Trademark Law Canada: Trademarks Act

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Trademarks Act

[Note: This consolidation is not an official version of the law.]

Updated to : April 30, 1999

An Act relating to trade-marks and unfair competition

SHORT TITLE

Short title

1. This Act may be cited as the Trade-marks Act.

R.S., c. T-10, s. 1.

INTERPRETATION

Definitions

2. In this Act,

"certification mark" Ťmarque de certificationť

"certification mark" means a mark that is used for the purpose of distinguishing
or so as to distinguish wares or services that are of a defined standard with
respect to

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

(b) the working conditions under which the wares have been produced or the
services performed,

(d) the area within which the wares have been produced or the services
performed,

from wares or services that are not of that defined standard;

"confusing" Ťcréant de la confusionť

"confusing", when applied as an adjective to a trade-mark or trade-name, means a
trade-mark or trade-name the use of which would cause confusion in the manner
and circumstances described in section 6;

"Convention" ŤConventionť

"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;

"country of origin" Ťpays d'origineť

"country of origin" means

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

(b) if the applicant for registration of a trade-mark 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 trade-mark 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;

"country of the Union" Ť pays de l'Union ť

"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;

"distinctive" Ťdistinctiveť

"distinctive", in relation to a trade-mark, means a trade-mark that actually
distinguishes the wares or services in association with which it is used by its
owner from the wares or services of others or is adapted so to distinguish them;

"distinguishing guise" Ťsigne distinctifť

"distinguishing guise" means

(a) a shaping of wares or their containers, or

(b) a mode of wrapping or packaging wares

the appearance of which is used by a person for the purpose of distinguishing or
so as to distinguish wares or services manufactured, sold, leased, hired or
performed by him from those manufactured, sold, leased, hired or performed by
others;

"geographical indication" Ť indication géographique ť

"geographical indication" means, in respect of a wine or spirit, an indication
that

(a) identifies the wine or spirit as originating in the territory of a WTO
Member, or a region or locality of that territory, where a quality, reputation
or other characteristic of the wine or spirit is essentially attributable to its
geographical origin, and

(b) except in the case of an indication identifying a wine or spirit originating
in Canada, is protected by the laws applicable to that WTO Member;

"owner" Ťpropriétaireť

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

"package" Ťpaquetť ou Ťcolisť

"package" includes any container or holder ordinarily associated with wares at
the time of the transfer of the property in or possession of the wares in the
course of trade;

"person" Ťpersonneť

"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;

"person interested" Ťpersonne intéresséeť

"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;

"prescribed" Ťprescritť

"prescribed" means prescribed by or under the regulations;

"proposed trade-mark" Ťmarque de commerce projetéeť

"proposed trade-mark" means a mark that is proposed to be used by a person for
the purpose of distinguishing or so as to distinguish wares or services
manufactured, sold, leased, hired or performed by him from those manufactured,
sold, leased, hired or performed by others;

"protected geographical indication" Ť indication géographique protégée ť

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

"register" Ťregistreť

"register" means the register kept under section 26;

"registered trade-mark" Ťmarque de commerce déposéeť

"registered trade-mark" means a trade-mark that is on the register;

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

"Registrar" Ťregistraireť

"Registrar" means the Registrar of Trade-marks appointed under section 63;

"related companies" Ťcompagnies connexesť

"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;

"representative for service" Ťreprésentant pour significationť

"representative for service" means the person or firm named under paragraph
30(g), subsection 38(3), paragraph 41(1)(a) or subsection 42(1);

"trade-mark" Ťmarque de commerceť

"trade-mark" means

(a) a mark that is used by a person for the purpose of distinguishing or so as
to distinguish wares or services manufactured, sold, leased, hired or performed
by him from those manufactured, sold, leased, hired or performed by others,

(b) a certification mark,

(d) a proposed trade-mark;

"trade-name" Ťnom commercialť

"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;

"use" Ťemploiť ou Ťusageť

"use", in relation to a trade-mark, means any use that by section 4 is deemed to
be a use in association with wares or services;

"wares" Ťmarchandisesť

"wares" includes printed publications;

"WTO Agreement" Ť Accord sur l'OMC ť

"WTO Agreement" has the meaning given to the word "Agreement" by subsection 2(1)
of the World Trade Organization Agreement Implementation Act;

"WTO Member" Ť membre de l'OMC ť

"WTO Member" means a Member of the World Trade Organization established by
Article I of the WTO Agreement.

R.S., 1985, c. T-13, s. 2; 1993, c. 15, s. 57; 1994, c. 47, s. 190.

When deemed to be adopted

3. A trade-mark 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.

R.S., c. T-10, s. 3.

When deemed to be used

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

Idem

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

Use by export

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

R.S., c. T-10, s. 4.

When deemed to be made known

5. A trade-mark 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 wares or services, and

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

(b) the wares 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 wares or services, or

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

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

R.S., c. T-10, s. 5.

When mark or name confusing

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

Idem

(2) The use of a trade-mark causes confusion with another trade-mark if the use
of both trade-marks in the same area would be likely to lead to the inference
that the wares or services associated with those trade-marks are manufactured,
sold, leased, hired or performed by the same person, whether or not the wares or
services are of the same general class.

Idem

(3) The use of a trade-mark causes confusion with a trade-name if the use of
both the trade-mark and trade-name in the same area would be likely to lead to
the inference that the wares or services associated with the trade-mark 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 wares or services are of the same general class.

Idem

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

What to be considered

(5) In determining whether trade-marks 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 trade-marks or trade-names and the
extent to which they have become known;

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

(d) the nature of the trade; and

(e) the degree of resemblance between the trade-marks or trade-names in
appearance or sound or in the ideas suggested by them.

R.S., c. T-10, s. 6.

UNFAIR COMPETITION AND PROHIBITED MARKS

Prohibitions

7. No person shall

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

(b) direct public attention to his wares, 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 wares, services or business and the
wares, services or business of another;

(d) make use, in association with wares 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 wares or services; or

(e) do any other act or adopt any other business practice contrary to honest
industrial or commercial usage in Canada.

R.S., c. T-10, s. 7.

Warranty of lawful use

8. Every person who in the course of trade transfers the property in or the
possession of any wares bearing, or in packages bearing, any trade-mark 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 trade-mark or trade-name has been and may be lawfully
used in connection with the wares.

R.S., c. T-10, s. 8.

Prohibited marks

9. (1) No person shall adopt in connection with a business, as a trade-mark 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;

(d) any word or symbol likely to lead to the belief that the wares 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) by a number of Moslem countries;

(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 6ter 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 6ter 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 any abbreviation of the
name, of an international intergovernmental organization, if the armorial
bearing, flag, emblem or abbreviation is on a list communicated under article
6ter 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 wares 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.

Excepted uses

(2) Nothing in this section prevents the adoption, use or registration as a
trade-mark 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 wares that are the same or similar to the wares in respect of which
the official sign or hallmark has been adopted, or

(ii) an armorial bearing, flag, emblem 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.

R.S., 1985, c. T-13, s. 9; 1990, c. 14, s. 8; 1993, c. 15, s. 58; 1994, c. 47,
s. 191.

Further prohibitions

10. Where any mark 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 wares or services, no person
shall adopt it as a trade-mark in association with such wares 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 mark so nearly resembling that mark as to be
likely to be mistaken therefor.

R.S., c. T-10, s. 10.

Further prohibitions

10.1 Where a denomination must, under the Plant Breeders' Rights Act, be used to
designate a plant variety, no person shall adopt it as a trade-mark 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.

1990, c. 20, s. 79.

Further prohibitions

11. No person shall use in connection with a business, as a trade-mark or
otherwise, any mark adopted contrary to section 9 or 10 of this Act or section
13 or 14 of the Unfair Competition Act, chapter 274 of the Revised Statutes of
Canada, 1952.

R.S., c. T-10, s. 11.

Further prohibitions

11.1 No person shall use in connection with a business, as a trade-mark or
otherwise, any denomination adopted contrary to section 10.1.

1990, c. 20, s. 80.

Definitions

11.11 In sections 11.12 to 11.2,

"Minister" Ť ministre ť

"Minister" means the member of the Queen's Privy Council for Canada designated
as the Minister for the purposes of sections 11.12 to 11.2;

"responsible authority" Ť autorité compétente ť

"responsible authority" means, in relation to a wine or spirit, the person, firm
or other entity that, in the opinion of the Minister, is, by reason of state or
commercial interest, sufficiently connected with and knowledgeable of that wine
or spirit to be a party to any proceedings in respect of an objection filed
under subsection 11.13(1).

1994, c. 47, s. 192.

List

11.12 (1) There shall be kept under the supervision of the Registrar a list of
geographical indications.

Statement of Minister

(2) Where a statement by the Minister, setting out in respect of an indication
the information mentioned in subsection (3), is published in the Canada Gazette
and

(a) a statement of objection has not 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

(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 pursuant to subsection 11.13(7) or, if an appeal is taken, it is
rejected pursuant to the final judgment given in the appeal,

the Registrar shall enter the indication on the list of geographical indications
kept pursuant to subsection (1).

Information

(3) For the purposes of subsection (2), the statement by the Minister must set
out the following information in respect of an indication:

(a) that the Minister proposes that the indication be entered on the list of
geographical indications kept pursuant to subsection (1);

(b) that the indication identifies a wine or that the indication identifies a
spirit;

(d) the name of the responsible authority in relation to the wine or spirit and
the address of the responsible authority's principal office or place of business
in Canada, if any, and 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
service of any document or proceedings in respect of an objection may be given
or served with the same effect as if they had been given to or served on the
responsible authority itself; and

(e) the quality, reputation or other characteristic of the wine or spirit that,
in the opinion of the Minister, qualifies that indication as a geographical
indication.

Removal from list

(4) The Registrar shall remove an indication from the list of geographical
indications kept pursuant to subsection (1) on the publication in the Canada
Gazette of a statement by the Minister that the indication is to be removed.

1994, c. 47, s. 192.

Statement of objection

11.13 (1) Within three months after the publication in the Canada Gazette of a
statement referred to in subsection 11.12(2), 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.

Ground

(2) A statement of objection may be based only on the ground that the indication
is not a geographical indication.

Content

(3) A statement of objection shall set out

(a) the ground of objection in sufficient detail to enable the responsible
authority to reply thereto; 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.

Counter statement

(4) Within three 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 shall not be entered on the list of geographical indications.

Evidence and hearing

(5) Both the objector and the responsible authority shall be given an
opportunity, in the manner prescribed, 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.

Withdrawal of objection

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

Decision

(7) After considering the evidence and representations of the objector and the
responsible authority, the Registrar shall decide that the indication is not a
geographical indication or reject the objection, and notify the parties of the
decision and the reasons for the decision.

1994, c. 47, s. 192.

Prohibited adoption of indication for wines

11.14 (1) No person shall adopt in connection with a business, as a trade-mark
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.

Prohibited use

(2) No person shall use in connection with a business, as a trade-mark 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.

1994, c. 47, s. 192.

Prohibited adoption of indication for spirits

11.15 (1) No person shall adopt in connection with a business, as a trade-mark
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.

Prohibited use

(2) No person shall use in connection with a business, as a trade-mark 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 (1); or

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

1994, c. 47, s. 192.

Exception for personal names

11.16 (1) Sections 11.14 and 11.15 do not prevent a person from using, in the
course of trade, that 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.

Exception for comparative advertising

(2) Subject to subsection (3), sections 11.14 and 11.15 do not prevent a person
from using a protected geographical indication in comparative advertising in
respect of a wine or spirit.

Exception not applicable to packaging

(3) Subsection (2) does not apply to comparative advertising on labels or
packaging associated with a wine or spirit.

1994, c. 47, s. 192.

Continued use

11.17 (1) Where a Canadian has used a protected geographical indication 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 ten years before that date,

section 11.14 or 11.15, as the case may be, does not apply to any continued or
similar use by that Canadian.

Definition of "Canadian"

(2) For the purposes of this section, "Canadian" includes

(a) a Canadian citizen;

(b) a permanent resident within the meaning of the Immigration Act who has been
ordinarily resident in Canada for not more than one year after the time at which
the permanent resident first became eligible to apply for Canadian citizenship;
and

1994, c. 47, s. 192.

Exception for disuse

11.18 (1) Notwithstanding sections 11.14 and 11.15 and paragraphs 12(1)(g) and
(h), nothing in any of those provisions prevents the adoption, use or
registration as a trade-mark or otherwise, in connection with a business, of a
protected geographical indication identifying a wine or spirit if the indication
has ceased to be protected by the laws applicable to the WTO Member for which
the indication is protected, or has fallen into disuse in that Member.

Exceptions for customary names

(2) Notwithstanding sections 11.14 and 11.15 and paragraphs 12(1)(g) and (h),
nothing in any of those provisions prevents the adoption, use or registration as
a trade-mark or otherwise, in connection with a business, of an indication in
respect of a wine or spirit

(a) that is identical with a term customary in common language in Canada as the
common name for the wine or spirit, as the case may be; or

(b) that is identical with a customary name of a grape variety existing in
Canada on or before the day on which the Agreement comes into force.

Exception for generic names for wines

(3) Notwithstanding sections 11.14 and 11.15 and paragraphs 12(1)(g) and (h),
nothing in any of those provisions prevents the adoption, use or registration as
a trade-mark or otherwise, in connection with a business, of the following
indications in respect of wines:

(a) Champagne;

(b) Port;

(d) Sherry;

(e) Chablis;

(f) Burgundy;

(g) Bourgogne;

(h) Rhine;

(i) Rhin;

(j) Sauterne;

(k) Sauternes;

(l) Claret;

(m) Bordeaux;

(n) Chianti;

(o) Madeira;

(p) Malaga;

(q) Marsala;

(r) Medoc;

(s) Médoc;

(t) Moselle;

(u) Mosel; and

(v) Tokay.

Exception for generic names for spirits

(4) Notwithstanding sections 11.14 and 11.15 and paragraphs 12(1)(g) and (h),
nothing in any of those provisions prevents the adoption, use or registration as
a trade-mark or otherwise, in connection with a business, of the following
indications in respect of spirits:

(a) Grappa;

(b) Marc;

(d) Sambuca;

(e) Geneva Gin;

(f) Geničvre;

(g) Hollands Gin;

(h) London Gin;

(i) Schnapps;

(j) Malt Whiskey;

(k) Eau-de-vie;

(l) Bitters;

(m) Anisette;

(n) Curacao; and

(o) Curaçao.

Governor in Council amendment

(5) The Governor in Council may, by order, amend subsection (3) or (4) by adding
thereto or deleting therefrom an indication in respect of a wine or spirit, as
the case may be.

1994, c. 47, s. 192.

Exception for failure to take proceedings

11.19 (1) Sections 11.14 and 11.15 do not apply to the adoption or use of a
trade-mark by a person if no proceedings are taken to enforce those sections in
respect of that person's use or adoption of the trade-mark within five years
after use of the trade-mark by that person or that person's predecessor-in-title
has become generally known in Canada or the trade-mark 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 trade-mark with
knowledge that such use or adoption was contrary to section 11.14 or 11.15, as
the case may be.

Idem

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

1994, c. 47, s. 192.

Transitional

11.2 Notwithstanding sections 11.14 and 11.15 and paragraphs 12(1)(g) and (h),
where a person has in good faith

(a) filed an application in accordance with section 30 for, or secured the
registration of, a trade-mark that is identical with or similar to the
geographical indication in respect of a wine or spirit protected by the laws
applicable to a WTO Member, or

(b) acquired rights to a trade-mark in respect of such a wine or spirit through
use,

before the later of the date on which this section comes into force and the date
on which protection in respect of the wine or spirit by the laws applicable to
that Member commences, nothing in any of those provisions prevents the adoption,
use or registration of that trade-mark by that person.

1994, c. 47, s. 192.

REGISTRABLE TRADE-MARKS

When trade-mark registrable

12. (1) Subject to section 13, a trade-mark 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 wares 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;

(d) confusing with a registered trade-mark;

(e) a mark of which the 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, where the
trade-mark is to be registered in association with a wine not originating in a
territory indicated by the geographical indication; and

(h) in whole or in part a protected geographical indication, where the
trade-mark is to be registered in association with a spirit not originating in a
territory indicated by the geographical indication.

Idem

(2) A trade-mark that is not registrable by reason of paragraph (1)(a) or (b) is
registrable if it has been so used in Canada by the applicant or his predecessor
in title as to have become distinctive at the date of filing an application for
its registration.

R.S., 1985, c. T-13, s. 12; 1990, c. 20, s. 81; 1993, c. 15, s. 59(F); 1994, c.
47, s. 193.

When distinguishing guises registrable

13. (1) A distinguishing guise is registrable only if

(a) it has been so used in Canada by the applicant or his predecessor in title
as to have become distinctive at the date of filing an application for its
registration; and

(b) the exclusive use by the applicant of the distinguishing guise in
association with the wares or services with which it has been used is not likely
unreasonably to limit the development of any art or industry.

Effect of registration

(2) No registration of a distinguishing guise interferes with the use of any
utilitarian feature embodied in the distinguishing guise.

Not to limit art or industry

(3) The registration of a distinguishing guise may be expunged by the Federal
Court on the application of any interested person if the Court decides that the
registration has become likely unreasonably to limit the development of any art
or industry.

R.S., c. T-10, s. 13; R.S., c. 10(2nd Supp.), s. 64.

Registration of marks registered abroad

14. (1) Notwithstanding section 12, a trade-mark that the applicant or the
applicant's predecessor in title has caused to be duly registered in or for the
country of origin of the applicant is registrable if, in Canada,

(a) it is not confusing with a registered trade-mark;

(b) it is not without distinctive character, having regard to all the
circumstances of the case including the length of time during which it has been
used in any country;

(d) it is not a trade-mark of which the adoption is prohibited by section 9 or
10.

Trade-marks regarded as registered abroad

(2) A trade-mark that differs from the trade-mark registered in the country of
origin only by elements that do not alter its distinctive character or affect
its identity in the form under which it is registered in the country of origin
shall be regarded for the purpose of subsection (1) as the trade-mark so
registered.

R.S., 1985, c. T-13, s. 14; 1994, c. 47, s. 194.

Registration of confusing marks

15. (1) Notwithstanding section 12 or 14, confusing trade-marks are registrable
if the applicant is the owner of all such trade-marks, which shall be known as
associated trade-marks.

Record

(2) On the registration of any trade-mark associated with any other registered
trade-mark, a note of the registration of each trade-mark shall be made on the
record of registration of the other trade-mark.

Amendment

(3) No amendment of the register recording any change in the ownership or in the
name or address of the owner of any one of a group of associated trade-marks
shall be made unless the Registrar is satisfied that the same change has
occurred with respect to all the trade-marks in the group, and corresponding
entries are made contemporaneously with respect to all those trade-marks.

R.S., c. T-10, s. 15.

PERSONS ENTITLED TO REGISTRATION OF TRADE-MARKS

Registration of marks used or made known in Canada

16. (1) Any applicant who has filed an application in accordance with section 30
for registration of a trade-mark that is registrable and that he or his
predecessor in title has used in Canada or made known in Canada in association
with wares or services is entitled, subject to section 38, to secure its
registration in respect of those wares or services, unless at the date on which
he or his predecessor in title first so used it or made it known it was
confusing with

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

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

Marks registered and used abroad

(2) Any applicant who has filed an application in accordance with section 30 for
registration of a trade-mark that is registrable and that the applicant or the
applicant's predecessor in title has duly registered in or for the country of
origin of the applicant and has used in association with wares or services is
entitled, subject to section 38, to secure its registration in respect of the
wares or services in association with which it is registered in that country and
has been used, unless at the date of filing of the application in accordance
with section 30 it was confusing with

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

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

Proposed marks

(3) Any applicant who has filed an application in accordance with section 30 for
registration of a proposed trade-mark that is registrable is entitled, subject
to sections 38 and 40, to secure its registration in respect of the wares or
services specified in the application, unless at the date of filing of the
application it was confusing with

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

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

Where application for confusing mark pending

(4) The right of an applicant to secure registration of a registrable trade-mark
is not affected by the previous filing of an application for registration of a
confusing trade-mark by another person, unless the application for registration
of the confusing trade-mark was pending at the date of advertisement of the
applicant's application in accordance with section 37.

Previous use or making known

(5) The right of an applicant to secure registration of a registrable trade-mark
is not affected by the previous use or making known of a confusing trade-mark or
trade-name by another person, if the confusing trade-mark or trade-name was
abandoned at the date of advertisement of the applicant's application in
accordance with section 37.

R.S., 1985, c. T-13, s. 16; 1994, c. 47, s. 195.

VALIDITY AND EFFECT OF REGISTRATION

Effect of registration in relation to previous use, etc.

17. (1) No application for registration of a trade-mark that has been advertised
in accordance with section 37 shall be refused and no registration of a
trade-mark shall be expunged or amended or held invalid on the ground of any
previous use or making known of a confusing trade-mark 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 trade-mark or trade-name at the date of advertisement of
the applicant's application.

When registration incontestable

(2) In proceedings commenced after the expiration of five years from the date of
registration of a trade-mark 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 trade-mark in Canada did
so with knowledge of that previous use or making known.

R.S., c. T-10, s. 17.

When registration invalid

18. (1) The registration of a trade-mark is invalid if

(a) the trade-mark was not registrable at the date of registration,

(b) the trade-mark is not distinctive at the time proceedings bringing the
validity of the registration into question are commenced, or

and subject to section 17, it is invalid if the applicant for registration was
not the person entitled to secure the registration.

Exception

(2) No registration of a trade-mark 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.

R.S., c. T-10, s. 18.

Rights conferred by registration

19. Subject to sections 21, 32 and 67, the registration of a trade-mark in
respect of any wares or services, unless shown to be invalid, gives to the owner
of the trade-mark the exclusive right to the use throughout Canada of the
trade-mark in respect of those wares or services.

R.S., 1985, c. T-13, s. 19; 1993, c. 15, s. 60.

Infringement

20. (1) The right of the owner of a registered trade-mark to its exclusive use
shall be deemed to be infringed by a person not entitled to its use under this
Act who sells, distributes or advertises wares or services in association with a
confusing trade-mark or trade-name, but no registration of a trade-mark prevents
a person from making

(a) any bona fide use of his personal name as a trade-name, or

(b) any bona fide use, other than as a trade-mark,

(i) of the geographical name of his place of business, or

(ii) of any accurate description of the character or quality of his wares or
services,

in such a manner as is not likely to have the effect of depreciating the value
of the goodwill attaching to the trade-mark.

Exception

(2) No registration of a trade-mark prevents a person from making any use of any
of the indications mentioned in subsection 11.18(3) in association with a wine
or any of the indications mentioned in subsection 11.18(4) in association with a
spirit.

R.S., 1985, c. T-13, s. 20; 1994, c. 47, s. 196.

Concurrent use of confusing marks

21. (1) Where, in any proceedings respecting a registered trade-mark 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 trade-mark, had in good faith used a
confusing trade-mark or trade-name in Canada before the date of filing 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
trade-mark or trade-name should be permitted in a defined territorial area
concurrently with the use of the registered trade-mark, the Court may, subject
to such terms as it deems just, order that the other party may continue to use
the confusing trade-mark or trade-name within that area with an adequate
specified distinction from the registered trade-mark.

Registration of order

(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 trade-mark.

R.S., c. T-10, s. 21; R.S., c. 10(2nd Supp.), s. 64.

Depreciation of goodwill

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

Action in respect thereof

(2) In any action in respect of a use of a trade-mark 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 wares marked with the trade-mark that
were in his possession or under his control at the time notice was given to him
that the owner of the registered trade-mark complained of the use of the
trade-mark.

R.S., c. T-10, s. 22.

CERTIFICATION MARKS

Registration of certification marks

23. (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 wares or the
performance of services such as those in association with which the
certification mark is used.

Licence

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

Unauthorized use

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

Action by unincorporated body

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

R.S., c. T-10, s. 23.

Registration of trade-mark confusing with certification mark

24. With the consent of the owner of a certification mark, a trade-mark
confusing with the certification mark may, if it exhibits an appropriate
difference, be registered by some other person to indicate that the wares 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.

R.S., c. T-10, s. 24.

Descriptive certification mark

25. A certification mark descriptive of the place of origin of wares or
services, and not confusing with any registered trade-mark, is registrable if
the applicant is the administrative authority of a country, state, province or
municipality including or forming part of the area indicated by the mark, or is
a commercial association having an office or representative in that area, but
the owner of any mark registered under this section shall permit the use of the
mark in association with any wares or services produced or performed in the area
of which the mark is descriptive.

R.S., c. T-10, s. 25.

26. (1) There shall be kept under the supervision of the Registrar

(a) a register of trade-marks and of transfers, disclaimers, amendments,
judgments and orders relating to each registered trade-mark; and

(b) the register of registered users that was required to be kept under this
subsection as it read immediately before section 61 of the Intellectual Property
Law Improvement Act came into force.

Information to be shown

(2) The register referred to in paragraph (1)(a) shall show, with reference to
each registered trade-mark, 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 trade-mark;

(d) particulars of each renewal;

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

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

R.S., 1985, c. T-13, s. 26; 1993, c. 15, s. 61.

27. (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.

Trade-marks registered before Unfair Competition Act

(2) Trade-marks 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 trade-mark 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 trade-mark 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;

(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 trade-mark shall be deemed to be a design mark having the features
described in the application therefor.

Trade-marks registered under Unfair Competition Act

(3) Trade-marks 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.

R.S., c. T-10, s. 26.

Indexes

28. (1) There shall be kept under the supervision of the Registrar

(a) an index of registered trade-marks;

(b) an index of trade-marks in respect of which applications for registration
are pending;

(d) an index of the names of owners of registered trade-marks;

(e) an index of the names of applicants for the registration of trade-marks;

(f) a list of trade-mark agents; and

(g) the index of the names of registered users that was required to be kept
under this subsection as it reads immediately before section 61 of the
Intellectual Property Law Improvement Act comes into force.

List of trade-mark agents

(2) The list of trade-mark agents shall include the names of all persons and
firms entitled to represent applicants in the presentation and prosecution of
applications for the registration of a trade-mark or in other business before
the Trade-marks Office.

R.S., 1985, c. T-13, s. 28; 1993, c. 15, s. 62.

Inspection

29. (1) Subject to subsection (2), the registers, the documents on which the
entries therein are based, all applications, including those abandoned, the
indexes, the list of trade-mark agents and the list of geographical indications
kept pursuant to subsection 11.12(1) shall be open to public inspection during
business hours, and the Registrar shall, on request and on payment of the
prescribed fee, furnish a copy certified by the registrar of any entry in the
registers, indexes or lists, or of any of those documents or applications.

(2) The disclosure of documents on which entries in the register required to be
kept under paragraph 26(1)(b) are based is subject to the provisions of
subsection 50(6), as it reads immediately before section 61 of the Intellectual
Property Law Improvement Act comes into force.

R.S., 1985, c. T-13, s. 29; 1993, c. 15, s. 63; 1994, c. 47, s. 197.

APPLICATIONS FOR REGISTRATION OF TRADE-MARKS

Contents of application

30. An applicant for the registration of a trade-mark shall file with the
Registrar an application containing

(a) a statement in ordinary commercial terms of the specific wares or services
in association with which the mark has been or is proposed to be used;

(b) in the case of a trade-mark that has been used in Canada, the date from
which the applicant or his named predecessors in title, if any, have so used the
trade-mark in association with each of the general classes of wares or services
described in the application;

(c) in the case of a trade-mark that has not been used in Canada but is made
known in Canada, the name of a country of the Union in which it has been used by
the applicant or his named predecessors in title, if any, and the date from and
the manner in which the applicant or named predecessors in title have made it
known in Canada in association with each of the general classes of wares or
services described in the application;

(d) in the case of a trade-mark that is the subject in or for another country of
the Union of a registration or an application for registration by the applicant
or the applicant's named predecessor in title on which the applicant bases the
applicant's right to registration, particulars of the application or
registration and, if the trade-mark has neither been used in Canada nor made
known in Canada, the name of a country in which the trade-mark has been used by
the applicant or the applicant's named predecessor in title, if any, in
association with each of the general classes of wares or services described in
the application;

(e) in the case of a proposed trade-mark, a statement that the applicant, by
itself or through a licensee, or by itself and through a licensee, intends to
use the trade-mark in Canada;

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

(g) the address of the applicant's principal office or place of business in
Canada, if any, and if the applicant 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 to whom any notice in respect of
the application or registration may be sent, and on whom service of any
proceedings in respect of the application or registration may be given or served
with the same effect as if they had been given to or served on the applicant or
registrant himself;

(h) unless the application is for the registration only of a word or words not
depicted in a special form, a drawing of the trade-mark and such number of
accurate representations of the trade-mark as may be prescribed; and

(i) a statement that the applicant is satisfied that he is entitled to use the
trade-mark in Canada in association with the wares or services described in the
application.

R.S., 1985, c. T-13, s. 30; 1993, c. 15, s. 64; 1994, c. 47, s. 198.

Applications based on registration abroad

31. (1) An applicant whose right to registration of a trade-mark is based on a
registration of the trade-mark in another country of the Union shall, before the
date of advertisement of his application in accordance with section 37, furnish
a copy of the registration certified by the office in which it was made,
together with a translation thereof into English or French if it is in any other
language, and such other evidence as the Registrar may require to establish
fully his right to registration under this Act.

Evidence required in certain cases

(2) An applicant whose trade-mark has been duly registered in his country of
origin and who claims that the trade-mark is registrable under paragraph
14(1)(b) shall furnish such evidence as the Registrar may require by way of
affidavit or statutory declaration establishing the circumstances on which he
relies, including the length of time during which the trade-mark has been used
in any country.

R.S., c. T-10, s. 30.

Further information in certain cases

32. (1) An applicant who claims that his trade-mark is registrable under
subsection 12(2) or section 13 shall furnish the Registrar with evidence by way
of affidavit or statutory declaration establishing the extent to which and the
time during which the trade-mark has been used in Canada and with any other
evidence that the Registrar may require in support of the claim.

Registration to be restricted

(2) The Registrar shall, having regard to the evidence adduced, restrict the
registration to the wares or services in association with which the trade-mark
is shown to have been so used as to have become distinctive and to the defined
territorial area in Canada in which the trade-mark is shown to have become
distinctive.

R.S., c. T-10, s. 31.

Applications by trade unions, etc.

33. Every trade union or commercial association that applies for the
registration of a trade-mark may be required to furnish satisfactory evidence
that its existence is not contrary to the laws of the country in which its
headquarters are situated.

R.S., c. T-10, s. 32.

Date of application abroad deemed date of application in Canada

34. (1) When an application for the registration of a trade-mark has been made
in or for any country of the Union other than Canada and an application is
subsequently made in Canada for the registration for use in association with the
same kind of wares or services of the same or substantially the same trade-mark
by the same applicant or the applicant's successor in title, the date of filing
of the application in or for the other country is deemed to be the date of
filing of the application in Canada, and the applicant is entitled to priority
in Canada accordingly notwithstanding any intervening use in Canada or making
known in Canada or any intervening application or registration if

(a) the application in Canada, including or accompanied by a declaration setting
out the date on which and the country of the Union in or for which the earliest
application was filed for the registration of the same or substantially the same
trade-mark for use in association with the same kind of wares or services, is
filed within a period of six months after that date, which period shall not be
extended;

(b) the applicant or, if the applicant is a transferee, the applicant's
predecessor in title by whom any earlier application was filed in or for any
country of the Union was at the date of the application a citizen or national of
or domiciled in that country or had therein a real and effective industrial or
commercial establishment; and

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

Evidence requests

(2) The Registrar may request the evidence before the day on which the
application is allowed pursuant to section 39.

How and when evidence must be furnished

(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.

R.S., 1985, c. T-13, s. 34; 1992, c. 1, s. 133; 1993, c. 15, s. 65; 1994, c. 47,
s. 199.

Disclaimer

35. The Registrar may require an applicant for registration of a trade-mark to
disclaim the right to the exclusive use apart from the trade-mark of such
portion of the trade-mark 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 wares or
services.

R.S., c. T-10, s. 34.

Abandonment

36. Where, in the opinion of the Registrar, an applicant is in default in the
prosecution of an application filed under this Act or any Act relating to
trade-marks in force prior to July 1, 1954, the Registrar may, after giving
notice to the applicant of the default, treat the application as abandoned
unless the default is remedied within the time specified in the notice.

R.S., c. T-10, s. 35.

When applications to be refused

37. (1) The Registrar shall refuse an application for the registration of a
trade-mark if he is satisfied that

(a) the application does not conform to the requirements of section 30,

(b) the trade-mark is not registrable, or

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

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

Notice to applicant

(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.

Doubtful cases

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

R.S., c. T-10, s. 36.

Statement of opposition

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

Grounds

(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 section 30;

(b) that the trade-mark is not registrable;

(d) that the trade-mark is not distinctive.

Content

(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.

Frivolous opposition

(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.

Substantial issue

(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.

Counter statement

(6) 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 served on the applicant.

Evidence and hearing

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

(a) the opposition is withdrawn or deemed under subsection (7.1) to have been
withdrawn; or

(b) the application is abandoned or deemed under subsection (7.2) to have been
abandoned.

Withdrawal of opposition

(7.1) The opposition shall be deemed to have been withdrawn if, in the
prescribed circumstances, the opponent does not submit either evidence under
subsection (7) or a statement that the opponent does not wish to submit
evidence.

Abandonment of application

(7.2) The application shall be deemed to have been abandoned if the applicant
does not file and serve a counter statement within the time referred to in
subsection (6) or if, in the prescribed circumstances, the applicant does not
submit either evidence under subsection (7) or a statement that the applicant
does not wish to submit evidence.

Decision

(8) After considering the evidence and representations of the opponent and the
applicant, the Registrar shall refuse the application or reject the opposition
and notify the parties of the decision and the reasons for the decision.

R.S., 1985, c. T-13, s. 38; 1992, c. 1, s. 134; 1993, c. 15, s. 66.

When application to be allowed

39. (1) When an application for the registration of a trade-mark either has not
been opposed and the time for the filing of a statement of opposition has
expired or it has been opposed and the opposition has been decided in favour of
the applicant, the Registrar shall allow the application or, if an appeal is
taken, shall act in accordance with the final judgment given in the appeal.

No extension of time

(2) Subject to subsection (3), the Registrar shall not extend the time for
filing a statement of opposition with respect to any application that has been
allowed.

Exception

(3) Where the Registrar has allowed an application without considering a
previously filed request for an extension of time to file a statement of
opposition, the Registrar may withdraw the application from allowance at any
time before issuing a certificate of registration and, in accordance with
section 47, extend the time for filing a statement of opposition.

R.S., 1985, c. T-13, s. 39; 1993, c. 15, s. 67.

REGISTRATION OF TRADE-MARKS

Registration of trade-marks

40. (1) When an application for registration of a trade-mark, other than a
proposed trade-mark, is allowed, the Registrar shall register the trade-mark and
issue a certificate of its registration.

Proposed trade-mark

(2) When an application for registration of a proposed trade-mark is allowed,
the Registrar shall give notice to the applicant accordingly and shall register
the trade-mark and issue a certificate of registration on receipt of a
declaration that the use of the trade-mark in Canada, in association with the
wares or services specified in the application, has been commenced by

(a) the applicant;

(b) the applicant's successor in title; or

(c) an entity that is licensed by or with the authority of the applicant to use
the trade-mark, if the applicant has direct or indirect control of the character
or quality of the wares or services.

Abandonment of application

(3) An application for registration of a proposed trade-mark shall be deemed to
be abandoned if the Registrar has not received the declaration referred to in
subsection (2) before the later of

(a) six months after the notice by the Registrar referred to in subsection (2),
and

(b) three years after the date of filing of the application in Canada.

Form and effect

(4) Registration of a trade-mark shall be made in the name of the applicant
therefor or his transferee, and the day on which registration is made shall be
entered on the register, and the registration takes effect on that day.

Section 34 does not apply

(5) For the purposes of subsection (3), section 34 does not apply in determining
when an application for registration is filed.

R.S., 1985, c. T-13, s. 40; 1993, c. 15, s. 68, c. 44, s. 231.

AMENDMENT OF THE REGISTER

Amendments to register

41. (1) The Registrar may, on application by the registered owner of a
trade-mark made in the prescribed manner, 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 or of his representative for service in Canada;

(b) cancel the registration of the trade-mark;

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

(e) enter a disclaimer that does not in any way extend the rights given by the
existing registration of the trade-mark.

Conditions

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

R.S., c. T-10, s. 40.

Representative for service

42. (1) The registered owner of a trade-mark who has no office or place of
business in Canada shall name another representative for service in place of the
latest recorded representative or supply a new and correct address of the latest
recorded representative on notice from the Registrar that the latest recorded
representative has died or that a letter addressed to him at the latest recorded
address and sent by ordinary mail has been returned undelivered.

Change of address

(2) When, after the dispatch of the notice referred to in subsection (1) by the
Registrar, no new nomination is made or no new and correct address is supplied
by the registered owner within three months, the Registrar or the Federal Court
may dispose of any proceedings under this Act without requiring service on the
registered owner of any process therein.

R.S., c. T-10, s. 41; R.S., c. 10(2nd Supp.), s. 64.

Additional representations

43. The registered owner of any trade-mark 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 trade-mark.

R.S., c. T-10, s. 42.

Notice for information

44. (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 trade-mark 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 trade-mark made at the
date of the notice.

Amendments to register

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

Failure to give information

(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 trade-mark.

R.S., c. T-10, s. 43.

Registrar may request evidence of user

45. (1) The Registrar may at any time and, at the written request made after
three years from the date of the registration of a trade-mark by any person who
pays the prescribed fee shall, unless the Registrar sees good reason to the
contrary, give notice to the registered owner of the trade-mark requiring the
registered owner to furnish within three months an affidavit or a statutory
declaration showing, with respect to each of the wares or services specified in
the registration, whether the trade-mark 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.

Form of evidence

(2) The Registrar shall not receive any evidence other than the affidavit or
statutory declaration, but may hear representations made by or on behalf of the
registered owner of the trade-mark or by or on behalf of the person at whose
request the notice was given.

Effect of non-use

(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 trade-mark, either
with respect to all of the wares or services specified in the registration or
with respect to any of those wares 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 trade-mark is liable to be
expunged or amended accordingly.

Notice to owner

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

Action by Registrar

(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.

R.S., 1985, c. T-13, s. 45; 1993, c. 44, s. 232; 1994, c. 47, s. 200.

RENEWAL OF REGISTRATIONS

Renewal

46. (1) The registration of a trade-mark that is on the register by virtue of
this Act is subject to renewal within a period of fifteen years from the day of
the registration or last renewal.

Notice to renew

(2) If the registration of a trade-mark has been on the register without renewal
for the period specified in subsection (1), the Registrar shall send a notice to
the registered owner and to the registered owner's representative for service,
if any, stating that if within six months after the date of the notice the
prescribed renewal fee is not paid, the registration will be expunged.

Failure to renew

(3) If within the period of six months specified in the notice, which period
shall not be extended, the prescribed renewal fee is not paid, the Registrar
shall expunge the registration.

Effective date of renewal

(4) When the prescribed fee for a renewal of any trade-mark registration under
this section is paid within the time limited for the payment thereof, the
renewal takes effect as of the day next following the expiration of the period
specified in subsection (1).

R.S., 1985, c. T-13, s. 46; 1992, c. 1, s. 135.

EXTENSIONS OF TIME

Extensions of time

47. (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.

Conditions

(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.

R.S., c. T-10, s. 46.

TRANSFER

Trade-mark transferable

48. (1) A trade-mark, 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
wares or services in association with which it has been used.

Where two or more persons interested

(2) Nothing in subsection (1) prevents a trade-mark 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 trade-marks and the rights were
exercised by those persons.

Registration of transfer

(3) The Registrar shall register the transfer of any registered trade-mark on
being furnished with evidence satisfactory to him of the transfer and the
information that would be required by paragraph 30(g) in an application by the
transferee to register the trade-mark.

R.S., c. T-10, s. 47.

CHANGE OF PURPOSE IN USE OF MARK

Change of purpose

49. If a mark is used by a person as a trade-mark for any of the purposes or in
any of the manners mentioned in the definition "certification mark" or
"trade-mark" in section 2, it shall not be held invalid merely on the ground
that the person or a predecessor in title uses it or has used it for any other
of those purposes or in any other of those manners.

R.S., c. T-10, s. 48.

LICENCES

Licence to use trade-mark

50. (1) For the purposes of this Act, if an entity is licensed by or with the
authority of the owner of a trade-mark to use the trade-mark in a country and
the owner has, under the licence, direct or indirect control of the character or
quality of the wares or services, then the use, advertisement or display of the
trade-mark in that country as or in a trade-mark, 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 trade-mark in that country by the owner.

Idem

(2) For the purposes of this Act, to the extent that public notice is given of
the fact that the use of a trade-mark 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 trade-mark and the character or quality of the
wares or services is under the control of the owner.

Owner may be required to take proceedings

(3) Subject to any agreement subsisting between an owner of a trade-mark and a
licensee of the trade-mark, 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.

R.S., 1985, c. T-13, s. 50; 1993, c. 15, s. 69.

Use of trade-mark by related companies

51. (1) Where a company and the owner of a trade-mark that is used in Canada by
that owner in association with a pharmaceutical preparation are related
companies, the use by the company of the trade-mark, or a trade-mark 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 trade-mark or
the confusing trade-mark, as the case may be, by that owner.

Where difference in composition

(2) Subsection (1) does not apply to any use of a trade-mark or a confusing
trade-mark 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 trade-mark is used in
Canada by the owner referred to in subsection (1) as to be likely to result in a
hazard to health.

Definition of "pharmaceutical preparation"

(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.

R.S., 1985, c. T-13, s. 51; 1996, c. 8, s. 32.

LEGAL PROCEEDINGS

Definitions

52. In sections 53 to 53.3,

"court" Ť tribunal ť

"court" means the Federal Court or the superior court of a province;

"duties" Ť droits ť

"duties" has the same meaning as in the Customs Act;

"Minister" Ť ministre ť

"Minister" means the Minister of National Revenue;

"release" Ť dédouanement ť

"release" has the same meaning as in the Customs Act.

R.S., 1985, c. T-13, s. 52; 1993, c. 44, s. 234.

Proceedings for interim custody

53. (1) Where a court is satisfied, on application of any interested person,
that any registered trade-mark or any trade-name has been applied to any wares
that have been imported into Canada or are about to be distributed in Canada in
such a manner that the distribution of the wares would be contrary to this Act,
or that any indication of a place of origin has been unlawfully applied to any
wares, the court may make an order for the interim custody of the wares, 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.

Security

(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 wares and for any amount that may become chargeable against the
wares while they remain in custody under the order.

Lien for charges

(3) Where, by the judgment in any action under this section finally determining
the legality of the importation or distribution of the wares, 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.

Prohibition of imports

(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 wares to which the trade-mark, trade-name
or indication of origin has been applied.

How application made

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

Limitation

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

R.S., 1985, c. T-13, s. 53; 1993, c. 44, s. 234.

Proceedings for detention by Minister

53.1 (1) Where a court is satisfied, on application by the owner of a registered
trade-mark, that any wares to which the trade-mark 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 wares 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 wares;

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

How application made

(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.

Court may require security

(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 wares; and

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

Application for directions

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

Minister may allow inspection

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

Where applicant fails to commence an action

(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 wares 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 wares.

Where court finds in plaintiff's favour

(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 wares be destroyed or exported, or that they be delivered up to
the plaintiff as the plaintiff's property absolutely.

1993, c. 44, s. 234.

Power of court to grant relief

53.2 Where 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 and for the
destruction, exportation or other disposition of any offending wares, packages,
labels and advertising material and of any dies used in connection therewith.

1993, c. 44, s. 234.

Re-exportation of wares

53.3 Where in any proceeding under section 53.1 or 53.2 the court finds

(a) that wares bearing a registered trade-mark have been imported into Canada in
such manner that the distribution of the wares in Canada would be contrary to
this Act, and

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

the court may not, other than in exceptional circumstances, make an order under
that section requiring or permitting the wares to be exported in an unaltered
state.

1993, c. 44, s. 234.

Evidence

54. (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.

Idem

(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.

Idem