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

Act current to 2016-09-18 and last amended on 2016-06-24. Previous Versions

Marginal note:Prohibited adoption of indication for spirits
  •  (1) No person shall adopt in connection with a business, as a trade-mark or otherwise,

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

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

  • Marginal note:Prohibited use

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

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

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

  • 1994, c. 47, s. 192;
  • 2014, c. 32, s. 56(F).
Marginal note:Exception for personal names
  •  (1) Sections 11.14 and 11.15 do not prevent a person from using, in the course of trade, that person’s name or the name of the person’s predecessor-in-title, except where the name is used in such a manner as to mislead the public.

  • Marginal note:Exception for comparative advertising

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

  • Marginal note:Exception not applicable to packaging

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

  • 1994, c. 47, s. 192;
  • 2014, c. 32, s. 56(F).
Marginal note:Continued use
  •  (1) Where a Canadian has used a protected geographical indication in a continuous manner in relation to any business or commercial activity in respect of goods or services

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

    • (b) for at least ten years before that date,

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

  • Definition of Canadian

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

    • (a) a Canadian citizen;

    • (b) a permanent resident within the meaning of 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 time at which the permanent resident first became eligible to apply for Canadian citizenship; and

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

  • 1994, c. 47, s. 192;
  • 2001, c. 27, s. 271;
  • 2014, c. 32, ss. 53(F), 56(F).
Marginal note:Exception for disuse
  •  (1) Notwithstanding sections 11.14 and 11.15 and paragraphs 12(1)(g) and (h), nothing in any of those provisions prevents the adoption, use or registration as a trade-mark or otherwise, in connection with a business, of a protected geographical indication identifying a wine or spirit if the indication has ceased to be protected by the laws applicable to the WTO Member for which the indication is protected, or has fallen into disuse in that Member.

  • Marginal note:Exceptions for customary names

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

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

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

  • Marginal note:Exception for generic names for wines

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

  • Marginal note:Exception for generic names for spirits

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

    • (a) [Repealed, SOR/2004-85]

    • (b) Marc;

    • (c) [Repealed, SOR/2004-85]

    • (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.

  • Marginal note:Governor in Council amendment

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

  • 1994, c. 47, s. 192;
  • SOR/2004-85;
  • 2014, c. 32, s. 56(F).
Marginal note:Exception for failure to take proceedings
  •  (1) Sections 11.14 and 11.15 do not apply to the adoption or use of a trade-mark by a person if no proceedings are taken to enforce those sections in respect of that person’s use or adoption of the trade-mark within five years after use of the trade-mark by that person or that person’s predecessor-in-title has become generally known in Canada or the trade-mark has been registered by that person in Canada, unless it is established that that person or that person’s predecessor-in-title first used or adopted the trade-mark with knowledge that such use or adoption was contrary to section 11.14 or 11.15, as the case may be.

  • Marginal note:Idem

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

  • 1994, c. 47, s. 192;
  • 2014, c. 32, s. 14(F).
Marginal note:Transitional

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

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

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

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

  • 1994, c. 47, s. 192;
  • 2014, c. 32, s. 56(F).
 
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