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

Act current to 2017-10-13 and last amended on 2017-09-21. Previous Versions

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

  • Marginal note: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.

  • Marginal note: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.
Marginal note:Inspection

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

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

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

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

  • Marginal note: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.

  • Marginal note: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.

  • Marginal note: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.

  • Marginal note: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

Marginal note:No liability

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

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

  • (b) the failure to detain goods; or

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

  • 2014, c. 32, s. 43.

Powers of Court Relating to Detained Goods

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

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

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

  • Marginal note: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).

  • Marginal note:Customs Act

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

  • Marginal note: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.

  • Marginal note: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.
Marginal note:Damages against trade-mark owner

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

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

Trade-mark Agents

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

    • (a) it is between an individual whose name is included on the list of trade-mark agents and that individual’s client;

    • (b) it is intended to be confidential; and

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

  • Marginal note:Waiver

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

  • Marginal note: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).

  • Marginal note:Trade-mark agents — country other than Canada

    (4) A communication between an individual who is authorized to act as 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 an individual whose name is included on the list of trade-mark agents and that individual’s client is deemed to be a communication that meets the conditions set out in paragraphs (1)(a) to (c).

  • Marginal note:Individual acting on behalf of trade-mark agent or client

    (5) For the purposes of this section, an individual whose name is included on the list of trade-mark agents or an individual who is authorized to act as 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.

  • Marginal note: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.
 
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