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

Validity and Effect of Registration

Marginal note:Effect of registration in relation to previous use, etc.
  •  (1) No application for registration of a trade-mark that has been advertised in accordance with section 37 shall be refused and no registration of a trade-mark shall be expunged or amended or held invalid on the ground of any previous use or making known of a confusing trade-mark or trade-name by a person other than the applicant for that registration or his predecessor in title, except at the instance of that other person or his successor in title, and the burden lies on that other person or his successor to establish that he had not abandoned the confusing trade-mark or trade-name at the date of advertisement of the applicant’s application.

  • Marginal note:When registration incontestable

    (2) In proceedings commenced after the expiration of five years from the date of registration of a trade-mark or from July 1, 1954, whichever is the later, no registration shall be expunged or amended or held invalid on the ground of the previous use or making known referred to in subsection (1), unless it is established that the person who adopted the registered trade-mark in Canada did so with knowledge of that previous use or making known.

  • R.S., 1985, c. T-13, s. 17;
  • 2014, c. 32, s. 56(F).
Marginal note:When registration invalid
  •  (1) The registration of a trade-mark is invalid if

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

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

    • (c) the trade-mark has been abandoned; or

    • (d) subject to section 17, the applicant for registration was not the person entitled to secure the registration.

  • Marginal note:Exception

    (2) No registration of a trade-mark that had been so used in Canada by the registrant or his predecessor in title as to have become distinctive at the date of registration shall be held invalid merely on the ground that evidence of the distinctiveness was not submitted to the competent authority or tribunal before the grant of the registration.

  • R.S., 1985, c. T-13, s. 18;
  • 2014, c. 32, s. 19.
Marginal note:Rights conferred by registration

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

  • R.S., 1985, c. T-13, s. 19;
  • 1993, c. 15, s. 60;
  • 2014, c. 32, s. 53.
Marginal note:Infringement
  •  (1) The right of the owner of a registered trade-mark 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 trade-mark or trade-name;

    • (b) manufactures, causes to be manufactured, possesses, imports, exports or attempts to export any goods in association with a confusing trade-mark or trade-name, for the purpose of their sale or distribution;

    • (c) sells, offers for sale or distributes any label or packaging, in any form, bearing a trade-mark 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 trade-mark, 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 trade-mark 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 trade-mark 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 trade-mark, 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 trade-mark or trade-name.

  • Marginal note:Exception  — bona fide use

    (1.1) The registration of a trade-mark 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 trade-mark,

    • (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 trade-mark, 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.

  • Marginal note:Exception  — utilitarian feature

    (1.2) The registration of a trade-mark does not prevent a person from using any utilitarian feature embodied in the trade-mark.

  • Marginal note:Exception

    (2) The registration of a trade-mark 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. 32, ss. 22, 56(F);
  • 2017, c. 6, s. 69.
Marginal note:Concurrent use of confusing marks
  •  (1) Where, in any proceedings respecting a registered trade-mark the registration of which is entitled to the protection of subsection 17(2), it is made to appear to the Federal Court that one of the parties to the proceedings, other than the registered owner of the trade-mark, had in good faith used a confusing trade-mark or trade-name in Canada before the date of filing of the application for that registration, and the Court considers that it is not contrary to the public interest that the continued use of the confusing trade-mark or trade-name should be permitted in a defined territorial area concurrently with the use of the registered trade-mark, the Court may, subject to such terms as it deems just, order that the other party may continue to use the confusing trade-mark or trade-name within that area with an adequate specified distinction from the registered trade-mark.

  • Marginal note:Registration of order

    (2) The rights conferred by an order made under subsection (1) take effect only if, within three months from its date, the other party makes application to the Registrar to enter it on the register in connection with the registration of the registered trade-mark.

  • R.S., c. T-10, s. 21;
  • R.S., c. 10(2nd Supp.), s. 64.
Marginal note:Depreciation of goodwill
  •  (1) No person shall use a trade-mark registered by another person in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto.

  • Marginal note:Action in respect thereof

    (2) In any action in respect of a use of a trade-mark contrary to subsection (1), the court may decline to order the recovery of damages or profits and may permit the defendant to continue to sell goods marked with the trade-mark that were in his possession or under his control at the time notice was given to him that the owner of the registered trade-mark complained of the use of the trade-mark.

  • R.S., 1985, c. T-13, s. 22;
  • 2014, c. 32, s. 53.

Certification Marks

Marginal note:Registration of certification marks
  •  (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.

  • Marginal note:Licence

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

  • Marginal note: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 the mark is registered but to which the licence does not extend.

  • Marginal note:Action by unincorporated body

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

  • R.S., 1985, c. T-13, s. 23;
  • 2014, c. 32, s. 53.
 
Date modified: