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

Act current to 2016-01-25 and last amended on 2015-01-01. Previous Versions

Marginal note:When deemed to be adopted

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

  • R.S., c. T-10, s. 3.
Marginal note:When deemed to be used
  •  (1) A trade-mark 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.

  • Marginal note:Idem

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

  • Marginal note:Use by export

    (3) A trade-mark 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. 32, ss. 53, 54(F).
Marginal note:When deemed to be made known

 A trade-mark is deemed to be made known in Canada by a person only if it is used by that person in a country of the Union, other than Canada, in association with 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. 32, s. 53.
Marginal note:When mark or name confusing
  •  (1) For the purposes of this Act, a trade-mark or trade-name is confusing with another trade-mark or trade-name if the use of the first mentioned trade-mark or trade-name would cause confusion with the last mentioned trade-mark or trade-name in the manner and circumstances described in this section.

  • Marginal note:Idem

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

  • Marginal note:Idem

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

  • Marginal note:Idem

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

  • Marginal note:What to be considered

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

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

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

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

    • (d) the nature of the trade; and

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

  • R.S., 1985, c. T-13, s. 6;
  • 2014, c. 32, s. 53.

Unfair Competition and Prohibited Marks

Marginal note:Prohibitions

 No person shall

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

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

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

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

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

    • (ii) the geographical origin, or

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

    of the goods or services.

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

  • R.S., 1985, c. T-13, s. 7;
  • 2014, c. 32, ss. 10, 53, 56(F).
Marginal note:Warranty of lawful use

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

  • R.S., 1985, c. T-13, s. 8;
  • 2014, c. 32, ss. 53, 54(F).
Marginal note:Prohibited marks
  •  (1) No person shall adopt in connection with a business, as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for,

    • (a) the Royal Arms, Crest or Standard;

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

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

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

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

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

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

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

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

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

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

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

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

    • (i.3) any armorial bearing, flag or other emblem, or 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 6ter of the Convention or pursuant to the obligations under the Agreement on Trade-related Aspects of Intellectual Property Rights set out in Annex 1C to the WTO Agreement stemming from that article, and the Registrar gives public notice of the communication;

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

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

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

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

    • (n) any badge, crest, emblem or mark

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

      • (ii) of any university, or

      • (iii) adopted and used by any public authority, in Canada as an official mark for 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.

  • Marginal note:Excepted uses

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

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

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

      • (i) an official sign or hallmark mentioned in paragraph (1)(i.1), except in respect of 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 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. 32, ss. 11, 53, 56(F).
 
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