademark is not registrable;

(c)that the applicant is not the person entitled to registration of the trademark;

(d)that the trademark is not distinctive;

(e)that, at the filing date of the application in Canada, determined without taking into account subsection 34(1), the applicant was not using and did not propose to use the trademark in Canada in association with the goods or services specified in the application; or

(f)that, at the filing date of the application in Canada, determined without taking into account subsection 34(1), the applicant was not entitled to use the trademark in Canada in association with those goods or services.

(3)A statement of opposition shall set out

(a)the grounds of opposition in sufficient detail to enable the applicant to reply thereto; and

(b)the address of the opponent’s principal office or place of business in Canada, if any, and if the opponent has no office or place of business in Canada, the address of his principal office or place of business abroad and the name and address in Canada of a person or firm on whom service of any document in respect of the opposition may be made with the same effect as if it had been served on the opponent himself.

(4)If the Registrar considers that the opposition does not raise a substantial issue for decision, he shall reject it and shall give notice of his decision to the opponent.

(5)If the Registrar considers that the opposition raises a substantial issue for decision, he shall forward a copy of the statement of opposition to the applicant.

(6)At the applicant’s request, the Registrar may — at any time before the day on which the applicant files a counter statement — strike all or part of the statement of opposition if the statement or part of it

(a)is not based on any of the grounds set out in subsection (2); or

(b)does not set out a ground of opposition in sufficient detail to enable the applicant to reply to it.

(7)The applicant shall file a counter statement with the Registrar and serve a copy on the opponent in the prescribed manner and within the prescribed time after a copy of the statement of opposition has been forwarded to the applicant. The counter statement need only state that the applicant intends to respond to the opposition.

(7.1)[Repealed, 2014, c. 20, s. 343] (repealed)

(7.2)[Repealed, 2014, c. 20, s. 343] (repealed)

(8)Both the opponent and the applicant shall be given an opportunity, in the prescribed manner and within the prescribed time, to submit evidence and to make representations to the Registrar unless

(a)the opposition is withdrawn or deemed under subsection (10) to have been withdrawn; or

(b)the application is abandoned or deemed under subsection (11) to have been abandoned.

(9)The opponent and the applicant shall, in the prescribed manner and within the prescribed time, serve on each other any evidence and written representations that they submit to the Registrar.

(10)The opposition is deemed to have been withdrawn if, in the prescribed circumstances, the opponent does not submit and serve either evidence under subsection (8) or a statement that the opponent does not wish to submit evidence.

(11)The application is deemed to have been abandoned if the applicant does not file and serve a counter statement within the time referred to in subsection (7) or if, in the prescribed circumstances, the applicant does not submit and serve either evidence under subsection (8) or a statement that the applicant does not wish to submit evidence.

(12)After considering the evidence and representations of the opponent and the applicant, the Registrar shall refuse the application, reject the opposition, or refuse the application with respect to one or more of the goods or services specified in it and reject the opposition with respect to the others. He or she shall notify the parties of the decision and the reasons for it.

^note

38.1Costs#

(1)Subject to the regulations, the Registrar may, by order, award costs in a proceeding under section 38.

(2)A certified copy of an order made under subsection (1) may be filed in the Federal Court and, on being filed, the order becomes and may be enforced as an order of that Court.

^note

39Divisional application#

(1)After having filed an application for the registration of a trademark, an applicant may limit the original application to one or more of the goods or services that were within its scope and file a divisional application for the registration of the same trademark in association with any other goods or services that were

(a)within the scope of the original application on its filing date, determined without taking into account subsection 34(1); and

(b)within the scope of the original application on the day on which the divisional application is filed, if the divisional application is filed on or after the day on which the original application is advertised under subsection 37(1).

(2)A divisional application shall indicate that it is a divisional application and shall, in the prescribed manner, identify the corresponding original application.

(3)A divisional application is a separate application, including with respect to the payment of any fees.

(4)A divisional application’s filing date is deemed to be the original application’s filing date.

(5)A divisional application may itself be divided under subsection (1), in which case this section applies as if that divisional application were an original application.

^note

Registration of Trademarks

40Registration of trademarks#

When an application for the registration of a trademark either has not been opposed and the time for the filing of a statement of opposition has expired, or has been opposed and the opposition has been decided in favour of the applicant, the Registrar shall register the trademark in the name of the applicant and issue a certificate of its registration or, if an appeal is taken, shall act in accordance with the final judgment given in the appeal.^note

Amendment of the Register

41Amendments to register#

(1)The Registrar may, on application by the registered owner of a trademark made in the prescribed manner and on payment of the prescribed fee, make any of the following amendments to the register:

(a)correct any error or enter any change in the name, address or description of the registered owner;

(b)cancel the registration of the trademark;

(c)amend the statement of the goods or services in respect of which the trademark is registered;

(d)amend the particulars of the defined standard that the use of a certification mark is intended to indicate;

(e)enter a disclaimer that does not in any way extend the rights given by the existing registration of the trademark; or

(f)subject to the regulations, merge registrations of the trademark that stem, under section 39, from the same original application.

(2)An application to extend the statement of goods or services in respect of which a trademark is registered has the effect of an application for registration of the trademark in respect of the goods or services specified in the application for amendment.

(3)The Registrar may, within six months after an entry in the register is made, correct any error in the entry that is obvious from the documents relating to the registered trademark in question that are, at the time that the entry is made, on file in the Registrar’s office.

(4)The Registrar may, within three months after the registration of a trademark, remove the registration from the register if the Registrar registered the trademark without considering a previously filed request for an extension of time to file a statement of opposition.

^note

42 #

[Repealed, 2014, c. 20, s. 347] (repealed)

43Additional representations#

The registered owner of any trademark shall furnish such additional representations thereof as the Registrar may by notice demand and, if he fails to comply with that notice, the Registrar may by a further notice, fix a reasonable time after which, if the representations are not furnished, he may expunge the registration of the trademark.^note

44Notice for information#

(1)The Registrar may at any time, and shall at the request of any person who pays the prescribed fee, by notice in writing require the registered owner of any trademark that was on the register on July 1, 1954 to furnish him within three months from the date of the notice with the information that would be required on an application for the registration of the trademark made at the date of the notice.

(2)The Registrar may amend the registration of the trademark in accordance with the information furnished to him under subsection (1).

(3)Where the information required by subsection (1) is not furnished, the Registrar shall by a further notice fix a reasonable time after which, if the information is not furnished, he may expunge the registration of the trademark.

^note

44.1Registrar may require amendment#

(1)The Registrar may give notice to the registered owner of a trademark requiring the owner to furnish the Registrar, in the prescribed time and manner, with a statement of the goods or services in respect of which the trademark is registered, in which those goods or services are grouped in the manner described in subsection 30(3).

(2)The Registrar may amend the register in accordance with the statement furnished under subsection (1).

(3)If the statement required by subsection (1) is not furnished, the Registrar shall by a further notice fix a reasonable time after which, if the statement is not furnished, the Registrar may expunge the registration of the trademark or refuse to renew it.

(4)Any question arising as to the class within which any goods or services are to be grouped shall be determined by the Registrar, whose determination is not subject to appeal.

^note

45Registrar may request evidence of use#

(1)After three years beginning on the day on which a trademark is registered, unless the Registrar sees good reason to the contrary, the Registrar shall, at the written request of any person who pays the prescribed fee — or may, on his or her own initiative — give notice to the registered owner of the trademark requiring the registered owner to furnish within three months an affidavit or a statutory declaration showing, with respect to all the goods or services specified in the registration or to those that may be specified in the notice, whether the trademark was in use in Canada at any time during the three-year period immediately preceding the date of the notice and, if not, the date when it was last so in use and the reason for the absence of such use since that date.

(2)The Registrar shall not receive any evidence other than the affidavit or statutory declaration, but may receive representations made in the prescribed manner and within the prescribed time by the registered owner of the trademark or by the person at whose request the notice was given.

(2.1)The registered owner of the trademark shall, in the prescribed manner and within the prescribed time, serve on the person at whose request the notice was given any evidence that the registered owner submits to the Registrar. Those parties shall, in the prescribed manner and within the prescribed time, serve on each other any written representations that they submit to the Registrar.

(2.2)The Registrar is not required to consider any evidence or written representations that was not served in accordance with subsection (2.1).

(3)Where, by reason of the evidence furnished to the Registrar or the failure to furnish any evidence, it appears to the Registrar that a trademark, either with respect to all of the goods or services specified in the registration or with respect to any of those goods or services, was not used in Canada at any time during the three year period immediately preceding the date of the notice and that the absence of use has not been due to special circumstances that excuse the absence of use, the registration of the trademark is liable to be expunged or amended accordingly.

(4)When the Registrar reaches a decision whether or not the registration of a trademark ought to be expunged or amended, he shall give notice of his decision with the reasons therefor to the registered owner of the trademark and to the person at whose request the notice referred to in subsection (1) was given.

(4.1)Subject to the regulations, the Registrar may, by order, award costs in a proceeding under this section.

(4.2)A certified copy of an order made under subsection (4.1) may be filed in the Federal Court and, on being filed, the order becomes and may be enforced as an order of that Court.

(5)The Registrar shall act in accordance with his decision if no appeal therefrom is taken within the time limited by this Act or, if an appeal is taken, shall act in accordance with the final judgment given in the appeal.

^note

Confidentiality Orders

45.1Request to keep evidence confidential#

(1)A party to a proceeding under section 11.13, 38 or 45 may make a request to the Registrar, in accordance with the regulations, that some or all of the evidence that they intend to submit to the Registrar be kept confidential.

(2)The Registrar shall not consider a request if the party who makes it submits the evidence to the Registrar before the Registrar either gives notice under subsection (3) or makes an order under subsection (4).

(3)If the Registrar is not satisfied that the evidence should be kept confidential, the Registrar shall notify the party who made the request accordingly.

(4)If the Registrar is satisfied that the evidence should be kept confidential, he or she may, on any terms that he or she considers appropriate, order that the evidence be kept confidential.

(5)If the Registrar makes an order under subsection (4),

(a)the party who made the request may submit the evidence to the Registrar and, if it is submitted, shall serve it on the other party in accordance with the order;

(b)subsections 11.13(5.1), 38(9) and 45(2.1) do not apply with respect to the evidence;

(c)section 29 does not apply to the evidence; and

(d)the Registrar shall take measures to ensure that the evidence is kept confidential when the evidence or a copy of the evidence is transmitted to the Federal Court under section 60.

(6)A certified copy of an order made under subsection (4) may be filed in the Federal Court and, on being filed, the order becomes and may be enforced as an order of that Court.

^note

Renewal of Registrations

46Term#

(1)Subject to any other provision of this Act, the registration of a trademark is on the register for an initial period of 10 years beginning on the day of the registration and for subsequent renewal periods of 10 years if, for each renewal, the prescribed renewal fee is paid within the prescribed period.

(2)If the initial period or a renewal period expires and the prescribed renewal fee has not been paid, the Registrar shall send a notice to the registered owner stating that if the fee is not paid within the prescribed period, the registration will be expunged.

(3)If the prescribed renewal fee is not paid within the prescribed period, the Registrar shall expunge the registration. The registration is deemed to have been expunged at the expiry of the initial period or the last renewal period.

(4)If the prescribed renewal fee is paid within the prescribed period, the renewal period begins at the expiry of the initial period or the last renewal period.

(5)A registered owner is not permitted to apply under section 47 for an extension of the prescribed period until that period has expired, and the Registrar is not permitted to extend the period by more than seven days.

(6)For the purposes of this section, the prescribed period begins at least six months before the expiry of the initial period or the renewal period and ends no earlier than six months after the expiry of that period.

^note

46.1Renewal for goods or services#

The registration of a trademark may be renewed for any of the goods or services in respect of which the trademark is registered.^note

Extensions of Time

47Extensions of time#

(1)If, in any case, the Registrar is satisfied that the circumstances justify an extension of the time fixed by this Act or prescribed by the regulations for the doing of any act, he may, except as in this Act otherwise provided, extend the time after such notice to other persons and on such terms as he may direct.

(2)An extension applied for after the expiration of the time fixed for the doing of an act or the time extended by the Registrar under subsection (1) shall not be granted unless the prescribed fee is paid and the Registrar is satisfied that the failure to do the act or apply for the extension within that time or the extended time was not reasonably avoidable.

^note

47.1Proceeding under section 45#

(1)The Registrar shall grant an extension of any time limit fixed under this Act in the context of a proceeding commenced by the Registrar, on his or her own initiative, under section 45, if the extension is requested after the expiry of the time limit and within two months after its expiry.

(2)No extension under subsection (1) shall be granted more than once.

^note

Transfer

48Trademark transferable#

(1)A trademark, whether registered or unregistered, is transferable, and deemed always to have been transferable, either in connection with or separately from the goodwill of the business and in respect of either all or some of the goods or services in association with which it has been used.

(2)Nothing in subsection (1) prevents a trademark from being held not to be distinctive if as a result of a transfer thereof there subsisted rights in two or more persons to the use of confusing trademarks and the rights were exercised by those persons.

(3)The Registrar shall, subject to the regulations, record the transfer of an application for the registration of a trademark on the request of the applicant or, on receipt of evidence satisfactory to the Registrar of the transfer, on the request of a transferee of the application.

(4)The Registrar shall, subject to the regulations, register the transfer of any registered trademark on the request of the registered owner or, on receipt of evidence satisfactory to the Registrar of the transfer, on the request of a transferee of the trademark.

(5)The Registrar shall remove the recording or the registration of the transfer referred to in subsection (3) or (4) on receipt of evidence satisfactory to the Registrar that the transfer should not have been recorded or registered.

^note

Change of Purpose in Use of Trademark

49Change of purpose#

If a sign or combination of signs is used by a person as a trademark for any of the purposes or in any of the manners mentioned in the definition certification mark or trademark in section 2, no application for the registration of the trademark shall be refused and no registration of the trademark shall be expunged, amended or held invalid merely on the ground that the person or a predecessor in title uses the trademark or has used it for any other of those purposes or in any other of those manners.^note

Licences

50Licence to use trademark#

(1)For the purposes of this Act, if an entity is licensed by or with the authority of the owner of a trademark to use the trademark in a country and the owner has, under the licence, direct or indirect control of the character or quality of the goods or services, then the use, advertisement or display of the trademark in that country as or in a trademark, trade name or otherwise by that entity has, and is deemed always to have had, the same effect as such a use, advertisement or display of the trademark in that country by the owner.

(2)For the purposes of this Act, to the extent that public notice is given of the fact that the use of a trademark is a licensed use and of the identity of the owner, it shall be presumed, unless the contrary is proven, that the use is licensed by the owner of the trademark and the character or quality of the goods or services is under the control of the owner.

(3)Subject to any agreement subsisting between an owner of a trademark and a licensee of the trademark, the licensee may call on the owner to take proceedings for infringement thereof, and, if the owner refuses or neglects to do so within two months after being so called on, the licensee may institute proceedings for infringement in the licensee’s own name as if the licensee were the owner, making the owner a defendant.

^note

51Use of trademark by related companies#

(1)Where a company and the owner of a trademark that is used in Canada by that owner in association with a pharmaceutical preparation are related companies, the use by the company of the trademark, or a trademark confusing therewith, in association with a pharmaceutical preparation that at the time of that use or at any time thereafter,

(a)is acquired by a person directly or indirectly from the company, and

(b)is sold, distributed or advertised for sale in Canada in a package bearing the name of the company and the name of that person as the distributor thereof,

has the same effect, for all purposes of this Act, as a use of the trademark or the confusing trademark, as the case may be, by that owner.

(2)Subsection (1) does not apply to any use of a trademark or a confusing trademark by a company referred to in that subsection in association with a pharmaceutical preparation after such time, if any, as that pharmaceutical preparation is declared by the Minister of Health, by notice published in the Canada Gazette, to be sufficiently different in its composition from the pharmaceutical preparation in association with which the trademark is used in Canada by the owner referred to in subsection (1) as to be likely to result in a hazard to health.

(3)In this section, pharmaceutical preparation includes

(a)any substance or mixture of substances manufactured, sold or represented for use in

(i)the diagnosis, treatment, mitigation or prevention of a disease, disorder or abnormal physical state, or the symptoms thereof, in humans or animals, or

(ii)restoring, correcting or modifying organic functions in humans or animals, and

(b)any substance to be used in the preparation or production of any substance or mixture of substances described in paragraph (a),

but does not include any such substance or mixture of substances that is the same or substantially the same as a substance or mixture of substances that is a proprietary medicine within the meaning from time to time assigned to that expression by regulations made pursuant to the Food and Drugs Act.

^note

Offences and Punishment

51.01Sale, etc., of goods#

(1)Every person commits an offence who sells or offers for sale, or distributes on a commercial scale, any goods in association with a trademark, if that sale or distribution is or would be contrary to section 19 or 20 and the person knows that

(a)the trademark is identical to, or cannot be distinguished in its essential aspects from, a trademark registered for such goods; and

(b)the owner of that registered trademark has not consented to the sale, offering for sale, or distribution of the goods in association with the trademark.

(c)[Deleted]

(2)Every person commits an offence who manufactures, causes to be manufactured, possesses, imports, exports or attempts to export any goods, for the purpose of their sale or of their distribution on a commercial scale, if that sale or distribution would be contrary to section 19 or 20 and the person knows that

(a)the goods bear a trademark that is identical to, or that cannot be distinguished in its essential aspects from, a trademark registered for such goods; and

(b)the owner of that registered trademark has not consented to having the goods bear the trademark.

(c)[Deleted]

(3)Every person commits an offence who sells or advertises services in association with a trademark, if that sale or advertisement is contrary to section 19 or 20 and the person knows that

(a)the trademark is identical to, or cannot be distinguished in its essential aspects from, a registered trademark registered for such services; and

(b)the owner of the registered trademark has not consented to the sale or advertisement in association with the trademark.

(c)[Deleted]

(4)Every person commits an offence who manufactures, causes to be manufactured, possesses, imports, exports or attempts to export any label or packaging, in any form, for the purpose of its sale or of its distribution on a commercial scale or for the purpose of the sale, distribution on a commercial scale or advertisement of goods or services in association with it, if that sale, distribution or advertisement would be contrary to section 19 or 20 and the person knows that

(a)the label or packaging bears a trademark that is identical to, or that cannot be distinguished in its essential aspects from, a registered trademark;

(b)the label or packaging is intended to be associated with goods or services for which that registered trademark is registered; and

(c)the owner of that registered trademark has not consented to having the label or packaging bear the trademark.

(d)[Deleted]

(5)Every person commits an offence who sells or offers for sale, or distributes on a commercial scale, any label or packaging, in any form, if the sale, distribution or advertisement of goods or services in association with the label or packaging would be contrary to section 19 or 20 and the person knows that

(a)the label or packaging bears a trademark that is identical to, or that cannot be distinguished in its essential aspects from, a registered trademark;

(b)the label or packaging is intended to be associated with goods or services for which that registered trademark is registered;

(c)the owner of that registered trademark has not consented to having the label or packaging bear the trademark.

(5.1)In a prosecution for an offence under any of subsections (1) to (5), it is not necessary for the prosecutor to prove that the accused knew that the trademark was registered.

(6)Every person who commits an offence under any of subsections (1) to (5) is liable

(a)on conviction on indictment, to a fine of not more than $1,000,000 or to imprisonment for a term of not more than five years or to both; or

(b)on summary conviction, to a fine of not more than $25,000 or to imprisonment for a term of not more than six months or to both.

(7)Proceedings by way of summary conviction for an offence under this section may be instituted no later than two years after the day on which the subject-matter of the proceedings arose.

(8)The court before which any proceedings for an offence under this section are taken may, on a finding of guilt, order that any goods, labels, or packaging in respect of which the offence was committed, any advertising materials relating to those goods and any equipment used to manufacture those goods, labels or packaging be destroyed or otherwise disposed of.

(9)Before making an order for the destruction or other disposition of equipment under subsection (8), the court shall require that notice be given to the owner of the equipment and to any other person who, in the opinion of the court, appears to have a right or interest in the equipment, unless the court is of the opinion that the interests of justice do not require that the notice be given.

^note

Importation and Exportation

Interpretation

51.02Definitions#

The following definitions apply in sections 51.03 to 51.12.

customs officer has the meaning assigned by the definition officer in subsection 2(1) of the Customs Act. (agent des douanes)

Minister means the Minister of Public Safety and Emergency Preparedness. (ministre)

owner, with respect to a protected geographical indication identifying a wine or spirit or agricultural product or food, means the responsible authority, as defined in section 11.11, for the wine or spirit or agricultural product or food identified by the indication. (propriétaire)

protected mark means a registered trademark or a protected geographical indication. (marque protégée)

relevant protected mark means

(a)a trademark registered for goods that is identical to, or cannot be distinguished in its essential aspects from, a trademark on such goods, including their labels or packaging, that are detained by a customs officer; or

(b)a protected geographical indication identifying, as the case may be, a wine or spirit, or an agricultural product or food of a category set out in the schedule, that is identical to, or cannot be distinguished in its essential aspects from, an indication on such a wine or spirit or such an agricultural product or food, or on their labels or packaging, that is detained by a customs officer. (marque protégée en cause)

working day means a day other than a Saturday or a holiday. (jour ouvrable)

^note

Prohibition

51.03No importation or exportation#

(1)Goods shall not be imported or exported if the goods or their labels or packaging bear — without the consent of the owner of a registered trademark for such goods — a trademark that is identical to, or that cannot be distinguished in its essential aspects from, that registered trademark.

(2)Subsection (1) does not apply if

(a)the trademark was applied with the consent of the owner of the trademark in the country where it was applied;

(b)the sale or distribution of the goods or, in the case where the trademark is on the goods’ labels or packaging, of the goods in association with the labels or packaging would not be contrary to this Act;

(c)the goods are imported or exported by an individual in their possession or baggage and the circumstances, including the number of goods, indicate that the goods are intended only for their personal use.

(d)[Repealed, 2020, c. 1, s. 109] (repealed)

(2.1)Wine or spirits shall not be imported or exported if they, or their labels or packaging, bear a protected geographical indication and the wine or spirits

(a)do not originate in the territory indicated by the indication; or

(b)do originate in the territory indicated by the indication but were not produced or manufactured in accordance with the law applicable to that territory.

(2.2)An agricultural product or food of a category set out in the schedule shall not be imported or exported if it, or its label or packaging, bears a protected geographical indication and the agricultural product or food

(a)does not originate in the territory indicated by the indication; or

(b)does originate in the territory indicated by the indication, but was not produced or manufactured in accordance with the law applicable to that territory.

(2.3)Subsections (2.1) and (2.2) do not apply if

(a)the sale or distribution of the wine or spirit or the agricultural product or food — or, if the label or packaging of that wine, spirit or agricultural product or food bears a protected geographical indication and the sale or distribution of that wine, spirit or agricultural product or food in association with that label or packaging — would not be contrary to this Act;

(b)the wine or spirit or the agricultural product or food is imported or exported by an individual in their possession or baggage and the circumstances, including the number of such goods, indicate that they are intended only for the individual’s personal use.

(c)[Repealed, 2020, c. 1, s. 109] (repealed)

(2.4)For the purposes of subsections (1), (2.1) and (2.2), goods — including wine, spirits, agricultural products or food — that, while being shipped from one place outside Canada to another, are in customs transit control or customs transhipment control in Canada are considered to have been imported for the purpose of release.

(3)The contravention of subsection (1), (2.1) or (2.2) does not give rise to a remedy under section 53.2.

^note

Request for Assistance

51.04Request for assistance#

(1)The owner of a protected mark may file with the Minister, in the form and manner specified by the Minister, a request for assistance in pursuing remedies under this Act with respect to goods imported or exported in contravention of section 51.03.

(2)The request for assistance shall include the name and address in Canada of the owner of the protected mark and any other information that is required by the Minister, including information about the trademark and the goods for which it is registered or, in the case of a geographical indication, the goods identified by the indication.

(3)A request for assistance is valid for a period of two years beginning on the day on which it is accepted by the Minister. The Minister may, at the request of the owner of the protected mark, extend the period for two years, and may do so more than once.

(4)The Minister may, as a condition of accepting a request for assistance or of extending a request’s period of validity, require that the owner of the protected mark furnish security, in an amount and form fixed by the Minister, for the payment of an amount for which the owner of the protected mark becomes liable under section 51.09.

(5)The owner of the protected mark shall inform the Minister in writing, as soon as feasible, of any changes to

(a)the validity of the protected mark that is the subject of the request for assistance;

(b)the ownership of the protected mark; or

(c)the goods for which the trademark is registered or, in the case of a geographical indication, the goods identified by the indication.

^note

Measures Relating to Detained Goods

51.05Provision of information by customs officer#

A customs officer who is detaining goods under section 101 of the Customs Act may, in the officer’s discretion, to obtain information about whether the importation or exportation of the goods is prohibited under section 51.03, provide the owner of a relevant protected mark with a sample of the goods and with any information about the goods that the customs officer reasonably believes does not directly or indirectly identify any person.^note

51.06Provision of information to pursue remedy#

(1)A customs officer who is detaining goods under section 101 of the Customs Act and who has reasonable grounds to suspect that the importation or exportation of the goods is prohibited under section 51.03 may, in the officer’s discretion, if the Minister has accepted a request for assistance with respect to a relevant protected mark filed by its owner, provide that owner with a sample of the goods and with information about the goods that could assist them in pursuing a remedy under this Act, such as

(a)a description of the goods and their characteristics;

(b)the name and address of their owner, importer, exporter and consignee and of the person who made them and of any other person involved in their movement;

(c)their quantity;

(d)the countries in which they were made and through which they passed in transit; and

(e)the day on which they were imported, if applicable.

(2)Subject to subsection (3), the customs officer shall not detain, for the purpose of enforcing section 51.03, the goods for more than 10 working days — or, if the goods are perishable, for more than five days — after the day on which the customs officer first sends or makes available a sample or information to the owner under subsection (1). At the request of the owner made while the goods are detained for the purpose of enforcing section 51.03, the customs officer may, having regard to the circumstances, detain non-perishable goods for one additional period of not more than 10 working days.

(3)If, before the goods are no longer detained for the purpose of enforcing of section 51.03, the owner of a relevant protected mark has provided the Minister, in the manner specified by the Minister, with a copy of a document filed with a court commencing proceedings to obtain a remedy under this Act with respect to the detained goods, the customs officer shall continue to detain them until the Minister is informed in writing that

(a)the proceedings are finally disposed of, settled or abandoned;

(b)a court directs that the goods are no longer to be detained for the purpose of the proceedings; or

(c)the owner of the mark consents to the goods no longer being so detained.

(4)The occurrence of any of the events referred to in paragraphs (3)(a) to (c) does not preclude a customs officer from continuing to detain the goods under the Customs Act for a purpose other than with respect to the proceedings.

^note

51.07Restriction on information use — section 51.05#

(1)A person who receives a sample or information that is provided under section 51.05 shall not use the information, or information that is derived from the sample, for any purpose other than to give information to the customs officer about whether the importation or exportation of the goods is prohibited under section 51.03.

(2)A person who receives a sample or information that is provided under subsection 51.06(1) shall not use the information, or information that is derived from the sample, for any purpose other than to pursue remedies under this Act.

(3)For greater certainty, subsection (2) does not prevent the confidential communication of information about the goods for the purpose of reaching an out-of-court settlement.

^note

51.08Inspection#

After a sample or information has been provided under subsection 51.06(1), a customs officer may, in the officer’s discretion, give the owner, importer, exporter and consignee of the detained goods and the owner of the relevant protected mark an opportunity to inspect the goods.^note

51.09Liability for charges#

(1)The owner of a relevant protected mark who has received a sample or information under subsection 51.06(1) is liable to Her Majesty in right of Canada for the storage and handling charges for the detained goods — and, if applicable, for the charges for destroying them — for the period beginning on the day after the day on which a customs officer first sends or makes available a sample or information to that owner under that subsection and ending on the first day on which one of the following occurs:

(a)the goods are no longer detained for the purpose of enforcing section 51.03 or, if subsection 51.06(3) applies, for the purpose of the proceedings referred to in that subsection;

(b)the Minister receives written notification in which the owner of the mark states that the importation or exportation of the goods does not, with respect to the owner’s relevant protected mark, contravene section 51.03;

(c)the Minister receives written notification in which the owner of the mark states that they will not, while the goods are detained for the purpose of enforcing section 51.03, commence proceedings to obtain a remedy under this Act with respect to them.

(2)Despite paragraph (1)(a), if the goods are forfeited under subsection 39(1) of the Customs Act and the Minister did not, before the end of the detention of the goods for the purpose of enforcing section 51.03, receive a copy of a document filed with a court commencing proceedings to obtain a remedy under this Act with respect to the detained goods or the written notification referred to in paragraph (1)(b) or (c), the period ends on the day on which the goods are forfeited.

(3)Despite paragraph (1)(c), if the goods are forfeited under subsection 39(1) of the Customs Act after the Minister has received the written notification referred to in that paragraph, the period ends on the day on which the goods are forfeited.

(4)The owner and the importer or exporter of goods that are forfeited in the circumstances set out in subsection (2) or (3) are jointly and severally, or solidarily, liable to the owner of the relevant protected mark for all the charges under subsection (1) paid by the owner of the relevant protected mark with respect to the period

(a)in the circumstances referred to in subsection (2), beginning on the day on which the goods are no longer detained for the purpose of enforcing section 51.03 and ending on the day on which the goods are forfeited; and

(b)in the circumstances referred to in subsection (3), beginning on the day on which the Minister receives the written notification referred to in paragraph (1)(c) and ending on the day on which the goods are forfeited.

(5)Subsections (1) to (3) do not apply if

(a)the detention of the goods for the purpose of enforcing section 51.03 ends before the expiry of 10 working days — or, if the goods are perishable, before the expiry of five days — after the day on which the customs officer first sends or makes available a sample or information to the owner of the mark under subsection 51.06(1); and

(b)the Minister has not, by the end of the detention, received a copy of a document filed with a court commencing proceedings to obtain a remedy under this Act with respect to the detained goods or the written notification referred to in paragraph (1)(b) or (c).

^note

No Liability

51.1No liability#

Neither Her Majesty nor a customs officer is liable for any loss or damage suffered in relation to the enforcement or application of sections 51.03 to 51.06 and 51.08 because of

(a)the detention of goods, except if the detention contravenes subsection 51.06(2);

(b)the failure to detain goods; or

(c)the release or cessation of detention of any detained goods, except if the release or cessation contravenes subsection 51.06(3).

^note

Powers of Court Relating to Detained Goods

51.11Application to court#

(1)In the course of proceedings referred to in subsection 51.06(3), the court may, on the application of the Minister or a party to the proceedings,

(a)impose conditions on the storage or detention of the goods that are the subject of the proceedings; or

(b)direct that the goods are no longer to be detained for the purpose of the proceedings, on any conditions that the court may impose, if their owner, importer, exporter or consignee furnishes security in an amount fixed by the court.

(2)If a party applies to have the detained goods stored in a place other than a bonded warehouse or a sufferance warehouse, as those terms are defined in subsection 2(1) of the Customs Act, the Minister must consent to the storage of the goods in that place before a condition to that effect is imposed under subsection (1).

(3)The court may impose a condition described in subsection (2) despite section 31 of the Customs Act.

(4)A direction under paragraph (1)(b) that the goods are no longer to be detained for the purpose of the proceedings does not preclude a customs officer from continuing to detain the goods under the Customs Act for another purpose.

(5)In the course of proceedings referred to in subsection 51.06(3), the court may, on the application of the Minister or a party to the proceedings, require the owner of the relevant protected mark to furnish security, in an amount fixed by the court,

(a)to cover duties, as defined in subsection 2(1) of the Customs Act, storage and handling charges, and any other amount that may become chargeable against the goods; and

(b)to answer any damages that may by reason of the detention be sustained by the owner, importer, exporter or consignee of the goods.

^note

51.12Damages against trademark owner#

A court may award damages against the owner of a relevant protected mark who commenced proceedings referred to in subsection 51.06(3) to the owner, importer, exporter or consignee of the goods who is a party to the proceedings for losses, costs or prejudice suffered as a result of the detention of goods if the proceedings are dismissed or discontinued.^note

Trademark Agents

51.13Privileged communication#

(1)A communication that meets the following conditions is privileged in the same way as a communication that is subject to solicitor-client privilege or, in civil law, to professional secrecy of advocates and notaries and no person shall be required to disclose, or give testimony on, the communication in a civil, criminal or administrative action or proceeding:

(a)it is between a trademark agent and their client;

(b)it is intended to be confidential; and

(c)it is made for the purpose of seeking or giving advice with respect to any matter relating to the protection of a trademark, geographical indication or mark referred to in paragraph 9(1)(e), (i), (i.1), (i.3), (n) or (n.1).

(2)Subsection (1) does not apply if the client expressly or implicitly waives the privilege.

(3)Exceptions to solicitor-client privilege or, in civil law, to professional secrecy of advocates and notaries apply to a communication that meets the conditions set out in paragraphs (1)(a) to (c).

(4)A communication between an individual who is authorized to act as the equivalent of a trademark agent under the law of a country other than Canada and that individual’s client that is privileged under the law of that other country and that would be privileged under subsection (1) had it been made between a trademark agent and their client is deemed to be a communication that meets the conditions set out in paragraphs (1)(a) to (c).

(5)For the purposes of this section, a trademark agent or an individual who is authorized to act as the equivalent of a trademark agent under the law of a country other than Canada includes an individual acting on their behalf and a client includes an individual acting on the client’s behalf.

(6)This section applies to communications that are made before the day on which this section comes into force if they are still confidential on that day and to communications that are made after that day. However, this section does not apply in respect of an action or proceeding commenced before that day.

(7)In this section, trademark agent has the same meaning as in section 2 of the College of Patent Agents and Trademark Agents Act.

^note

Legal Proceedings

52Definitions#

In sections 53 to 53.3,

court means the Federal Court or the superior court of a province; (tribunal)

duties has the same meaning as in the Customs Act; (droits)

Minister means the Minister of Public Safety and Emergency Preparedness. (ministre)

release [Repealed, 2014, c. 32, s. 44]

^note

53Proceedings for interim custody#

(1)Where a court is satisfied, on application of any interested person, that any registered trademark, any trademark that is confusing with a registered trademark or any trade name has been applied to any goods that have been imported into Canada or are about to be distributed in Canada in such a manner that the distribution of the goods would be contrary to this Act, or that any indication of a place of origin has been unlawfully applied to any goods, the court may make an order for the interim custody of the goods, pending a final determination of the legality of their importation or distribution in an action commenced within such time as is prescribed by the order.

(2)Before making an order under subsection (1), the court may require the applicant to furnish security, in an amount fixed by the court, to answer any damages that may by reason of the order be sustained by the owner, importer or consignee of the goods and for any amount that may become chargeable against the goods while they remain in custody under the order.

(3)Where, by the judgment in any action under this section finally determining the legality of the importation or distribution of the goods, their importation or distribution is forbidden, either absolutely or on condition, any lien for charges against them that arose prior to the date of an order made under this section has effect only so far as may be consistent with the due execution of the judgment.

(4)Where in any action under this section the court finds that the importation is or the distribution would be contrary to this Act, it may make an order prohibiting the future importation of goods to which the trademark, trade name or indication of origin has been applied.

(5)An application referred to in subsection (1) may be made in an action or otherwise, and either on notice or ex parte.

(6)No proceedings may be taken under subsection (1) for the interim custody of goods by the Minister if proceedings for the detention of the goods by the Minister may be taken under section 53.1.

^note

53.1Proceedings for detention by Minister#

(1)Where a court is satisfied, on application by the owner of a registered trademark, that any goods to which the registered trademark or a trademark that is confusing with the registered trademark has been applied are about to be imported into Canada or have been imported into Canada but have not yet been released, and that the distribution of the goods in Canada would be contrary to this Act, the court may make an order

(a)directing the Minister to take reasonable measures, on the basis of information reasonably required by the Minister and provided by the applicant, to detain the goods;

(b)directing the Minister to notify the applicant and the owner or importer of the goods, forthwith after detaining them, of the detention and the reasons therefor; and

(c)providing for such other matters as the court considers appropriate.

(2)An application referred to in subsection (1) may be made in an action or otherwise, and either on notice or ex parte, except that it must always be made on notice to the Minister.

(3)Before making an order under subsection (1), the court may require the applicant to furnish security, in an amount fixed by the court,

(a)to cover duties, storage and handling charges, and any other amount that may become chargeable against the goods; and

(b)to answer any damages that may by reason of the order be sustained by the owner, importer or consignee of the goods.

(4)The Minister may apply to the court for directions in implementing an order made under subsection (1).

(5)The Minister may give the applicant or the importer of the detained goods an opportunity to inspect them for the purpose of substantiating or refuting, as the case may be, the applicant’s claim.

(6)Unless an order made under subsection (1) provides otherwise, the Minister shall, subject to the Customs Act and to any other Act of Parliament that prohibits, controls or regulates the importation or exportation of goods, release the goods without further notice to the applicant if, two weeks after the applicant has been notified under paragraph (1)(b), the Minister has not been notified that an action has been commenced for a final determination by the court of the legality of the importation or distribution of the goods.

(7)Where, in an action commenced under this section, the court finds that the importation is or the distribution would be contrary to this Act, the court may make any order that it considers appropriate in the circumstances, including an order that the goods be destroyed or exported, or that they be delivered up to the plaintiff as the plaintiff’s property absolutely.

^note

53.2Power of court to grant relief#

(1)If a court is satisfied, on application of any interested person, that any act has been done contrary to this Act, the court may make any order that it considers appropriate in the circumstances, including an order providing for relief by way of injunction and the recovery of damages or profits, for punitive damages and for the destruction or other disposition of any offending goods, packaging, labels and advertising material and of any equipment used to produce the goods, packaging, labels or advertising material.

(1.1)If, within a period of three years beginning on the date of registration of a trademark, the owner of the registered trademark makes an application claiming that an act has been done contrary to section 19, 20 or 22, the owner is not entitled to relief unless the trademark was in use in Canada at any time during that period or special circumstances exist that excuse the absence of use in Canada during that period.

(2)Before making an order for destruction or other disposition, the court shall direct that notice be given to any person who has an interest or right in the item to be destroyed or otherwise disposed of, unless the court is of the opinion that the interests of justice do not require that notice be given.

^note

53.3Unaltered state — exportation, sale or distribution#

(1)A court is not permitted, in any proceeding under section 53.1 or 53.2, to make an order under that section requiring or permitting the goods to be exported, sold or distributed in an unaltered state, except in a manner that does not affect the legitimate interests of the owner of the registered trademark or except in exceptional circumstances, if the court finds that

(a)goods bearing the registered trademark have been imported into Canada in such a manner that the distribution of the goods in Canada would be contrary to this Act; and

(b)the registered trademark has, without the consent of the owner, been applied to those goods with the intent of counterfeiting or imitating the trademark, or of deceiving the public and inducing them to believe that the goods were made with the consent of the owner.

(2)Subsection (1) also applies with respect to goods for which the only alteration is the removal of the trademark.

^note

54Evidence#

(1)Evidence of any document in the official custody of the Registrar or of any extract therefrom may be given by the production of a copy thereof purporting to be certified to be true by the Registrar.

(2)A copy of any entry in the register purporting to be certified to be true by the Registrar is evidence of the facts set out therein.

(3)A copy of the record of the registration of a trademark purporting to be certified to be true by the Registrar is evidence of the facts set out therein and that the person named therein as owner is the registered owner of the trademark for the purposes and within the territorial area therein defined.

(4)A copy of any entry made or documents filed under the authority of any Act in force before July 1, 1954 relating to trademarks, certified under the authority of that Act, is admissible in evidence and has the same probative force as a copy certified by the Registrar under this Act as provided in this section.

^note

55Jurisdiction of Federal Court#

The Federal Court has jurisdiction to entertain any action or proceeding, other than a proceeding under section 51.01, for the enforcement of any of the provisions of this Act or of any right or remedy conferred or defined by this Act.^note

56Appeal#

(1)An appeal lies to the Federal Court from any decision of the Registrar under this Act within two months from the date on which notice of the decision was dispatched by the Registrar or within such further time as the Court may allow, either before or after the expiration of the two months.

(2)An appeal under subsection (1) shall be made by way of notice of appeal filed with the Registrar and in the Federal Court.

(3)The appellant shall, within the time limited or allowed by subsection (1), send a copy of the notice by registered mail to the registered owner of any trademark that has been referred to by the Registrar in the decision complained of and to every other person who was entitled to notice of the decision.

(4)The Federal Court may direct that public notice of the hearing of an appeal under subsection (1) and of the matters at issue therein be given in such manner as it deems proper.

(5)If, on an appeal under subsection (1), the Federal Court grants leave to adduce evidence in addition to that adduced before the Registrar, the Court may exercise, with respect to that additional evidence, any discretion vested in the Registrar.

57Exclusive jurisdiction of Federal Court#

(1)The Federal Court has exclusive original jurisdiction, on the application of the Registrar or of any person interested, to order that any entry in the register be struck out or amended on the ground that at the date of the application the entry as it appears on the register does not accurately express or define the existing rights of the person appearing to be the registered owner of the trademark.

(2)No person is entitled to institute under this section any proceeding calling into question any decision given by the Registrar of which that person had express notice and from which he had a right to appeal.

^note

58How proceedings instituted#

An application under section 57 shall be made either by the filing of an originating notice of motion, by counter-claim in an action for the infringement of the trademark, or by statement of claim in an action claiming additional relief under this Act.^note

59Notice to set out grounds#

(1)Where an appeal is taken under section 56 by the filing of a notice of appeal, or an application is made under section 57 by the filing of an originating notice of motion, the notice shall set out full particulars of the grounds on which relief is sought.

(2)Any person on whom a copy of the notice described in subsection (1) has been served and who intends to contest the appeal or application, as the case may be, shall file and serve within the prescribed time or such further time as the court may allow a reply setting out full particulars of the grounds on which he relies.

(3)The proceedings on an appeal or application shall be heard and determined summarily on evidence adduced by affidavit unless the court otherwise directs, in which event it may order that any procedure permitted by its rules and practice be made available to the parties, including the introduction of oral evidence generally or in respect of one or more issues specified in the order.

^note

60Registrar to transmit documents#

When any appeal or application has been made to the Federal Court under any of the provisions of this Act, the Registrar shall, at the request of any of the parties to the proceedings and on the payment of the prescribed fee, transmit to the Court all documents on file in the Registrar’s office relating to the matters in question in those proceedings, or copies of those documents certified by the Registrar.^note

61Judgments#

(1)An officer of the Registry of the Federal Court shall file with the Registrar a certified copy of every judgment or order made by the Federal Court, the Federal Court of Appeal or the Supreme Court of Canada relating to any trademark on the register or to any protected geographical indication.

(2)A person who makes a request to the Registrar relating to a judgment or order made by the Federal Court, the Federal Court of Appeal or the Supreme Court of Canada in a proceeding to which they were a party shall, at the request of the Registrar, send a copy of that judgment or order to the Registrar.

^note

General

62Administration#

This Act shall be administered by the Minister of Industry.^note

63Registrar#

(1)There shall be a Registrar of Trademarks, who shall be the Commissioner of Patents appointed under subsection 4(1) of the Patent Act. The Registrar shall be responsible to the Deputy Minister of Industry.

(2)When the Registrar is absent or unable to act or when the office of Registrar is vacant, his powers shall be exercised and his duties and functions performed in the capacity of acting registrar by such other officer as may be designated by the Minister of Industry.

(3)The Registrar may, after consultation with the Minister, delegate to any person he deems qualified any of his powers, duties and functions under this Act, except the power to delegate under this subsection.

(4)Any decision under this Act of a person authorized to make the decision pursuant to subsection (3) may be appealed in the like manner and subject to the like conditions as a decision of the Registrar under this Act.

^note

64Electronic form and means#

(1)Subject to the regulations, any document, information or fee that is provided to the Registrar under this Act may be provided in any electronic form, and by any electronic means, that is specified by the Registrar.

(2)Subject to the regulations, the Registrar may use electronic means to create, collect, receive, store, transfer, distribute, publish, certify or otherwise deal with documents or information.

(3)In this section, electronic, in reference to a form or means, includes optical, magnetic and other similar forms or means.

^note

65Regulations#

The Governor in Council may make regulations for carrying into effect the purposes and provisions of this Act and, in particular, may make regulations

(a)respecting the form of the register to be kept under this Act, and of the entries to be made in it;

(b)respecting applications to the Registrar and the processing of those applications;

(c)respecting the manner in which the goods or services referred to in paragraph 30(2)(a) are to be described;

(d)respecting the merger of registrations under paragraph 41(1)(f), including, for the purpose of renewal under section 46, the deemed day of registration or last renewal;

(e)respecting the recording or registration of transfers, licences, disclaimers, judgments or other documents relating to any trademark;

(f)[Repealed, 2018, c. 27, s. 258] (repealed)

(g)respecting certificates of registration;

(h)respecting the procedure by and form in which an application may be made to the Minister, as defined in section 11.11, requesting the Minister to publish a statement referred to in subsection 11.12(2);

(i)respecting proceedings under sections 38 and 45, including documents relating to those proceedings;

(j)respecting the payment of fees to the Registrar, the amount of those fees and the circumstances in which any fees previously paid may be refunded in whole or in part;

(j.1)authorizing the Registrar to waive, subject to any prescribed terms and conditions, the payment of a fee if the Registrar is satisfied that the circumstances justify it;

(k)respecting the provision of documents and information to the Registrar, including the time at which they are deemed to be received by the Registrar;

(l)respecting communications between the Registrar and any other person;

(m)respecting the grouping of goods or services according to the classes of the Nice Classification and the numbering of those classes;

(n)respecting the awarding of costs under subsections 11.13(9), 38.1(1) and 45(4.1);

(o)respecting requests made under subsection 45.1(1); and

(p)prescribing anything that by this Act is to be prescribed.

^note

65.1Regulations — Madrid Protocol and Singapore Treaty#

The Governor in Council may make regulations for carrying into effect

(a)despite anything in this Act, the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted at Madrid on June 27, 1989, including any amendments, modifications and revisions made from time to time to which Canada is a party; and

(b)the Singapore Treaty on the Law of Trademarks, done at Singapore on March 27, 2006, including any amendments and revisions made from time to time to which Canada is a party.

^note

65.2Regulations#

The Governor in Council may make regulations

(a)respecting the list to be kept under subsection 11.12(1), including information relating to the listed geographical indications and translations to be included on the list; and

(b)respecting proceedings under section 11.13, including documents relating to those proceedings.

^note

65.3Case management#

(1)For greater certainty, the Governor in Council may make regulations under paragraphs 65(i) and 65.2(b) respecting the case management by the Registrar of proceedings referred to in those paragraphs.

(2)The Governor in Council may make regulations authorizing the Registrar to fix, despite any time or manner that is provided for under this Act with respect to any of the proceedings referred to in subsection (1), the time by which or the manner in which any step in a case-managed proceeding is to be completed and, in that case, the provisions of this Act and the regulations apply with respect to the proceeding with any modifications that the circumstances require.

^note

66Time period extended#

(1)If a time period fixed under this Act for doing anything ends on a prescribed day or a day that is designated by the Registrar, that time period is extended to the next day that is not a prescribed day or a designated day.

(2)The Registrar may, on account of unforeseen circumstances and if the Registrar is satisfied that it is in the public interest to do so, designate any day for the purposes of subsection (1). If a day is designated, the Registrar shall inform the public of that fact on the website of the Canadian Intellectual Property Office.

^note

Newfoundland

67Registration of trademark before April 1, 1949#

(1)The registration of a trademark under the laws of Newfoundland before April 1, 1949 has the same force and effect in the Province of Newfoundland as if Newfoundland had not become part of Canada, and all rights and privileges acquired under or by virtue of those laws may continue to be exercised or enjoyed in the Province of Newfoundland as if Newfoundland had not become part of Canada.

(2)The laws of Newfoundland as they existed immediately before April 1, 1949 continue to apply in respect of applications for the registration of trademarks under the laws of Newfoundland pending at that time and any trademarks registered under those applications shall, for the purposes of this section, be deemed to have been registered under the laws of Newfoundland before April 1, 1949.

^note

68Use of trademark or trade name before April 1, 1949#

For the purposes of this Act, the use or making known of a trademark or the use of a trade name in Newfoundland before April 1, 1949 shall not be deemed to be a use or making known of such trademark or a use of such trade name in Canada before that date.^note

Transitional Provisions

68.1Use of the indication “Beaufort”#

(1)During the period that begins on the day on which this subsection comes into force and ends on the fifth anniversary of that day, section 11.15 does not apply to the use, in connection with a business, of the indication “Beaufort”, or any translation of it in any language, by a person if they or their predecessor in title used the indication or the translation in relation to any business or commercial activity in respect of an agricultural product or food of the category of cheeses, as set out in the schedule, for less than 10 years before October 18, 2013.

(2)During the period that begins on the day on which this subsection comes into force and ends on the fifth anniversary of that day, section 11.15 does not apply to the use, in connection with a business, of the indication “Nürnberger Bratwürste”, or any translation of it in any language, by a person if they or their predecessor in title used the indication or the translation in relation to any business or commercial activity in respect of an agricultural product or food of the category of fresh, frozen and processed meats, as set out in the schedule, for less than five years before October 18, 2013.

(3)During the period that begins on the day on which this subsection comes into force and ends on the fifth anniversary of that day, section 11.15 does not apply to the use, in connection with a business, of the indication “Jambon de Bayonne”, or any translation of it in any language, by a person if they or their predecessor in title used the indication or the translation in relation to any business or commercial activity in respect of an agricultural product or food of the category of dry-cured meats, as set out in the schedule, for less than 10 years before October 18, 2013.

(4)For the purposes of subsections 68.1(1) to (3), no person is a predecessor in title if they only transferred the right to use the indication or the translation, or both.

^note

68.2Non-application of paragraph 38(2)(a.1)#

No person shall oppose an application for registration of a trademark on the ground set out in paragraph 38(2)(a.1) if the application was advertised under subsection 37(1) before the day on which that paragraph comes into force.^note

69 #

[Repealed, 2014, c. 20, s. 358.2] (repealed)

69.1Application not advertised#

An application for registration in respect of which all of the items set out in subsection 33(1), as enacted by section 339 of the Economic Action Plan 2014 Act, No. 1, have been received by the Registrar before the day on which that section 339 comes into force, and that has not been advertised under subsection 37(1) before that day shall be dealt with and disposed of in accordance with

(a)the provisions of this Act other than section 31, subsection 33(1) and section 34, as enacted or amended by the Economic Action Plan 2014 Act, No. 1; and

(b)section 34, as it read immediately before the day on which section 339 of the Economic Action Plan 2014 Act, No. 1 comes into force.

^note

70Application advertised#

(1)An application for registration that has been advertised under subsection 37(1) before the day on which section 342 of the Economic Action Plan 2014 Act, No. 1 comes into force shall be dealt with and disposed of in accordance with

(a)the provisions of this Act as they read immediately before the day on which section 342 of the Economic Action Plan 2014 Act, No. 1 comes into force, other than subsections 6(2) to (4), sections 28 and 36, subsections 38(6) to (8) and sections 39, 40 and 66;

(b)the definition Nice Classification in section 2, subsections 6(2) to (4), section 36, subsections 38(6) to (12), sections 39 and 40 and subsections 48(3) and (5), as enacted by the Economic Action Plan 2014 Act, No. 1;

(c)section 66, as enacted by the Economic Action Plan 2015 Act, No. 1; and

(d)subsections 9(3) and (4), sections 36.1, 38.1 and 45.1, and subsection 56(5), as enacted by the Budget Implementation Act, 2018, No. 2.

(2)For greater certainty, a regulation made under this Act applies to an application referred to in subsection (1), unless the regulation provides otherwise.

(3)Despite subsection (1), the Registrar may require an applicant to amend the statement of goods or services contained in an application referred to in subsection (1) so that the goods or services are grouped in the manner described in subsection 30(3), as enacted by section 339 of the Economic Action Plan 2014 Act, No. 1.

(4)Any question arising as to the class within which any goods or services are to be grouped shall be determined by the Registrar, whose determination is not subject to appeal.

^note

71Declaration of use#

For greater certainty, an applicant is not required to submit a declaration of use referred to in subsection 40(2), as that subsection read immediately before the day on which section 345 of the Economic Action Plan 2014 Act, No. 1 comes into force, in order for the Registrar to register the trademark and issue a certificate of registration.^note

72Registered trademarks — applications filed before coming into force#

Any matter arising on or after the day on which section 345 of the Economic Action Plan 2014 Act, No. 1 comes into force, in respect of a trademark registered on or after that day on the basis of an application filed before that day, shall be dealt with and disposed of in accordance with the provisions of this Act.^note

73Registered trademarks#

(1)Subject to subsections (2) to (4), any matter arising on or after the day on which section 345 of the Economic Action Plan 2014 Act, No. 1 comes into force, in respect of a trademark registered before that day, shall be dealt with and disposed of in accordance with the provisions of this Act.

(2)Paragraph 26(2)(e.1) does not apply to a trademark referred to in subsection (1) unless the register is amended under section 44.1.

(3)The Registrar may amend the register kept under section 26 to reflect the amendments to this Act that are made by the Economic Action Plan 2014 Act, No. 1.

(4)Subsection 46(1), as it read immediately before the day on which section 350 of the Economic Action Plan 2014 Act, No. 1 comes into force, continues to apply to a registration that is on the register on the day before the day on which that section comes into force until the registration is renewed.

^note

(Section 2, subsection 11.11(1), paragraphs 11.12(3)(b.1) and (3.1)(c) and 11.15(1)(a), (2)(a) and (3)(a), subsections 11.17(3) and (4), paragraph 11.17(5)(a), subsections 11.17(6) and (7), section 11.24, paragraphs 12(1)(h.1) and 51.02(b) and subsections 51.03(2.2) and 68.1(1) to (3))

Item | Categories*1 | Fresh, frozen and processed meats: products falling under Chapter 2 or heading 16.01 or 16.022 | Dry-cured meats: dry-cured meats products falling under Chapter 2 or heading 16.01 or 16.023 | Fresh, frozen and processed fish products: products falling under Chapter 3 or heading 16.03, 16.04 or 16.054 | Butter: products falling under heading 04.055 | Cheeses: products falling under heading 04.066 | Fresh and processed vegetable products: products falling under Chapter 7 and products containing vegetables falling under Chapter 207 | Fresh and processed fruits and nuts: products falling under Chapter 8 and products containing fruits or nuts falling under Chapter 208 | Spices: products falling under Chapter 99 | Cereals: products falling under Chapter 1010 | Products of the milling industry: products falling under Chapter 1111 | Oilseeds: products falling under Chapter 1212 | Hops: products falling under heading 12.1013 | Ginseng: ginseng products falling under heading 12.11 or 13.0214 | Beverages from plant extracts: products falling under Heading 13.0215 | Oils and animal fats: products falling under Chapter 1516 | Confectionery and baked products: products falling under heading 17.04, 18.06, 19.04 or 19.0517 | Sugars and syrups: products falling under heading 17.0218 | Pasta: products falling under heading 19.0219 | Table and processed olives: products falling under heading 20.01 or 20.0520 | Mustard paste: products falling under sub-heading 2103.3021 | Beer: products falling under heading 22.0322 | Vinegar: products falling under heading 22.0923 | Essential oils: products falling under heading 33.0124 | Natural gums and resins – chewing gum: products falling under heading 17.04

Related provisions

Schedule 6 · (Subsection 115(1))

Federal laws of Canada reproduced under the Reproduction of Federal Law Order (SI/97-5); not the official version. Source: Justice Laws Website.