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

Act current to 2017-11-06 and last amended on 2017-09-21. Previous Versions

AMENDMENTS NOT IN FORCE

  • — 2014, c. 20, s. 317

    • 317 The long title of the English version of the Trade-marks Act is replaced by the following:

      An Act relating to trademarks and unfair competition

  • — 2014, c. 20, s. 318

    • 318 Section 1 of the English version of the Act is replaced by the following:

      • Short title

        1 This Act may be cited as the Trademarks Act.

  • — 2014, c. 20, ss. 319(1), (2)

      • 319 (1) The definition distinguishing guise in section 2 of the Act is repealed.

      • (2) The definitions proposed trade-mark and representative for service in section 2 of the Act are repealed.

  • — 2014, c. 20, s. 320

    • 320 The Act is amended by adding the following after section 2:

      • 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. 321

      • 321 (1) Subsections 6(2) to (4) of the Act are replaced by the following:

        • 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.

      • (2) Paragraph 6(5)(e) of the Act is replaced by the following:

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

  • — 2014, c. 20, s. 322

    • 322 The heading before section 7 of the Act is replaced by the following:

      Unfair Competition and Prohibited Signs

  • — 2014, c. 20, s. 323

      • 323 (1) Paragraph 9(1)(d) of the French version of the Act is replaced by the following:

        • d) un mot ou symbole susceptible de porter à croire que les produits ou services en liaison avec lesquels il est employé ont reçu l’approbation royale, vice-royale ou gouvernementale, ou que leur production, leur vente ou leur exécution a lieu sous le patronage ou sur l’autorité royale, vice-royale ou gouvernementale;

      • 1994, c. 47, s. 191(2)

        (2) Paragraph 9(1)(i.3) of the Act is replaced by the following:

        • (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;

      • 1993, c. 15, s. 58(4)

        (3) Paragraph 9(2)(b)(ii) is replaced by the following:

        • (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.

  • — 2014, c. 20, s. 324

    • 324 Section 10 of the Act is replaced by the following:

      • 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.

  • — 2014, c. 20, s. 325

    • 325 Section 11 of the Act is replaced by the following:

      • 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.

  • — 2014, c. 20, s. 326

      • 326 (1) The portion of subsection 12(1) of the Act before paragraph (a) is replaced by the following:

        • When trademark registrable
          • 12 (1) Subject to subsection (2), a trademark is registrable if it is not

      • 1993, c. 15, s. 59(F)

        (2) Paragraph 12(1)(b) of the French version of the Act is replaced by the following:

        • b) qu’elle soit sous forme graphique, écrite ou sonore, elle donne une description claire ou donne une description fausse et trompeuse, en langue française ou anglaise, de la nature ou de la qualité des produits ou services en liaison avec lesquels elle est employée, ou en liaison avec lesquels on projette de l’employer, ou des conditions de leur production, ou des personnes qui les produisent, ou de leur lieu d’origine;

      • (3) Paragraph 12(1)(e) of the Act is replaced by the following:

        • (e) a sign or combination of signs whose adoption is prohibited by section 9 or 10;

      • (4) Subsection 12(2) of the Act is replaced by the following:

        • 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, having regard to all the circumstances of the case including the length of time during which it has been used.

  • — 2014, c. 20, s. 327

    • 327 Section 13 of the Act is repealed.

  • — 2014, c. 20, s. 328

    • 1994, c. 47, s. 194

      328 Sections 14 and 15 of the Act are replaced by the following:

      • Registration of confusing trademarks

        15 Despite section 12, confusing trademarks are registrable if the applicant is the owner of all of the confusing trademarks.

  • — 2014, c. 20, s. 329

    • 329 The heading before section 16 of the French version of the Act is replaced by the following:

      Personnes ayant droit à l’enregistrement d’une marque de commerce

  • — 2014, c. 20, s. 330

      • 330 (1) The portion of subsection 16(1) of the Act before paragraph (a) is replaced by the following:

        • 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

      • 1994, c. 47, s. 195

        (2) Subsections 16(2) to (5) of the Act are replaced by the following:

        • 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).

  • — 2014, c. 20, s. 331

    • 331 The Act is amended by adding the following after section 18:

      • 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. 333

    • 333 Subsection 21(1) of the English version of the Act is replaced by the following:

      • 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.

  • — 2014, c. 20, s. 334

      • 334 (1) Subsections 23(1) to (3) of the Act are replaced by the following:

        • 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.

      • (2) Subsection 23(4) of the English version of the Act is replaced by the following:

        • 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.

  • — 2014, c. 20, s. 335

    • 335 Section 24 of the French version of the Act is replaced by the following:

      • Enregistrement d’une marque de commerce créant de la confusion avec la marque de certification

        24 Avec le consentement du propriétaire d’une marque de certification, une marque de commerce créant de la confusion avec la marque de certification peut, si elle présente une différence caractéristique, être déposée par toute autre personne en vue d’indiquer que les produits en liaison avec lesquels elle est employée ont été fabriqués, vendus, donnés à bail ou loués, et que les services en liaison avec lesquels elle est employée ont été exécutés par elle comme étant une des personnes ayant droit d’employer la marque de certification, mais l’enregistrement de cette marque de commerce est radié par le registraire sur le retrait du consentement du propriétaire de la marque de certification, ou sur annulation de l’enregistrement de la marque de certification.

  • — 2014, c. 20, s. 336

    • 336 Section 25 of the Act is replaced by the following:

      • 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.

  • — 2014, c. 20, s. 337

    • 337 Subsection 26(2) of the Act is amended by striking out “and” at the end of paragraph (e) and by adding the following after that paragraph:

      • (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

  • — 2014, c. 20, s. 338

    • 1993, c. 15, s. 62

      338 Section 28 of the Act is replaced by the following:

      • 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.

  • — 2014, c. 20, s. 339

    • 1993, c. 15, s. 64; 1994, c. 47, s. 198

      339 Sections 30 to 33 of the Act are replaced by the following:

      • 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;

          • (c) a representation or description, or both, that permits the trademark to be 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.

      • 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

        • (c) comply with any prescribed requirements.

      • 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 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;

          • (c) the trademark consists exclusively of a single colour or of a combination of 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.

      • 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;

          • (c) information allowing the Registrar to contact the applicant;

          • (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.

  • — 2014, c. 20, s. 340

    • 1994, c. 47, s. 199
      • 340 (1) Subsection 34(1) of the Act is replaced by the following:

        • 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;

            • (c) the applicant, at the filing date of the application in Canada, is a citizen or 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.

      • (2) Subsection 34(2) is replaced by the following:

        • Evidence requests

          (2) The Registrar may request the evidence before the day on which the trademark is registered under section 40.

      • (3) Section 34 of the Act is amended by adding the following after subsection (3):

        • 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.

  • — 2014, c. 20, s. 341

    • 341 Section 36 of the Act is replaced by the following:

      • 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.

  • — 2014, c. 20, s. 342

      • 342 (1) Paragraph 37(1)(a) of the Act is replaced by the following:

        • (a) the application does not conform to the requirements of subsection 30(2);

      • (2) Subsection 37(1) of the Act is amended by striking out “or” at the end of paragraph (b), by adding “or” at the end of paragraph (c) and by replacing the portion after paragraph (c) with the following:

        • (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.

      • (3) Section 37 of the Act is amended by adding the following after subsection (3):

        • 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.

  • — 2014, c. 20, s. 343

      • 343 (1) Paragraph 38(2)(a) of the Act is replaced by the following:

        • (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);

      • (2) Subsection 38(2) of the Act is amended by striking out “or” at the end of paragraph (c) and by adding the following after paragraph (d):

        • (e) that, at the filing date of the application in Canada, 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, the applicant was not entitled to use the trademark in Canada in association with those goods or services.

      • 1993, c. 15, s. 66(2)

        (3) Subsections 38(6) to (8) of the Act are replaced by the following:

        • 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.

        • 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.

  • — 2014, c. 20, s. 344

    • 1993, c. 15, s. 67

      344 Section 39 of the Act is replaced by the following:

      • 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; and

          • (b) within the scope of the original application as advertised, if the divisional application is filed on or after the day on which the 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.

  • — 2014, c. 20, s. 345

    • 1993, c. 15, s. 68, c. 44, ss. 231(2) and (3); 1999, c. 31, s. 210(F)

      345 Section 40 of the Act is replaced by the following:

      • 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.

  • — 2014, c. 20, s. 346

      • 346 (1) The portion of subsection 41(1) of the Act before paragraph (b) is replaced by the following:

        • 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;

      • (2) Subsection 41(1) of the Act is amended by striking out “or” at the end of paragraph (d), by adding “or” at the end of paragraph (e) and by adding the following after paragraph (e):

        • (f) subject to the regulations, merge registrations of the trademark that stem, under section 39, from the same original application.

      • (3) Section 41 of the Act is amended by adding the following after subsection (2):

        • 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.

  • — 2014, c. 20, s. 347

    • 347 Section 42 of the Act is repealed.

  • — 2014, c. 20, s. 348

    • 348 The Act is amended by adding the following after section 44:

      • 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. 349

    • 1994, c. 47, s. 200(1)

      349 Subsections 45(1) and (2) of the Act are replaced by the following:

      • 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).

  • — 2014, c. 20, s. 350

    • 1992, c. 1, s. 135(1)

      350 Section 46 of the Act is replaced by the following:

      • 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.

  • — 2014, c. 20, s. 351

    • 351 The Act is amended by adding the following after section 47:

      • 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. 352

    • 352 Subsection 48(3) of the Act is replaced by the following:

      • 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.

  • — 2014, c. 20, s. 353

    • 353 Section 49 of the Act and the heading before it are replaced by the following:

      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.

  • — 2014, c. 20, s. 354

    • 354 Subsection 57(1) of the Act is replaced by the following:

      • 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.

  • — 2014, c. 20, s. 355

    • 355 Section 61 of the Act is renumbered as subsection 61(1) and is amended by adding the following:

      • 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.

  • — 2014, c. 20, s. 356

    • 356 Section 64 of the Act is replaced by the following:

      • 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.

  • — 2014, c. 20, s. 357

    • 357 Section 65 of the Act is replaced by the following:

      • 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;

        • (c) respecting the manner in which the goods or services referred to in paragraph 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 and the amount of those fees;

        • (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 correspondence 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.

  • — 2014, c. 20, s. 358

    • 358 The Act is amended by adding the following after section 65:

      • 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. 358.1, as amended by 2014, c. 20, par. 367(88)(b)

    • 358.1 Section 69 of the Act is replaced by the following:

      • Disclosure of documents

        69 The disclosure of documents — on which entries in the register to be kept under paragraph 26(1)(b), as it read immediately before the day on which subsection 27(1) of the Combating Counterfeit Products Act comes into force, are based — is subject to subsection 50(6), as it read on June 8, 1993.

  • — 2014, c. 20, s. 358.2, as amended by 2014, c. 20, par. 367(88)(b)

    • 358.2 Section 69 of the Act is repealed.

  • — 2014, c. 20, s. 359, as amended by 2014, c. 20, par. 367(88)(c)

    • 359 The Act is amended by adding the following after section 69:

      • 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.

      • 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 and 40; and

          • (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.

        • Regulations

          (2) For greater certainty, a regulation made under section 65, as enacted by section 357 of the Economic Action Plan 2014 Act, No. 1, 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.

      • 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.

      • 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.

      • 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, s. 360

    • Replacement of “wares”

      360 The Act is amended by replacing “wares”, wherever it occurs, with “goods”.

  • — 2014, c. 20, s. 361

    • Replacement of “trade-mark”

      361 The English version of the Act is amended by replacing “trade-mark”, “trade-marks”, “Trade-mark” and “Trade-marks” with “trademark”, “trademarks”, “Trademark” and “Trademarks”, respectively.

  • — 2014, c. 20, s. 362

    • Replacement of “trade-name”

      362 The English version of the Act is amended by replacing “trade-name”, wherever it occurs, with “trade name”.

  • — 2014, c. 20, s. 366(1)

    • Replacement of “trade-mark” in other Acts
      • 366 (1) Unless the context requires otherwise, “trade-mark”, “trade-marks”, “Trade-mark”, “Trade-marks”, “trade mark” and “trade marks” are replaced by “trademark”, “trademarks”, “Trademark” or “Trademarks”, as the case may be, in the English version of any Act of Parliament, other than this Act and the Trademarks Act.

  • — 2014, c. 20, ss. 367(1) to (4), (8), (9), (12) to (29), (33) to (63), (66) to (86), (99), (103)

    • Bill C-8
      • 367 (1) Subsections (2) to (103) apply if Bill C-8, introduced in the 2nd session of the 41st Parliament and entitled the Combating Counterfeit Products Act (in this section referred to as the “other Act”), receives royal assent.

      • (2) If subsection 319(1) of this Act comes into force before subsection 7(2) of the other Act, then that subsection 7(2) is repealed.

      • (3) If subsection 7(2) of the other Act comes into force before subsection 319(1) of this Act, then that subsection 319(1) is repealed.

      • (4) If subsection 319(1) of this Act comes into force on the same day as subsection 7(2) of the other Act, then that subsection 319(1) is deemed to have come into force before that subsection 7(2) and subsection (2) applies as a consequence.

      • (8) If subsection 319(4) of this Act comes into force before subsection 7(3) of the other Act, then that subsection 7(3) is replaced by the following:

        • (3) The definition distinctive in section 2 of the Act is replaced by the following:

          distinctive

          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)

      • (9) If subsection 319(4) of this Act comes into force on the same day as subsection 7(3) of the other Act, then that subsection 319(4) is deemed to have come into force before that subsection 7(3) and subsection (8) applies as a consequence.

      • (12) If subsection 319(5) of this Act comes into force before subsection 7(5) of the other Act, then that subsection 7(5) is repealed.

      • (13) If subsection 7(5) of the other Act comes into force before subsection 319(5) of this Act, then

        • (a) on the day on which that subsection 319(5) comes into force, the definition proposed certification mark in section 2 of the Trademarks Act is repealed; and

        • (b) that subsection 319(5) is replaced by the following:

          • (5) Section 2 of the Act is amended by adding the following in alphabetical order:

            Nice Classification

            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)

      • (14) If subsection 319(5) of this Act comes into force on the same day as subsection 7(5) of the other Act, then that subsection 319(5) is deemed to have come into force before that subsection 7(5) and subsection (12) applies as a consequence.

      • (15) If subsection 326(4) of this Act comes into force before subsection 15(4) of the other Act, then that subsection 15(4) is repealed.

      • (16) If subsection 15(4) of the other Act comes into force before subsection 326(4) of this Act, then that subsection 326(4) is repealed.

      • (17) If subsection 326(4) of this Act comes into force on the same day as subsection 15(4) of the other Act, then that subsection 326(4) is deemed to have come into force before that subsection 15(4), and subsection (15) applies as a consequence.

      • (18) If section 327 of this Act comes into force before section 16 of the other Act, then that section 16 is repealed.

      • (19) If section 16 of the other Act comes into force before section 327 of this Act, then that section 327 is repealed.

      • (20) If section 327 of this Act comes into force on the same day as section 16 of the other Act, then that section 327 is deemed to have come into force before that section 16 and subsection (18) applies as a consequence.

      • (21) If section 328 of this Act comes into force before section 17 of the other Act, then that section 17 is repealed.

      • (22) If section 328 of this Act comes into force on the same day as section 17 of the other Act, then that section 17 is deemed to have come into force before that section 328.

      • (23) If subsection 330(2) of this Act comes into force before section 18 of the other Act, then that section 18 is repealed.

      • (24) If subsection 330(2) of this Act comes into force on the same day as section 18 of the other Act, then that section 18 is deemed to have come into force before that subsection 330(2).

      • (25) If subsection 330(2) of this Act comes into force before paragraph 55(a) of the other Act, then that paragraph 55(a) is repealed.

      • (26) If subsection 330(2) of this Act comes into force on the same day as paragraph 55(a) of the other Act, then that paragraph 55(a) is deemed to have come into force before that subsection 330(2).

      • (27) If section 331 of this Act comes into force before section 20 of the other Act, then that section 20 is repealed.

      • (28) If section 20 of the other Act comes into force before section 331 of this Act, then that section 331 is replaced by the following:

        • 331 The English version of section 18.1 of the Act is replaced by the following:

          • 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.

      • (29) If section 331 of this Act comes into force on the same day as section 20 of the other Act, then that section 331 is deemed to have come into force before that section 20 and subsection (27) applies as a consequence.

      • (33) If section 333 of this Act comes into force before paragraph 55(b) of the other Act, then that paragraph 55(b) is repealed.

      • (34) If paragraph 55(b) of the other Act comes into force before section 333 of this Act, then that section 333 is repealed.

      • (35) If section 333 of this Act comes into force on the same day as paragraph 55(b) of the other Act, then that paragraph 55(b) is deemed to have come into force before that section 333 and subsection (34) applies as a consequence.

      • (36) If section 338 of this Act comes into force before section 28 of the other Act, then that section 28 is replaced by the following:

        • 28 Section 29 of the Act is replaced by the following:

          • 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;

              • (c) the list of trademark agents;

              • (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.

          • 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;

            • (c) a document relating to an expunged registration of a trademark, at any time 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.

      • (37) If section 338 of this Act comes into force on the same day as section 28 of the other Act, then that section 28 is deemed to have come into force before that section 338.

      • (38) If section 339 of this Act comes into force before subsection 29(1) of the other Act, then that subsection 29(1) is repealed.

      • (39) If section 339 of this Act comes into force on the same day as subsection 29(1) of the other Act, then that subsection 29(1) is deemed to have come into force before that section 339.

      • (40) If section 339 of this Act comes into force before subsection 29(2) of the other Act, then that subsection 29(2) is repealed.

      • (41) If section 339 of this Act comes into force on the same day as subsection 29(2) of the other Act, then that subsection 29(2) is deemed to have come into force before that section 339.

      • (42) If section 339 of this Act comes into force before subsection 29(3) of the other Act, then that subsection 29(3) is repealed.

      • (43) If section 339 of this Act comes into force on the same day as subsection 29(3) of the other Act, then that subsection 29(3) is deemed to have come into force before that section 339.

      • (44) If section 339 of this Act comes into force before subsection 29(4) of the other Act, then that subsection 29(4) is repealed.

      • (45) If section 339 of this Act comes into force on the same day as subsection 29(4) of the other Act, then that subsection 29(4) is deemed to have come into force before that section 339.

      • (46) If section 339 of this Act comes into force before section 30 of the other Act, then that section 30 is repealed.

      • (47) If section 339 of this Act comes into force on the same day as section 30 of the other Act, then that section 339 is deemed to have come into force before that section 30, and subsection (46) applies as a consequence.

      • (48) If section 339 of this Act comes into force before section 31 of the other Act, then that section 31 is repealed.

      • (49) If section 339 of this Act comes into force on the same day as section 31 of the other Act, then that section 31 is deemed to have come into force before that section 339.

      • (50) If subsection 340(3) of this Act comes into force before subsection 33(2) of the other Act, then that subsection 33(2) is repealed.

      • (51) If subsection 33(2) of the other Act comes into force before subsection 340(3) of this Act, then that subsection 340(3) is replaced by the following:

        • (3) Subsection 34(5) of the French version of the Act is replaced by the following:

          • Prolongation

            (5) Le requérant ne peut demander la prolongation, au titre de l’article 47, de la période de six mois prévue à l’alinéa (1)a) qu’après l’expiration de celle-ci. Le registraire ne peut la prolonger que d’au plus sept jours.

      • (52) If subsection 340(3) of this Act comes into force on the same day as subsection 33(2) of the other Act, than that subsection 340(3) is deemed to have come into force before that subsection 33(2), and subsection (50) applies as a consequence.

      • (53) If subsection 342(2) of this Act comes into force before section 34 of the other Act, then that section 34 is repealed.

      • (54) If section 34 of the other Act comes into force before subsection 342(2) of this Act, then that subsection 342(2) is repealed.

      • (55) If subsection 342(2) of this Act comes into force on the same day as section 34 of the other Act, then that subsection 342(2) is deemed to have come into force before that section 34, and subsection (53) applies as a consequence.

      • (56) If subsection 343(3) of this Act comes into force before section 35 of the other Act, then that section 35 is repealed.

      • (57) If section 35 of the other Act comes into force before subsection 343(3) of this Act, then that subsection 343(3) is repealed.

      • (58) If subsection 343(3) of this Act comes into force on the same day as section 35 of the other Act, then that subsection 343(3) is deemed to have come into force before that section 35 and subsection (56) applies as a consequence.

      • (59) If section 344 of this Act comes into force before section 36 of the other Act, then that section 36 is repealed.

      • (60) If section 36 of the other Act comes into force before section 344 of this Act, then that section 344 is replaced by the following:

        • 344 Sections 39 and 39.1 of the Act are replaced by the following:

          • 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; and

              • (b) within the scope of the original application as advertised, if the divisional application is filed on or after the day on which the 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.

      • (61) If section 344 of this Act comes into force on the same day as section 36 of the other Act, then that section 344 is deemed to have come into force before that section 36 and subsection (59) applies as a consequence.

      • (62) If section 345 of this Act comes into force before subsection 37(1) of the other Act, then that subsection 37(1) is repealed.

      • (63) If section 345 of this Act comes into force on the same day as subsection 37(1) of the other Act, then that subsection 37(1) is deemed to have come into force before that section 345.

      • (66) If section 345 of this Act comes into force before subsection 37(3) of the other Act, then that subsection 37(3) is repealed.

      • (67) If section 345 of this Act comes into force on the same day as subsection 37(3) of the other Act, then that subsection 37(3) is deemed to have come into force before that section 345.

      • (68) If subsection 346(1) of this Act comes into force before subsection 38(1) of the other Act, then that subsection 38(1) is repealed.

      • (69) If subsection 346(1) of this Act comes into force on the same day as subsection 38(1) of the other Act, then that subsection 38(1) is deemed to have come into force before that subsection 346(1).

      • (70) If subsection 346(2) of this Act comes into force before subsection 38(2) of the other Act, then that subsection 38(2) is repealed.

      • (71) If subsection 38(2) of the other Act comes into force before subsection 346(2) of this Act, then that subsection 346(2) is replaced by the following:

        • (2) Paragraph 41(1)(f) of the Act is replaced by the following:

          • (f) subject to the regulations, merge registrations of the trademark that stem, under section 39, from the same original application.

      • (72) If subsection 346(2) of this Act comes into force on the same day as subsection 38(2) of the other Act, then that subsection 346(2) is deemed to have come into force before that subsection 38(2) and subsection (70) applies as a consequence.

      • (73) If subsection 346(3) of this Act comes into force before subsection 38(3) of the other Act, then that subsection 38(3) is repealed.

      • (74) If subsection 38(3) of the other Act comes into force before subsection 346(3) of this Act, then that subsection 346(3) is replaced by the following:

        • (3) Section 41 of the Act is amended by adding the following after subsection (3):

          • 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.

      • (75) If subsection 346(3) of this Act comes into force on the same day as subsection 38(3) of the other Act, then that subsection 346(3) is deemed to have come into force before that subsection 38(3) and subsection (73) applies as a consequence.

      • (76) If section 349 of this Act comes into force before section 39 of the other Act, then that section 39 is repealed.

      • (77) If section 349 of this Act comes into force on the same day as section 39 of the other Act, then that section 39 is deemed to have come into force before that section 349.

      • (78) If section 352 of this Act comes into force before section 40 of the other Act, then that section 40 is repealed.

      • (79) If section 40 of the other Act comes into force before section 352 of this Act, then that section 352 is replaced by the following:

        • 352 Subsections 48(3) and (4) of the Act are replaced by the following:

          • 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.

      • (80) If section 352 of this Act comes into force on the same day as section 40 of the other Act, then that section 352 is deemed to have come into force before that section 40 and subsection (78) applies as a consequence.

      • (81) If section 357 of this Act comes into force before subsection 50(1) of the other Act, then that subsection 50(1) is repealed.

      • (82) If section 357 of this Act comes into force on the same day as subsection 50(1) of the other Act, then that subsection 50(1) is deemed to have come into force before that section 357.

      • (83) If section 357 of this Act comes into force before subsection 50(2) of the other Act, then that subsection 50(2) is repealed.

      • (84) If section 357 of this Act comes into force on the same day as subsection 50(2) of the other Act, then that subsection 50(2) is deemed to have come into force before that section 357.

      • (85) If section 357 of this Act comes into force before subsection 50(3) of the other Act, then that subsection 50(3) is repealed.

      • (86) If section 357 of this Act comes into force on the same day as subsection 50(3) of the other Act, then that subsection 50(3) is deemed to have come into force before that section 357.

      • (99) On the first day on which both section 359 of this Act and section 28 of the other Act are in force, subsection 70(1) of the Trademarks Act is replaced by the following:

        • 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, 29 and 36, subsections 38(6) to (8) and sections 39 and 40; and

            • (b) the definition Nice Classification in section 2, subsections 6(2) to (4), sections 28 to 29.1 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.

      • (103) If section 317 of this Act comes into force before any of the following provisions of the other Act, then any of the following provisions of the other Act that are not in force are repealed:

        • (a) section 8;

        • (b) section 9;

        • (c) section 12;

        • (d) section 13;

        • (e) subsection 15(1);

        • (f) subsection 15(3);

        • (g) subsection 24(1);

        • (h) subsection 24(2);

        • (i) section 32;

        • (j) subsection 33(1);

        • (k) section 41;

        • (l) section 47;

        • (m) section 49.

  • — 2014, c. 32, ss. 7(2), (3)

      • (2) The definition distinguishing guise in section 2 of the Act is repealed.

      • (3) The definitions certification mark, distinctive, proposed trade-mark and trade-mark in section 2 of the Act are replaced by the following:

        certification mark

        certification mark means

        • (a) a sign or combination of signs that is 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

          • (i) the character or quality of the goods or services,

          • (ii) the working conditions under which the goods have been produced or the services performed,

          • (iii) the class of persons by whom the goods have been produced or the services performed, or

          • (iv) the area within which the goods have been produced or the services performed, or

        • (b) a proposed certification mark; (marque de certification)

        distinctive

        distinctive, in relation to a trade-mark, describes a trade-mark 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)

        proposed trade-mark

        proposed trade-mark means a sign or combination of signs that is 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; (marque de commerce projetée)

        trade-mark

        trade-mark means

        • (a) a sign or combination of signs that is used by a person for the purpose of distinguishing or so as to distinguish their goods or services from those of others,

        • (b) a proposed trade-mark, or

        • (c) a certification mark; (marque de commerce)

  • — 2014, c. 32, ss. 7(5)

      • (5) Section 2 of the Act is amended by adding the following in alphabetical order:

        proposed certification mark

        proposed certification mark means a sign or combination of signs that is 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 have been produced or the services performed,

        • (c) the class of persons by whom the goods have been produced or the services performed, or

        • (d) the area within which the goods have been produced or the services performed; (marque de certification projetée)

        sign

        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)

  • — 2014, c. 32, s. 8

    • 8 Paragraph 6(5)(e) of the Act is replaced by the following:

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

  • — 2014, c. 32, s. 9

    • 9 The heading before section 7 of the Act is replaced by the following:

      Unfair Competition and Prohibited Signs

  • — 2014, c. 32, s. 12

    • 12 Section 10 of the Act is replaced by the following:

      • 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 trade-mark 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.

  • — 2014, c. 32, s. 13

    • 13 Section 11 of the Act is replaced by the following:

      • Further prohibitions

        11 No person shall use in connection with a business, as a trade-mark or otherwise, any sign or combination of signs adopted contrary to section 9 or 10.

  • — 2014, c. 32, s. 15(1)

      • 15 (1) The portion of subsection 12(1) of the Act before paragraph (a) is replaced by the following:

        • When trademark registrable
          • 12 (1) Subject to subsection (2), a trade-mark is registrable if it is not

  • — 2014, c. 32, ss. 15(3), (4)

      • 15 (3) Paragraph 12(1)(e) of the Act is replaced by the following:

        • (e) a sign or combination of signs whose adoption is prohibited by section 9 or 10;

      • (4) Subsection 12(2) of the Act is replaced by the following:

        • Utilitarian function

          (2) A trade-mark 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 trade-mark 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, having regard to all the circumstances of the case including the length of time during which it has been used.

  • — 2014, c. 32, s. 16

    • 16 Section 13 of the Act is repealed.

  • — 2014, c. 32, s. 17

    • 17 Section 15 of the Act is replaced by the following:

      • Registration of confusing trade-marks

        15 Despite sections 12 and 14, confusing trade-marks are registrable if the applicant is the owner of all of the confusing trade-marks.

  • — 2014, c. 32, s. 18

    • 18 The portion of subsection 16(3) of the Act before paragraph (a) is replaced by the following:

      • Proposed certification marks or trade-marks

        (3) Any applicant who has filed an application in accordance with section 30 for registration of a proposed trade-mark or proposed certification mark that is registrable is entitled, subject to sections 38 and 40, to secure its registration in respect of the goods or services specified in the application, unless at the filing date of the application it was confusing with

  • — 2014, c. 32, s. 20

    • 20 The Act is amended by adding the following after section 18:

      • Not to limit art or industry

        18.1 The registration of a trade-mark may be expunged by the Federal Court on the application of any interested person if the Court decides that the registration is likely to unreasonably limit the development of any art or industry.

  • — 2014, c. 32, s. 23

    • 23 Subsection 22(2) of the Act is replaced by the following:

      • Action

        (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 bearing the trade-mark 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 trade-mark complained of the use of the trade-mark.

  • — 2014, c. 32, s. 24

      • 24 (1) Subsections 23(1) to (3) of the Act are replaced by the following:

        • 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.

      • (2) Subsection 23(4) of the English version of the Act is replaced by the following:

        • 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.

  • — 2014, c. 32, s. 27

      • 27 (1) Subsection 26(1) of the Act is replaced by the following:

        • Register
          • 26 (1) There shall be kept under the supervision of the Registrar a register of trade-marks and of transfers, disclaimers, amendments, judgments and orders relating to each registered trade-mark.

      • (2) The portion of subsection 26(2) of the Act before paragraph (a) is replaced by the following:

        • Information to be shown

          (2) The register shall show, with reference to each registered trade-mark, the following:

  • — 2014, c. 32, s. 28

    • 28 Sections 28 and 29 of the Act are replaced by the following:

      • List of trade-mark agents

        28 There shall be kept under the supervision of the Registrar a list of trade-mark agents, which shall include the names of all persons and firms entitled to represent applicants and others in the presentation and prosecution of applications for the registration of a trade-mark or in other business before the Office of the Registrar of Trade-marks.

      • 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 trade-mark, including those abandoned;

          • (c) the list of trade-mark agents;

          • (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 trade-mark, an application for the registration of a trade-mark, 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.

      • Destruction of records

        29.1 Despite subsection 29(1), the Registrar may destroy

        • (a) an application for the registration of a trade-mark 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 trade-mark 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;

        • (c) a document relating to an expunged registration of a trade-mark, at any time 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. 29

      • 29 (1) Paragraph 30(a) of the Act is replaced by the following:

        • (a) a statement in ordinary commercial terms of the specific goods or services in association with which the trade-mark has been or is proposed to be used;

      • (2) Paragraph 30(f) of the Act is replaced by the following:

        • (f) 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;

        • (f.1) in the case of a proposed certification mark, a statement that the applicant intends to license others to use the certification mark in Canada in association with goods or services that meet the defined standard;

      • (3) Paragraph 30(h) of the Act is replaced by the following:

        • (h) a representation or description, or both, that permits the trade-mark to be clearly defined and that complies with any prescribed requirements;

      • (4) Section 30 of the Act is amended by adding “and” at the end of paragraph (i) and by adding the following after that paragraph:

        • (j) any prescribed information or statement with respect to the trade-mark.

  • — 2014, c. 32, s. 30

    • 30 The Act is amended by adding the following after section 30:

      • Standard characters

        30.1 An applicant who seeks to register a trade-mark that consists only of letters, numerals, punctuation marks, diacritics or typographical symbols, or of any combination of them, without limiting the trade-mark to any particular font, size or colour shall

        • (a) file a representation under paragraph 30(h) 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 trade-mark to be registered in standard characters; and

        • (c) comply with any prescribed requirements.

  • — 2014, c. 32, s. 31

    • 31 Sections 31 to 32 of the Act are replaced by the following:

      • Further evidence — registration abroad

        31 An applicant whose trade-mark has been duly registered in their country of origin and who claims that the trade-mark is registrable under paragraph 14(1)(b) shall furnish any evidence that the Registrar may require establishing the circumstances on which they rely, including the length of time during which the trade-mark has been used in any country.

      • Further evidence in certain cases
        • 32 (1) An applicant shall furnish the Registrar with any evidence that the Registrar may require establishing that the trade-mark is distinctive at the filing date of the application for its registration if any of the following apply:

          • (a) the applicant claims that their trade-mark is registrable under subsection 12(3);

          • (b) the Registrar’s preliminary view is that the trade-mark is not inherently distinctive;

          • (c) the trade-mark consists exclusively of a single colour or of a combination of colours without delineated contours;

          • (d) the trade-mark consists exclusively or primarily of one or more of the following:

            • (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 trade-mark is shown to be distinctive.

  • — 2014, c. 32, s. 32

    • 32 Section 33 of the Act is replaced by the following:

      • Filing date
        • 33 (1) The filing date of an application for the registration of a trade-mark 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 trade-mark is sought;

          • (b) information allowing the identity of the applicant to be established;

          • (c) information allowing the Registrar to contact the applicant;

          • (d) a representation or description of the trade-mark;

          • (e) a list of the goods or services for which registration of the trade-mark 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.

  • — 2014, c. 32, s. 33

      • 33 (1) Subsection 34(1) of the Act is replaced by the following:

        • 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 trade-mark 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 trade-mark 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 trade-mark 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;

            • (c) the applicant, at the filing date of the application in Canada, is a citizen or 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.

      • (2) Section 34 of the Act is amended by adding the following after subsection (3):

        • 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.

  • — 2014, c. 32, s. 34

    • 34 Subsection 37(1) of the Act is amended by striking out “or” at the end of paragraph (b), by adding “or” at the end of paragraph (c) and by replacing the portion after paragraph (c) with the following:

      • (d) the trade-mark is not distinctive.

      If the Registrar is not so satisfied, the Registrar shall cause the application to be advertised in the prescribed manner.

  • — 2014, c. 32, s. 35

    • 35 Subsections 38(6) to (8) of the Act are replaced by the following:

      • 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.

      • 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.

  • — 2014, c. 32, s. 36

    • 36 The Act is amended by adding the following after section 39:

      • Divisional application
        • 39.1 (1) After having filed an application for the registration of a trade-mark, 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 trade-mark in association with any other goods or services that were

          • (a) within the scope of the original application on its filing date; and

          • (b) within the scope of the original application as advertised, if the divisional application is filed on or after the day on which the 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.

  • — 2014, c. 32, s. 37(1)

      • 37 (1) Subsection 40(1) of the Act is replaced by the following:

        • Registration of trade-marks
          • 40 (1) When an application for the registration of a trade-mark, other than a proposed trade-mark or proposed certification mark, is allowed, the Registrar shall register the trade-mark and issue a certificate of its registration.

  • — 2014, c. 32, s. 37(3)

      • 37 (3) Subsection 40(3) of the Act is replaced by the following:

        • Proposed certification mark

          (2.1) When an application for the registration of a proposed certification mark is allowed, the Registrar shall give notice to the applicant accordingly and shall register the certification mark and issue a certificate of registration on receipt of a declaration that the use of the certification mark in Canada, in association with the goods or services specified in the application, has been commenced by an entity that is licensed by or with the authority of the applicant to use the certification mark.

        • Abandonment of application

          (3) An application for registration referred to in subsection (2) or (2.1) is deemed to be abandoned if the Registrar has not received the declaration before the later of

          • (a) six months after the date of the Registrar’s notice, and

          • (b) three years after the filing date of the application in Canada.

  • — 2014, c. 32, s. 38

      • 38 (1) The portion of subsection 41(1) of the Act before paragraph (a) is replaced by the following:

        • Amendments to register
          • 41 (1) The Registrar may, on application by the registered owner of a trade-mark made in the prescribed manner and on payment of the prescribed fee, make any of the following amendments to the register:

      • (2) Subsection 41(1) of the Act is amended by striking out “or” at the end of paragraph (d), by adding “or” at the end of paragraph (e) and by adding the following after paragraph (e):

        • (f) subject to the regulations, merge registrations of the trade-mark that stem, under section 39.1, from the same original application.

      • (3) Section 41 of the Act is amended by adding the following after subsection (2):

        • 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 trade-mark in question that are, at the time that the entry is made, on file in the Registrar’s office.

  • — 2014, c. 32, s. 39

    • 39 Subsection 45(1) of the Act is replaced by the following:

      • Registrar may request evidence of user
        • 45 (1) The Registrar may at any time — and, at the written request made after three years from the date of the registration of a trade-mark by any person who pays the prescribed fee, the Registrar shall, unless he or she sees good reason to the contrary — give notice to the registered owner of the trade-mark 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 the Registrar may specify in the notice, whether the trade-mark 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.

  • — 2014, c. 32, s. 40

    • 40 Section 48 of the Act is amended by adding the following after subsection (3):

      • Removal of registration

        (4) The Registrar shall remove the registration of a transfer of a registered trade-mark on being furnished with evidence satisfactory to him or her that the transfer should not have been registered.

  • — 2014, c. 32, s. 41

    • 41 Section 49 of the Act and the heading before it are replaced by the following:

      Change of Purpose in Use of Trade-mark

      • Change of purpose

        49 If a sign or combination of signs is used by a person as a trade-mark for any of the purposes or in any of the manners mentioned in the definition certification mark or trade-mark in section 2, no application for the registration of the trade-mark shall be refused and no registration of the trade-mark shall be expunged, amended or held invalid merely on the ground that the person or a predecessor in title uses the trade-mark or has used it for any other of those purposes or in any other of those manners.

  • — 2014, c. 32, s. 47

    • 47 Subsection 57(1) of the Act is replaced by the following:

      • 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 trade-mark.

  • — 2014, c. 32, s. 48

    • 48 Section 60 of the Act is replaced by the following:

      • 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.

  • — 2014, c. 32, s. 49

    • 49 Section 64 of the Act is replaced by the following:

      • 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.

  • — 2014, c. 32, s. 50

      • 50 (1) Paragraphs 65(a) and (b) of the Act are replaced by the following:

        • (a) the form of the register to be kept under this Act, and of the entries to be made in it;

        • (b) applications to the Registrar;

        • (b.1) 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;

      • (2) Paragraph 65(d) of the Act is replaced by the following:

        • (d) certificates of registration;

      • (3) Section 65 of the Act is amended by striking out “and” at the end of paragraph (d.1), by adding “and” at the end of paragraph (e) and by adding the following after paragraph (e):

        • (f) the provision of documents, information or fees to the Registrar under this Act, including the time at which they are deemed to be received by the Registrar.

  • — 2014, c. 32, s. 55

    • Replacement of “date of filing”

      55 The English version of the Act is amended by replacing “date of filing” with “filing date” in the following provisions:

      • (a) the portion of subsection 16(2) before paragraph (a); and

      • (b) subsection 21(1).

  • — 2014, c. 32, s. 57

    • Amending the register

      57 The Registrar of Trade-marks may amend the register kept under section 26 of the Trade-marks Act to reflect the amendments to that Act that are made by this Act.

  • — 2015, c. 36, s. 67

    • 67 Paragraph 65(j) of the Act is replaced by the following:

      • (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;

  • — 2015, c. 36, s. 68

    • 68 Section 66 of the Act is replaced by the following:

      • 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.

  • — 2015, c. 36, s. 69

      • 69 (1) Paragraphs 70(1)(a) and (b) of the Act are replaced by the following:

        • (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

        • (c) section 66, as enacted by the Economic Action Plan 2015 Act, No. 1.

      • (2) Subsection 70(2) of the Act is replaced by the following:

        • Regulations

          (2) For greater certainty, a regulation made under section 65 applies to an application referred to in subsection (1), unless the regulation provides otherwise.

  • — 2015, c. 36, ss. 70(1), (4) to (7)

    • 2014, c. 20
      • 70 (1) In this section, other Act means the Economic Action Plan 2014 Act, No. 1.

      • (4) If section 67 of this Act comes into force on the same day as section 357 of the other Act, then that section 357 is deemed to have come into force before that section 67.

      • (5) If subsection 367(99) of the other Act produces its effects before subsection 69(1) of this Act comes into force, then that subsection 69(1) is replaced by the following:

          • 69 (1) Paragraphs 70(1)(a) and (b) of the Act are replaced by the following:

            • (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, 29 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 to 29.1 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

            • (c) section 66, as enacted by the Economic Action Plan 2015 Act, No. 1.

      • (6) If subsection 69(1) of this Act comes into force before subsection 367(99) of the other Act has produced its effects, then that subsection 367(99) is replaced by the following:

        • (99) On the first day on which both section 359 of this Act and section 28 of the other Act are in force, subsection 70(1) of the Trademarks Act is replaced by the following:

          • 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, 29 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 to 29.1 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

              • (c) section 66, as enacted by the Economic Action Plan 2015 Act, No. 1.

      • (7) If subsection 69(1) of this Act comes into force on the day on which subsection 367(99) of the other Act produces its effects, then

        • (a) that subsection 69(1) is deemed never to have come into force and is repealed; and

        • (b) paragraphs 70(1)(a) and (b) of the Trademarks Act are replaced by the following:

          • (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, 29 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 to 29.1 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

          • (c) section 66, as enacted by the Economic Action Plan 2015 Act, No. 1.

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