WIPO Lex

Trademarks Act

(R.S.C., 1985, c. T-13)

(as amended up to June 18, 2019)

An Act relating to trademarks and unfair competition

Short Title

Short title

1 This Act may be cited as the Trademarks Act.

R.S., 1985, c. T-13, s. 1; 2014, c. 20, s. 318(E).

Interpretation

Definitions

2 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,

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

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distinguishing guise [Repealed, 2014, c. 20, s. 319]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

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)

R.S., 1985, c. T-13, s. 2; 1993, c. 15, s. 57; 1994, c. 47, s. 190; 2014, c. 20, ss. 319, 361(E), 362(E),

367, 369, c. 32, ss. 7, 53; 2017, c. 6, s. 60.

Reference to person

2.1 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.

2014, c. 20, s. 320.

When deemed to be adopted

3 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.

R.S., 1985, c. T-13, s. 3; 2014, c. 20, s. 361(E).

When deemed to be used

4 (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.

Idem

(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.

Use by export

(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.

R.S., 1985, c. T-13, s. 4; 2014, c. 20, s. 361(E), c. 32, ss. 53, 54(F).

When deemed to be made known

5 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.

R.S., 1985, c. T-13, s. 5; 2014, c. 20, s. 361(E), c. 32, s. 53.

When mark or name confusing

6 (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.

Confusion — trademark with other trademark

(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.

Confusion — trademark with trade name

(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.

Confusion — trade name with trademark

(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.

What to be considered

(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;

(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.

R.S., 1985, c. T-13, s. 6; 2014, c. 20, ss. 321, 361(E), 362(E), c. 32, s. 53.

Unfair Competition and Prohibited Signs

Prohibitions

7 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;

(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]

R.S., 1985, c. T-13, s. 7; 2014, c. 32, ss. 10, 53, 56(F).

Warranty of lawful use

8 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.

R.S., 1985, c. T-13, s. 8; 2014, c. 20, ss. 361(E), 362(E), c. 32, ss. 53, 54(F).

Prohibited marks

9 (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;

(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 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 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 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

ter

(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.

Excepted uses

(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.

R.S., 1985, c. T-13, s. 9; 1990, c. 14, s. 8; 1993, c. 15, s. 58; 1994, c. 47, s. 191; 1999, c. 31, s.

209(F); 2007, c. 26, s. 6; 2014, c. 20, ss. 323, 361(E), c. 32, ss. 11, 53, 56(F).

Further prohibitions

10 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.

R.S., 1985, c. T-13, s. 10; 2014, c. 20, s. 324, c. 32, s. 53.

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 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.

1990, c. 20, s. 79; 2014, c. 20, s. 361(E).

Further prohibitions

11 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.

R.S., 1985, c. T-13, s. 11; 2014, c. 20, s. 325.

Further prohibitions

11.1 No person shall use in connection with a business, as a trademark or otherwise,

any denomination adopted contrary to section 10.1.

1990, c. 20, s. 80; 2014, c. 20, s. 361(E), c. 32, s. 56(F).

Geographical Indications

Definitions

11.11 (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)

Designation of Minister

(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.

When indication confusing with trademark

(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.

What to be considered

(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

(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.

1994, c. 47, s. 192; 2014, c. 20, s. 361(E); 2017, c. 6, s. 61.

List

11.12 (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.

Statement of Minister — indication

(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.

Statement of Minister — translation

(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

(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.

Information — indication

(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;

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.

Information — translation

(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;

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.

Removal from list

(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.

Obvious error

(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.

Evidence of entry

(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.

Evidence of statement

(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.

Certified copies

(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.

1994, c. 47, s. 192; 2017, c. 6, s. 61.

Statement of objection

11.13 (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.

Grounds — indication

(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;

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.

Grounds — translation

(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;

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.

Content

(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.

Frivolous objection

(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.

Power to strike

(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.

Counter statement

(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.

Evidence and hearing

(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.

Service

(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.

No evidence — objector

(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.

No evidence — responsible authority

(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.

Decision

(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.

Effect of decision on translations

(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.

1994, c. 47, s. 192; 2014, c. 20, s. 361(E); 2017, c. 6, s. 62.

Prohibited adoption of indication for wines

11.14 (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.

Prohibited use

(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.

Prohibited use

(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.

Prohibited adoption of indication for spirits

(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.

Prohibited use

(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.

Prohibited use

(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.

1994, c. 47, s. 192; 2014, c. 20, s. 361(E), c. 32, s. 56(F); 2017, c. 6, s. 63.

Prohibited adoption of indication for agricultural products or food

11.15 (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.

Prohibited use

(2) 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 does not originate in the territory indicated

by the protected geographical indication or adopted contrary to subsection (1); 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.

Prohibited use

(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;

(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.

1994, c. 47, s. 192; 2014, c. 20, s. 361(E), c. 32, s. 56(F); 2017, c. 6, s. 64.

Exception when authorized

11.16 (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, with the consent of the responsible authority.

Exception for personal names

(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.

Exception for comparative advertising

(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.

Exception not applicable to labels or packaging

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

1994, c. 47, s. 192; 2014, c. 20, s. 361(E), c. 32, s. 56(F); 2017, c. 6, s. 64.

Continued use — wines or spirits

11.17 (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.

Definition of Canadian

(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

Use — certain cheeses

(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.

Use with qualifying term

(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.

Use of the indication “Beaufort”

(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.

Use of the indication “Nürnberger Bratwürste”

(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.

Use of the indication “Jambon de Bayonne”

(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.

Restriction

(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.

1994, c. 47, s. 192; 2001, c. 27, s. 271; 2014, c. 32, ss. 53(F), 56(F); 2017, c. 6, s. 64.

Exception for disuse

11.18 (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.

Exceptions for customary names

(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

or before the day on which the indication is entered on the list kept under

subsection 11.12(1).

Exception for translation — customary term

(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.

Exception for common names for wines

(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:

Exception for common names for spirits

(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]

(b) Marc;

(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.

Exception for common names for agricultural products or food

(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;

(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.

Spelling variations

(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.

Exception — “county”

(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.

Powers of Governor in Council

(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.

1994, c. 47, s. 192; SOR/2004-85; 2014, c. 20, s. 361(E), c. 32, s. 56(F); 2017, c. 6, s. 65.

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

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.

Proceedings after five years

(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.

1994, c. 47, s. 192; 2014, c. 20, s. 361(E), c. 32, s. 14(F); 2017, c. 6, s. 66.

Acquired rights — wines

11.2 (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.

Acquired rights — spirits

(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.

Acquired rights — agricultural products and food

(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.

1994, c. 47, s. 192; 2014, c. 20, s. 361(E), c. 32, s. 56(F); 2017, c. 6, s. 67.

Removal from the list

11.21 (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.

Grounds — indication

(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;

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.

Grounds — translation

(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;

(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.

How application is made

(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.

Summary proceedings

(5) The proceedings on an application shall be heard and determined summarily on

evidence adduced by affidavit unless the Federal Court directs otherwise.

Effect of order on translation

(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.

2017, c. 6, s. 67; 2014, c. 20, s. 361(E).

CETA indications

11.22 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.

2017, c. 6, s. 67.

Canada — Korea indications

11.23 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;

(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.

2017, c. 6, s. 67.

Powers of Governor in Council

11.24 The Governor in Council may, by order, amend the schedule by adding or

deleting a category of agricultural product or food.

2017, c. 6, s. 67.

Registrable Trademarks

When trademark registrable

12 (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;

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.

Utilitarian function

(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.

Registrable if distinctive

(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.

R.S., 1985, c. T-13, s. 12; 1990, c. 20, s. 81; 1993, c. 15, s. 59(F); 1994, c. 47, s. 193; 2007, c. 25, s.

14; 2014, c. 20, ss. 326, 361(E), c. 32, ss. 15(F), 53; 2017, c. 6, s. 68; 2018, c. 27, s. 231.

13 [Repealed, 2014, c. 20, s. 327]

14 [Repealed, 2014, c. 20, s. 328]

Registration of confusing trademarks

15 Despite section 12, confusing trademarks are registrable if the applicant is the

owner of all of the confusing trademarks.

R.S., 1985, c. T-13, s. 15; 2014, c. 20, s. 328.

Persons Entitled to Registration of Trademarks

Entitlement to registration

16 (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

Pending application

(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).

Previous use or making known

(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]

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

R.S., 1985, c. T-13, s. 16; 1994, c. 47, s. 195; 2014, c. 20, ss. 330, 361(E), 362(E), c. 32, s. 53.

Validity and Effect of Registration

Effect of registration in relation to previous use, etc.

17 (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.

When registration incontestable

(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.

R.S., 1985, c. T-13, s. 17; 2014, c. 20, ss. 361(E), 362(E), c. 32, s. 56(F).

When registration invalid

18 (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;

(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.

Exception

(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.

R.S., 1985, c. T-13, s. 18; 2014, c. 20, s. 361(E), c. 32, s. 19; 2018, c. 27, s. 218.

Not to limit art or industry

18.1 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.

2014, c. 20, s. 331.

Rights conferred by registration

19 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.

R.S., 1985, c. T-13, s. 19; 1993, c. 15, s. 60; 2014, c. 20, s. 361(E), c. 32, s. 53.

Infringement

20 (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;

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

(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.

Exception — bona fide use

(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.

Exception — utilitarian feature

(1.2) The registration of a trademark does not prevent a person from using any

utilitarian feature embodied in the trademark.

Exception

(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.

R.S., 1985, c. T-13, s. 20; 1994, c. 47, s. 196; 2014, c. 20, ss. 361(E), 362(E), c. 32, ss. 22, 56(F);

2017, c. 6, s. 69.

Concurrent use of confusing marks

21 (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.

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

trademark.

R.S., 1985, c. T-13, s. 21; 2014, c. 20, ss. 333(E), 361(E).

Depreciation of goodwill

22 (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.

Action

(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.

R.S., 1985, c. T-13, s. 22; 2014, c. 20, s. 361(E), c. 32, ss. 23, 53.

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 goods or the performance

of services such as those in association with which the certification mark is used or

proposed to be used.

Licence

(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.

Unauthorized use

(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.

Action by unincorporated body

(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.

R.S., 1985, c. T-13, s. 23; 2014, c. 20, s. 334, c. 32, s. 53.

Registration of trademark confusing with certification mark

24 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.

R.S., 1985, c. T-13, s. 24; 2014, c. 20, ss. 335(F), 361(E), c. 32, ss. 25(F), 53(E).

Descriptive certification mark

25 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.

R.S., 1985, c. T-13, s. 25; 2014, c. 20, s. 336, c. 32, s. 26.

26 (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.

Information to be shown

(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;

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.

R.S., 1985, c. T-13, s. 26; 1993, c. 15, s. 61; 2014, c. 20, ss. 337, 361(E), c. 32, s. 27.

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.

Trademarks registered before Unfair Competition 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;

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.

Trademarks registered under Unfair Competition Act

(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.

R.S., 1985, c. T-13, s. 27; 2014, c. 20, s. 361(E).

List of trademark agents

28 There shall be kept under the supervision of the Registrar a list of trademark

agents, which shall include the names of all persons and firms entitled to represent

applicants and others, including the registered owner of a trademark and parties to

the proceedings under sections 38 and 45, in all business before the Office of the

Registrar of Trademarks.

R.S., 1985, c. T-13, s. 28; 1993, c. 15, s. 62; 2014, c. 20, s. 338, c. 32, s. 28.

Available to public

29 (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;

(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.

Certified copies

(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 lists, or of any of those

applications, requests or documents.

R.S., 1985, c. T-13, s. 29; 1993, c. 15, s. 63; 1994, c. 47, s. 197; 2014, c. 20, s. 361(E), c. 32, s. 28.

Destruction of records

29.1 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;

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.

2014, c. 32, s. 28; 2014, c. 20, s. 361(E).

Applications for Registration of Trademarks

Requirements for application

30 (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.

Contents of application

(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;

clearly defined and that complies with any prescribed requirements; and

(d) any prescribed information or statement.

Nice Classification

(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.

Disagreement

(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.

R.S., 1985, c. T-13, s. 30; 1993, c. 15, s. 64; 1994, c. 47, s. 198; 2014, c. 20, s. 339, c. 32, s. 53.

Standard characters

31 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

R.S., 1985, c. T-13, s. 31; 2014, c. 20, s. 339.

Further evidence in certain cases

32 (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;

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.

Registration to be restricted

(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.

R.S., 1985, c. T-13, s. 32; 2014, c. 20, s. 339, c. 32, ss. 53, 56(F); 2018, c. 27, s. 232.

Filing date

33 (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;

(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.

Outstanding items

(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.

Application deemed never filed

(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.

R.S., 1985, c. T-13, s. 33; 2014, c. 20, s. 339.

Date of application abroad deemed date of application in Canada

34 (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;

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.

Evidence requests

(2) The Registrar may request the evidence before the day on which the trademark is

registered under section 40.

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.

Withdrawal of request

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

priority.

Extension

(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.

R.S., 1985, c. T-13, s. 34; 1992, c. 1, s. 133; 1993, c. 15, s. 65; 1994, c. 47, s. 199; 2014, c. 20, s.

340, c. 32, s. 53.

Disclaimer

35 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.

R.S., 1985, c. T-13, s. 35; 2014, c. 20, s. 361(E), c. 32, s. 53.

Abandonment

36 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.

R.S., 1985, c. T-13, s. 36; 2014, c. 20, s. 341.

When applications to be refused

37 (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,

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.

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 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.

Withdrawal of advertisement

(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.

R.S., 1985, c. T-13, s. 37; 2014, c. 20, ss. 342, 361(E).

Statement of opposition

38 (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.

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 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;

(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.

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.

Power to strike

(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.

Counter statement

(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]

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

Evidence and hearing

(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.

Service

(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.

Deemed withdrawal of opposition

(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.

Deemed abandonment of application

(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.

Decision

(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.

R.S., 1985, c. T-13, s. 38; 1992, c. 1, s. 134; 1993, c. 15, s. 66; 2014, c. 20, ss. 343, 361(E); 2018, c.

27, ss. 220, 233.

Divisional application

39 (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).

Identification

(2) A divisional application shall indicate that it is a divisional application and shall, in

the prescribed manner, identify the corresponding original application.

Separate application

(3) A divisional application is a separate application, including with respect to the

payment of any fees.

Filing date

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

date.

Division of divisional application

(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.

R.S., 1985, c. T-13, s. 39; 1993, c. 15, s. 67; 2014, c. 20, s. 344; 2018, c. 27, s. 234.

Registration of Trademarks

Registration of trademarks

40 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.

R.S., 1985, c. T-13, s. 40; 1993, c. 15, s. 68, c. 44, s. 231; 1999, c. 31, s. 210(F); 2014, c. 20, s. 345, c.

32, ss. 37(F), 53(E).

Amendment of the Register

Amendments to register

41 (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;

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.

Conditions

(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.

Obvious error

(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.

Removal of registration

(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.

R.S., 1985, c. T-13, s. 41; 2014, c. 20, ss. 346, 361(E), c. 32, s. 53.

42 [Repealed, 2014, c. 20, s. 347]

Additional representations

43 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.

R.S., 1985, c. T-13, s. 43; 2014, c. 20, s. 361(E).

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

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.

Amendments to register

(2) The Registrar may amend the registration of the trademark 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 trademark.

R.S., 1985, c. T-13, s. 44; 2014, c. 20, s. 361(E).

Registrar may require amendment

44.1 (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).

Amendments to register

(2) The Registrar may amend the register in accordance with the statement furnished

under subsection (1).

Failure to furnish statement

(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.

Disagreement

(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.

2014, c. 20, s. 348.

Registrar may request evidence of use

45 (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.

Form of evidence

(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.

Service

(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.

Failure to serve

(2.2) The Registrar is not required to consider any evidence or written

representations that was not served in accordance with subsection (2.1).

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 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.

Notice to owner

(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.

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; 2014, c. 20, ss. 349, 361(E), c. 32, s.

53.

Renewal of Registrations

Term

46 (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.

Notice to renew

(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.

Failure to renew

(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.

Renewal

(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.

Extension

(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.

Prescribed period

(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.

R.S., 1985, c. T-13, s. 46; 1992, c. 1, s. 135; 2014, c. 20, s. 350.

Renewal for goods or services

46.1 The registration of a trademark may be renewed for any of the goods or

services in respect of which the trademark is registered.

2018, c. 27, s. 224.

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.

Proceeding under section 45

47.1 (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.

One time extension

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

2014, c. 20, s. 351.

Transfer

Trademark transferable

48 (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.

Where two or more persons interested

(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.

Transfer of application

(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.

Transfer of trademark

(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.

Removal of recording or registration

(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.

R.S., 1985, c. T-13, s. 48; 2014, c. 20, ss. 352, 361(E), c. 32, s. 53.

Change of Purpose in Use of Trademark

Change of purpose

49 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.

R.S., 1985, c. T-13, s. 49; 2014, c. 20, s. 353.

Licences

Licence to use trademark

50 (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.

Idem

(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.

Owner may be required to take proceedings

(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.

R.S., 1985, c. T-13, s. 50; 1993, c. 15, s. 69; 1999, c. 31, s. 211(F); 2014, c. 20, ss. 361(E), 362(E), c.

32, s. 53.

Use of trademark by related companies

51 (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.

Where difference in composition

(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.

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; 2014, c. 20, s. 361(E).

Offences and Punishment

Sale, etc., of goods

51.01 (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.

Manufacture, etc., of goods

(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.

Services

(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.

Labels or packaging

(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

or packaging bear the trademark.

(d) [Deleted]

Trafficking in labels or packaging

(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;

or packaging bear the trademark.

Registration of 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.

Punishment

(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.

Limitation Period

(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.

Disposition order

(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.

Notice

(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.

2014, c. 32, s. 42; 2014, c. 20, s. 361(E).

Importation and Exportation

Interpretation

Definitions

51.02 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)

2014, c. 32, s. 43, c. 20, s. 361(E); 2017, c. 6, s. 70.

Prohibition

No importation or exportation

51.03 (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.

Exception

(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;

baggage and the circumstances, including the number of goods, indicate that the

goods are intended only for their personal use; or

(d) the goods, while being shipped from one place outside Canada to another,

are in customs transit control or customs transhipment control in Canada.

Wine or spirits

(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.

Agricultural products or food

(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.

Exception

(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; or

one place outside Canada to another, is in customs transit control or customs

transhipment control in Canada.

Restriction

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

under section 53.2.

2014, c. 32, s. 43, c. 20, s. 361(E); 2017, c. 6, s. 71.

Request for Assistance

Request for assistance

51.04 (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.

Information in request

(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.

Validity period

(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.

Security

(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.

Update

(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

geographical indication, the goods identified by the indication.

2014, c. 32, s. 43, c. 20, s. 361(E); 2017, c. 6, s. 72.

Measures Relating to Detained Goods

Provision of information by customs officer

51.05 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.

2014, c. 32, s. 43; 2017, c. 6, s. 78.

Provision of information to pursue remedy

51.06 (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;

(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.

Detention

(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.

Notice of proceedings

(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

Continued detention

(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.

2014, c. 32, s. 43; 2017, c. 6, ss. 73(F), 78, 79(E).

Restriction on information use — section 51.05

51.07 (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.

Restriction on information use — subsection 51.06(1)

(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.

For greater certainty

(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.

2014, c. 32, s. 43.

Inspection

51.08 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.

2014, c. 32, s. 43; 2017, c. 6, s. 78.

Liability for charges

51.09 (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;

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.

Exception — paragraph (1)(a)

(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.

Exception — paragraph (1)(c)

(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.

Joint and several or solidary liability

(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.

Exception

(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).

2014, c. 32, s. 43; 2017, c. 6, ss. 78, 79(E).

No Liability

No liability

51.1 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

release or cessation contravenes subsection 51.06(3).

2014, c. 32, s. 43.

Powers of Court Relating to Detained Goods

Application to court

51.11 (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.

Minister’s consent

(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).

Customs Act

(3) The court may impose a condition described in subsection (2) despite section 31

of the Customs Act.

Continued detention

(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.

Security

(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.

2014, c. 32, s. 43; 2017, c. 6, s. 78.

Damages against trademark owner

51.12 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.

2014, c. 32, s. 43, c. 20, s. 361(E); 2017, c. 6, s. 78.

Trademark Agents

Privileged communication

51.13 (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 an individual whose name is included on the list of trademark

agents and that individual’s client;

(b) it is intended to be confidential; and

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).

Waiver

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

privilege.

Exceptions

(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).

Trademark agents — country other than Canada

(4) A communication between an individual who is authorized to act as 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 an individual whose name is included on

the list of trademark agents and that individual’s client is deemed to be a

communication that meets the conditions set out in paragraphs (1)(a) to (c).

Individual acting on behalf of trademark agent or client

(5) For the purposes of this section, an individual whose name is included on the list

of trademark agents or an individual who is authorized to act as 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.

Application

(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.

2015, c. 36, s. 66; 2014, c. 20, s. 361(E).

Legal Proceedings

Definitions

52 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]

R.S., 1985, c. T-13, s. 52; 1993, c. 44, s. 234; 2005, c. 38, ss. 142, 145; 2014, c. 32, s. 44.

Proceedings for interim custody

53 (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.

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

goods and for any amount that may become chargeable against the goods 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 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.

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 goods to which the trademark, 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

goods by the Minister if proceedings for the detention of the goods by the Minister

may be taken under section 53.1.

R.S., 1985, c. T-13, s. 53; 1993, c. 44, s. 234; 2014, c. 20, ss. 361(E), 362(E), c. 32, s. 53; 2018, c. 23,

s. 17.

Proceedings for detention by Minister

53.1 (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

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 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.

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 goods 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 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.

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 goods be destroyed or exported, or that they be delivered up to the plaintiff as

the plaintiff’s property absolutely.

1993, c. 44, s. 234; 2014, c. 20, s. 361(E), c. 32, s. 53; 2018, c. 23, s. 18.

Power of court to grant relief

53.2 (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.

Notice to interested persons

(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.

1993, c. 44, s. 234; 2014, c. 32, s. 45.

Unaltered state — exportation, sale or distribution

53.3 (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.

Removal of trademark

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

the removal of the trademark.

1993, c. 44, s. 234; 2014, c. 20, s. 361(E), c. 32, s. 45.

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

(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.

Idem

(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.

R.S., 1985, c. T-13, s. 54; 2014, c. 20, s. 361(E).

Jurisdiction of Federal Court

55 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.

R.S., 1985, c. T-13, s. 55; 2014, c. 32, s. 46.

Appeal

56 (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.

Procedure

(2) An appeal under subsection (1) shall be made by way of notice of appeal filed

with the Registrar and in the Federal Court.

Notice to owner

(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.

Public notice

(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.

Additional evidence

(5) On an appeal under subsection (1), evidence in addition to that adduced before

the Registrar may be adduced and the Federal Court may exercise any discretion

vested in the Registrar.

R.S., 1985, c. T-13, s. 56; 2014, c. 20, s. 361(E).

Exclusive jurisdiction of Federal Court

57 (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.

Restriction

(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.

R.S., 1985, c. T-13, s. 57; 2014, c. 20, s. 354.

How proceedings instituted

58 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.

R.S., 1985, c. T-13, s. 58; 2014, c. 20, s. 361(E).

Notice to set out grounds

59 (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.

Hearing

(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.

R.S., c. T-10, s. 59.

Registrar to transmit documents

60 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.

R.S., 1985, c. T-13, s. 60; 1993, c. 44, s. 238; 2014, c. 32, s. 48.

Judgments

61 (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

Judgment sent by parties

(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.

R.S., 1985, c. T-13, s. 61; 2002, c. 8, s. 177; 2014, c. 20, ss. 355, 361(E); 2017, c. 6, s. 74.

General

Administration

62 This Act shall be administered by the Minister of Industry.

R.S., 1985, c. T-13, s. 62; 1992, c. 1, s. 145(F); 1995, c. 1, s. 62.

Registrar

63 (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.

Acting registrar

(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.

Assistants

(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.

Appeal

(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.

R.S., 1985, c. T-13, s. 63; 1992, c. 1, s. 145(F); 1995, c. 1, s. 62; 2014, c. 20, ss. 361(E), 370.

Electronic form and means

64 (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.

Collection, storage, etc.

(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.

Definition

(3) In this section, electronic, in reference to a form or means, includes optical,

magnetic and other similar forms or means.

R.S., 1985, c. T-13, s. 64; 2014, c. 20, s. 356.

Regulations

65 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;

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) respecting the maintenance of the list of trademark agents and the entry and

removal of the names of persons and firms on the list, including the qualifications

that must be met and the conditions that must be fulfilled to have a name entered

on the list and to maintain the name on the list;

(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; and

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

R.S., 1985, c. T-13, s. 65; 1993, c. 15, s. 70; 1994, c. 47, s. 201; 2014, c. 20, s. 357, c. 32, s. 50;

2015, c. 36, s. 67, 2018, c. 27, s. 262.

Regulations — Madrid Protocol and Singapore Treaty

65.1 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.

2014, c. 20, s. 358.

Regulations

65.2 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.

2017, c. 6, s. 75.

Time period extended

66 (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.

Power to designate 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.

R.S., 1985, c. T-13, s. 66; 2015, c. 36, s. 68.

Newfoundland

Registration of trademark before April 1, 1949

67 (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.

Applications for trademarks pending April 1, 1949

(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.

1993, c. 15, s. 71; 2014, c. 20, s. 361(E).

Use of trademark or trade name before April 1, 1949

68 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.

1993, c. 15, s. 71; 2014, c. 20, s. 361(E); 2014, c. 20, s. 362(E).

Transitional Provisions

Use of the indication “Beaufort”

68.1 (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.

Use of the indication “Nürnberger Bratwürste”

(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.

Use of the indication “Jambon de Bayonne”

(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.

Restriction

(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.

2017, c. 6, s. 76.

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

68.2 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.

2018, c. 27, s. 229.

69 [Repealed, 2014, c. 20, s. 358.2]

Application not advertised

69.1 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.

2014, c. 20, ss. 359, 367.

Application advertised

70 (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), sections

28 and 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; and

Regulations

(2) For greater certainty, a regulation made under this Act applies to an application

referred to in subsection (1), unless the regulation provides otherwise.

Nice Classification

(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.

Disagreement

(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.

2014, c. 20, ss. 359, 367; 2015, c. 36, s. 70; 2018, c. 27, s. 230; 2018, c. 27, s. 263.

Declaration of use

71 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.

2014, c. 20, ss. 359, 367.

Registered trademarks — applications filed before coming into force

72 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.

2014, c. 20, ss. 359, 367.

Registered trademarks

73 (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.

Application of paragraph 26(2)(e.1)

(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.

Amending register

(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.

Subsection 46(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.

2014, c. 20, ss. 359, 367.

SCHEDULE

(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))

Categories of Agricultural Products or Food

Item Categories*

Item Categories

1 Fresh, frozen and processed meats: products falling under Chapter 2 or heading

16.01 or 16.02

2 Dry-cured meats: dry-cured meats products falling under Chapter 2 or heading

16.01 or 16.02

3 Fresh, frozen and processed fish products: products falling under Chapter 3 or

heading 16.03, 16.04 or 16.05

4 Butter: products falling under heading 04.05

5 Cheeses: products falling under heading 04.06

6 Fresh and processed vegetable products: products falling under Chapter 7 and

products containing vegetables falling under Chapter 20

7 Fresh and processed fruits and nuts: products falling under Chapter 8 and

products containing fruits or nuts falling under Chapter 20

8 Spices: products falling under Chapter 9

9 Cereals: products falling under Chapter 10

10 Products of the milling industry: products falling under Chapter 11

11 Oilseeds: products falling under Chapter 12

12 Hops: products falling under heading 12.10

13 Ginseng: ginseng products falling under heading 12.11 or 13.02

14 Beverages from plant extracts: products falling under Heading 13.02

15 Oils and animal fats: products falling under Chapter 15

16 Confectionery and baked products: products falling under heading 17.04, 18.06,

19.04 or 19.05

17 Sugars and syrups: products falling under heading 17.02

18 Pasta: products falling under heading 19.02

19 Table and processed olives: products falling under heading 20.01 or 20.05

Item Categories

20 Mustard paste: products falling under sub-heading 2103.30

21 Beer: products falling under heading 22.03

22 Vinegar: products falling under heading 22.09

23 Essential oils: products falling under heading 33.01

24 Natural gums and resins – chewing gum: products falling under heading 17.04

All references in this schedule to chapters and headings are references to the chapters and headings of

the Harmonized Commodity Description and Coding System as it read on October 30, 2016.

2017, c. 6, s. 77.

RELATED PROVISIONS

— 1992, c. 1, s. 135(2), as amended by 2014, c. 20, s. 361(E)

Transitional

135 (2) Where a notice was sent under subsection 46(2) of the said Act before the coming

into force of subsection (1), the renewal of the registration of the trademark shall be dealt

with and disposed of as if subsection (1) had not come into force.

— 2014, c. 32, s. 57, as amended by 2014, c. 20, s. 361(E)

Amending the register

57 The Registrar of Trademarks may amend the register kept under section 26 of the

Trademarks Act to reflect the amendments to that Act that are made by this Act.

— 2017, c. 6, s. 114, as amended by 2014, c. 20, s. 361(E)

Definition of Act

114 In sections 115 and 116, Act means the Trademarks Act.

— 2017, c. 6, s. 115

Indications in Schedule

115 (1) Despite subsection 11.12(2) and section 11.13 of the Act, the Registrar, as defined

in section 2 of the Act, must, as soon as feasible after this section comes into force, enter

the indications set out in Schedule 6 to this Act on the list of geographical indications kept

under subsection 11.12(1) of the Act.

Deemed entered on list

(2) Those indications and all translations of those indications are deemed to have been

entered on the list on the day on which this section comes into force.

For greater certainty

(3) For greater certainty, the Registrar is not required to enter those translations on the list.

Geographical indications

(4) Each of those indications, to the extent that it remains on the list, is deemed to be a

geographical indication as defined in section 2 of the Act.

Acquired rights

(5) For the purpose of subsection 11.2(3) of the Act, the reference to “the day on which a

statement by the Minister is published under subsection 11.12(2) or (2.1)” is to be read,

with respect to those indications, as a reference to “the day on which this section comes

into force”.

Indication “Feta”

(6) For the purpose of section 11.22 of the Act, the indication “Feta” is deemed to be 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, to the extent that the

indication “Φέτα” (Feta) remains listed in that Part A of Annex 20-A of that Agreement.

— 2017, c. 6, Sch. 6

SCHEDULE 6

(Subsection 115(1))

Indications

Column 1 Column 2 Column 3 Column 4

Item Indication

Transliteration (for

information purposes

only)

Category of

Agricultural Product or

Food

Originating

Territory (Territory,

Region or Locality)

(for information

purposes only)

1 České pivo Beer Czech Republic

2 Žatecký Chmel Hops Czech Republic

3 Hopfen aus der

Hallertau

Hops Germany

4 Nürnberger

Bratwürste

Fresh, frozen and

processed meats

Germany

5 Nürnberger

Rostbratwürste

Fresh, frozen and

processed meats

Germany

6 Schwarzwälder

Schinken

Fresh, frozen and

processed meats

Germany

7 Aachener Printen Confectionery and

baked products

Germany

8 Nürnberger

Lebkuchen

Confectionery and

baked products

Germany

9 Lübecker Marzipan Confectionery and

baked products

Germany

10 Bremer Klaben Confectionery and

baked products

Germany

11 Hessischer

Handkäse

Cheeses Germany

12 Hessischer Handkäs Cheeses Germany

13 Tettnanger Hopfen Hops Germany

14 Spreewälder Gurken Fresh and processed

vegetable products

Germany

15 Danablu Cheeses Denmark

16 Ελιά Καλαμάτας Elia Kalamatas Table and processed

olives

Greece

17 Μαστίχα Χίου Masticha Chiou Natural gums and

resins - chewing gum

Greece

18 Φέτα Feta Cheeses Greece

Column 1 Column 2 Column 3 Column 4

Item Indication

Transliteration (for

information purposes

only)

Category of

Agricultural Product or

Food

Originating

Territory (Territory,

Region or Locality)

(for information

purposes only)

19 Feta Cheeses Greece

20 Ελαιόλαδο

Καλαμάτας

Elaiolado Kalamata Oils and animal fats Greece

21 Ελαιόλαδο

Κολυμβάρι Χανίων

Κρήτης

Elaiolado Kolymvari

Chanion Kritis

Oils and animal fats Greece

22 Ελαιόλαδο Σητείας

Λασιθίου Κρήτης

Elaiolado Sitia

Lasithiou Kritis

Oils and animal fats Greece

23 Ελαιόλαδο Λακωνία Elaiolado Lakonia Oils and animal fats Greece

24 Κρόκος Κοζάνης Krokos Kozanis Spices Greece

25 Κεφαλογραβιέρα Kefalograviera Cheeses Greece

26 Γραβιέρα Κρήτης Graviera Kritis Cheeses Greece

27 Γραβιέρα Νάξου Graviera Naxou Cheeses Greece

28 Μανούρι Manouri Cheeses Greece

29 Κασέρι Kasseri Cheeses Greece

30 Φασόλια Γίγαντες

Ελέφαντες

Καστοριάς

Fassolia Gigantes

Elefantes Kastorias

Fresh and processed

vegetable products

Greece

31 Φασόλια Γίγαντες

Ελέφαντες Πρεσπών

Φλώρινας

Fassolia Gigantes

Elefantes Prespon

Florinas

Fresh and processed

vegetable products

Greece

32 Κονσερβολιά

Αμφίσσης

Konservolia Amfissis Table and processed

olives

Greece

33 Λουκούμι

Γεροσκήπου

Loukoumi

Geroskipou

Confectionery and

baked products

Cyprus

34 Baena Oils and animal fats Spain

35 Sierra Mágina Oils and animal fats Spain

36 Aceite del Baix Ebre-

Montsía

Oils and animal fats Spain

37 Oli del Baix Ebre-

Montsía

Oils and animal fats Spain

Column 1 Column 2 Column 3 Column 4

Item Indication

Transliteration (for

information purposes

only)

Category of

Agricultural Product or

Food

Originating

Territory (Territory,

Region or Locality)

(for information

purposes only)

38 Aceite del Bajo

Aragón

Oils and animal fats Spain

39 Antequera Oils and animal fats Spain

40 Priego de Córdoba Oils and animal fats Spain

41 Sierra de Cádiz Oils and animal fats Spain

42 Sierra de Segura Oils and animal fats Spain

43 Sierra de Cazorla Oils and animal fats Spain

44 Siurana Oils and animal fats Spain

45 Aceite de Terra Alta Oils and animal fats Spain

46 Oli de Terra Alta Oils and animal fats Spain

47 Les Garrigues Oils and animal fats Spain

48 Estepa Oils and animal fats Spain

49 Guijuelo Fresh, frozen and

processed meats

Spain

50 Jamón de Huelva Fresh, frozen and

processed meats

Spain

51 Jamón de Teruel Fresh, frozen and

processed meats

Spain

52 Salchichón de Vic Fresh, frozen and

processed meats

Spain

53 Llonganissa de Vic Fresh, frozen and

processed meats

Spain

54 Mahón-Menorca Cheeses Spain

55 Queso Manchego Cheeses Spain

56 Cítricos Valencianos Fresh and processed

fruits and nuts

Spain

57 Cîtrics Valancians Fresh and processed

fruits and nuts

Spain

58 Jijona Confectionery and

baked products

Spain

Column 1 Column 2 Column 3 Column 4

Item Indication

Transliteration (for

information purposes

only)

Category of

Agricultural Product or

Food

Originating

Territory (Territory,

Region or Locality)

(for information

purposes only)

59 Turrón de Alicante Confectionery and

baked products

Spain

60 Azafrán de la

Mancha

Spices Spain

61 Comté Cheeses France

62 Reblochon Cheeses France

63 Reblochon de

Savoie

Cheeses France

64 Roquefort Cheeses France

65 Camembert de

Normandie

Cheeses France

66 Brie de Meaux Cheeses France

67 Emmental de Savoie Cheeses France

68 Pruneaux d’Agen Fresh and processed

fruits and nuts

France

69 Pruneaux d’Agen mi-

cuits

Fresh and processed

fruits and nuts

France

70 Huîtres de

Marennes-Oléron

Fresh, frozen and

processed fish

products

France

71 Canards à foie gras

du Sud-Ouest:

Chalosse

Fresh, frozen and

processed meats

France

72 Canards à foie gras

du Sud-Ouest:

Gascogne

Fresh, frozen and

processed meats

France

73 Canards à foie gras

du Sud-Ouest: Gers

Fresh, frozen and

processed meats

France

74 Canards à foie gras

du Sud-Ouest:

Landes

Fresh, frozen and

processed meats

France

Column 1 Column 2 Column 3 Column 4

Item Indication

Transliteration (for

information purposes

only)

Category of

Agricultural Product or

Food

Originating

Territory (Territory,

Region or Locality)

(for information

purposes only)

75 Canards à foie gras

du Sud-Ouest:

Périgord

Fresh, frozen and

processed meats

France

76 Canards à foie gras

du Sud-Ouest:

Quercy

Fresh, frozen and

processed meats

France

77 Jambon de Bayonne Dry-cured meats France

78 Huile d’olive de

Haute-Provence

Oils and animal fats France

79 Huile essentielle de

lavande de Haute-

Provence

Essential oils France

80 Morbier Cheeses France

81 Epoisses Cheeses France

82 Beaufort Cheeses France

83 Maroilles Cheeses France

84 Marolles Cheeses France

85 Munster Cheeses France

86 Munster Géromé Cheeses France

87 Fourme d’Ambert Cheeses France

88 Abondance Cheeses France

89 Bleu d’Auvergne Cheeses France

90 Livarot Cheeses France

91 Cantal Cheeses France

92 Fourme de Cantal Cheeses France

93 Cantalet Cheeses France

94 Petit Cantal Cheeses France

95 Tomme de Savoie Cheeses France

96 Pont-L’Evêque Cheeses France

97 Neufchâtel Cheeses France

Column 1 Column 2 Column 3 Column 4

Item Indication

Transliteration (for

information purposes

only)

Category of

Agricultural Product or

Food

Originating

Territory (Territory,

Region or Locality)

(for information

purposes only)

98 Chabichou du Poitou Cheeses France

99 Crottin de Chavignol Cheeses France

100 Saint-Nectaire Cheeses France

101 Piment d’Espelette Spices France

102 Lentille verte du Puy Fresh and processed

vegetable products

France

103 Aceto balsamico

Tradizionale di

Modena

Vinegar Italy

104 Aceto balsamico di

Modena

Vinegar Italy

105 Cotechino Modena Fresh, frozen and

processed meats

Italy

106 Zampone Modena Fresh, frozen and

processed meats

Italy

107 Bresaola della

Valtellina

Fresh, frozen and

processed meats

Italy

108 Mortadella Bologna Fresh, frozen and

processed meats

Italy

109 Prosciutto di Parma Dry-cured meats Italy

110 Prosciutto di S.

Daniele

Dry-cured meats Italy

111 Prosciutto Toscano Dry-cured meats Italy

112 Prosciutto di

Modena

Dry-cured meats Italy

113 Provolone

Valpadana

Cheeses Italy

114 Taleggio Cheeses Italy

115 Asiago Cheeses Italy

116 Fontina Cheeses Italy

117 Gorgonzola Cheeses Italy

Column 1 Column 2 Column 3 Column 4

Item Indication

Transliteration (for

information purposes

only)

Category of

Agricultural Product or

Food

Originating

Territory (Territory,

Region or Locality)

(for information

purposes only)

118 Grana Padano Cheeses Italy

119 Mozzarella di Bufala

Campana

Cheeses Italy

120 Parmigiano

Reggiano

Cheeses Italy

121 Pecorino Romano Cheeses Italy

122 Pecorino Sardo Cheeses Italy

123 Pecorino Toscano Cheeses Italy

124 Arancia Rossa di

Sicilia

Fresh and processed

fruits and nuts

Italy

125 Cappero di

Pantelleria

Fresh and processed

fruits and nuts

Italy

126 Kiwi Latina Fresh and processed

fruits and nuts

Italy

127 Lenticchia di

Castelluccio di

Norcia

Fresh and processed

vegetable products

Italy

128 Mela Alto Adige Fresh and processed

fruits and nuts

Italy

129 Südtiroler Apfel Fresh and processed

fruits and nuts

Italy

130 Pesca e nettarina di

Romagna

Fresh and processed

fruits and nuts

Italy

131 Pomodoro di

Pachino

Fresh and processed

vegetable products

Italy

132 Radicchio Rosso di

Treviso

Fresh and processed

vegetable products

Italy

133 Ricciarelli di Siena Confectionery and

baked products

Italy

134 Riso Nano Vialone

Veronese

Cereals Italy

Column 1 Column 2 Column 3 Column 4

Item Indication

Transliteration (for

information purposes

only)

Category of

Agricultural Product or

Food

Originating

Territory (Territory,

Region or Locality)

(for information

purposes only)

135 Speck Alto Adige Fresh, frozen and

processed meats

Italy

136 Südtiroler

Markenspeck

Fresh, frozen and

processed meats

Italy

137 Südtiroler Speck Fresh, frozen and

processed meats

Italy

138 Veneto Valpolicella Oils and animal fats Italy

139 Veneto Euganei e

Berici

Oils and animal fats Italy

140 Veneto del Grappa Oils and animal fats Italy

141 Culatello di Zibello Fresh, frozen and

processed meats

Italy

142 Garda Fresh, frozen and

processed meats

Italy

143 Lardo di Colonnata Fresh, frozen and

processed meats

Italy

144 Szegedi téliszalámi Fresh, frozen and

processed meats

Hungary

145 Szegedi szalámi Fresh, frozen and

processed meats

Hungary

146 Tiroler Speck Fresh, frozen and

processed meats

Austria

147 Steirischer Kren Fresh and processed

vegetable products

Austria

148 Steirisches

Kürbiskernöl

Oilseeds Austria

149 Queijo S. Jorge Cheeses Portugal

150 Azeite de Moura Oils and animal fats Portugal

151 Azeites de Trás-os-

Montes

Oils and animal fats Portugal

152 Azeite do Alentejo

Interior

Oils and animal fats Portugal

Column 1 Column 2 Column 3 Column 4

Item Indication

Transliteration (for

information purposes

only)

Category of

Agricultural Product or

Food

Originating

Territory (Territory,

Region or Locality)

(for information

purposes only)

153 Azeites da Beira

Interior

Oils and animal fats Portugal

154 Azeites do Norte

Alentejano

Oils and animal fats Portugal

155 Azeites do Ribatejo Oils and animal fats Portugal

156 Pêra Rocha do

Oeste

Fresh and processed

fruits and nuts

Portugal

157 Ameixa d’Elvas Fresh and processed

fruits and nuts

Portugal

158 Ananás dos Açores /

S. Miguel

Fresh and processed

fruits and nuts

Portugal

159 Chouriça de carne

de Vinhais

Fresh, frozen and

processed meats

Portugal

160 Linguiça de Vinhais Fresh, frozen and

processed meats

Portugal

161 Chouriço de

Portalegre

Fresh, frozen and

processed meats

Portugal

162 Presunto de

Barrancos

Fresh, frozen and

processed meats

Portugal

163 Queijo Serra da

Estrela

Cheeses Portugal

164 Queijos da Beira

Baixa

Cheeses Portugal

165 Queijo de Castelo

Branco

Cheeses Portugal

166 Queijo Amarelo da

Beira Baixa

Cheeses Portugal

167 Queijo Picante da

Beira Baixa

Cheeses Portugal

168 Salpicão de Vinhais Fresh, frozen and

processed meats

Portugal

169 Gouda Holland Cheeses Netherlands

Column 1 Column 2 Column 3 Column 4

Item Indication

Transliteration (for

information purposes

only)

Category of

Agricultural Product or

Food

Originating

Territory (Territory,

Region or Locality)

(for information

purposes only)

170 Edam Holland Cheeses Netherlands

171 Kalix Löjrom Fresh, frozen and

processed fish

products

Sweden

172 Magiun de prune

Topoloveni

Fresh and processed

fruits and nuts

Romania

— 2017, c. 6, s. 116

Additional indications

116 (1) On the publication of a statement by the Minister, as defined in section 11.11 of the

Act, that a geographical indication has been added to 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, the Registrar, as defined in section 2 of the Act, must,

despite subsection 11.12(2) and section 11.13 of the Act, enter the indication on the list

kept under subsection 11.12(1) of the Act.

Information in statement

(2) The Minister’s statement must set out the information described in paragraphs 11.12(3)

(b) to (d) and (f) of the Act in respect of the indication.

Deemed entered on list

(3) The indication and all translations of the indication are deemed to have been entered

on the list on the date on which the indication is added to Part A of Annex 20-A of Chapter

Twenty of that Agreement.

For greater certainty

(4) For greater certainty, the Registrar is not required to enter those translations on the list.

Geographical indication

(5) The indication, to the extent that it remains on the list, is deemed to be a geographical

indication as defined in section 2 of the Act.

Acquired rights

(6) For the purpose of subsection 11.2(3) of the Act, the reference to “the day on which a

statement by the Minister is published under subsection 11.12(2) or (2.1)” is to be read,

with respect to the indication, as a reference to “the date on which the indication is added

to 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”.

— 2017, c. 6, s. 132, as amended by 2014, c. 20, s. 361(E)

Korean indications

132 (1) Despite subsection 11.12(2) and section 11.13 of the Trademarks Act, the

Registrar, as defined in section 2 of that Act, must, as soon as practicable after this

subsection comes into force, enter all of the following indications on the list of

geographical indications kept under subsection 11.12(1) of that Act:

(a) GoryeoHongsam;

(b) GoryeoBaeksam;

(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.

Deemed entry on list

(2) The indications and all translations of those indications are deemed to have been

entered on the list on the day on which this section comes into force.

For greater certainty

(3) For greater certainty, the Registrar is not required to enter those translations on the list.

Geographical indications

(4) Each of those indications, to the extent that it remains on the list, is deemed to be a

geographical indication as defined in section 2 of that Act.

Acquired rights — Canada–Korea

(5) For the purpose of subsection 11.2(3) of that Act, the reference to “the day on which a

statement by the Minister is published under subsection 11.12(2) or (2.1)” is to be read,

with respect to the indication listed in section 11.23, as a reference to “January 1, 2015”.

AMENDMENTS NOT IN FORCE

— 2018, c. 27, s. 215

215 Section 9 of the Act is amended by adding the following after subsection (2):

For greater certainty

(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.

Notice of non-application

(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.

— 2018, c. 27, s. 216

216 The Act is amended by adding the following after section 11:

Exception

11.01 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.

— 2018, c. 27, s. 217

217 (1) Section 11.13 of the Act is amended by adding the following after subsection

(6.1):

Withdrawal of objection

(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.

(2) Section 11.13 of the Act is amended by adding the following after subsection (8):

Costs

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

under this section.

Order of Federal Court

(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.

— 2018, c. 27, s. 219

219 The Act is amended by adding the following after section 36:

Withdrawal of opposition

36.1 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.

— 2018, c. 27, s. 221

221 The Act is amended by adding the following after section 38:

Costs

38.1 (1) Subject to the regulations, the Registrar may, by order, award costs in a

proceeding under section 38.

Order of Federal Court

(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.

— 2018, c. 27, s. 222

222 Section 45 of the Act is amended by adding the following after subsection (4):

Costs

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

under this section.

Order of Federal Court

(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.

— 2018, c. 27, s. 223

223 The Act is amended by adding the following after section 45:

Confidentiality Orders Request to keep evidence confidential

45.1 (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.

Restriction

(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).

Registrar not satisfied

(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.

Confidentiality order

(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.

Consequences of order

(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;

(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.

Order of Federal Court

(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.

— 2018, c. 27, s. 225

225 Section 53.2 of the Act is amended by adding the following after subsection (1):

Exception

(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.

— 2018, c. 27, s. 226

226 Subsection 56(5) of the Act is replaced by the following:

Additional evidence

(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.

— 2018, c. 27, s. 227

227 Section 65 of the Act is amended by striking out “and” at the end of paragraph

(m) and by replacing paragraph (n) with the following:

(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.

— 2018, c. 27, s. 228

228 The Act is amended by adding the following after section 65.2:

Case management

65.3 (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.

Time or manner

(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.

— 2018, c. 27, ss. 239(1), (4)

2015, c. 36

239 (1) In this section, other Act means the Economic Action Plan 2015 Act, No. 1.

(4) On the first day on which both subsection 70(7) of the other Act has produced its

effects and section 215 of this Act is in force, subsection 70(1) of the Trade-marks

Act is amended by, if necessary, striking out “and” at the end of paragraph (b) and

adding “and” at the end of paragraph (c) and by adding the following after

paragraph (c):

(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.

— 2018, c. 27, s. 255

255 Section 28 of the Trade-marks Act is repealed.

— 2018, c. 27, s. 256

256 (1) Paragraph 29(1)(c) of the Act is repealed.

(2) Subsection 29(2) of the Act is replaced by the following:

Certified copies

(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.

— 2018, c. 27, s. 257

257 (1) Paragraph 51.13(1)(a) of the Act is replaced by the following:

(a) it is between a trade-mark agent and their client;

(2) Subsections 51.13(4) and (5) of the Act are replaced by the following:

Trade-mark agents — country other than Canada

(4) A communication between an individual who is authorized to act as the equivalent of a

trade-mark 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 trade-mark agent and their client is deemed to

be a communication that meets the conditions set out in paragraphs (1)(a) to (c).

Individual acting on behalf of trade-mark agent or client

(5) For the purposes of this section, a trade-mark agent or an individual who is authorized

to act as the equivalent of a trade-mark 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.

(3) Section 51.13 of the Act is amended by adding the following after subsection (6):

Definition of trade-mark agent

(7) In this section, trade-mark agent has the same meaning as in section 2 of the College

of Patent Agents and Trade-mark Agents Act.

— 2018, c. 27, s. 258(1), as amended by 2018, c. 27, s. 261(4)

258 (1) Paragraph 65(f) of the Act is repealed.

— 2018, c. 27, s. 263(1), par. (2)(b)

2015, c. 36

263 (1) In this section, other Act means the Economic Action Plan 2015 Act, No. 1.

(2) If subsection 70(7) of the other Act produces its effects before section 255 of this

Act comes into force, then

(b) on the day on which that section 255 comes into force, paragraph 70(1)(b) of

the Trade-marks Act is replaced by the following:

(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;

Date modified:

2019-07-26

Canada

CA223

Trademarks Act (R.S.C., 1985, c. T-13)