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

Act current to 2015-03-03 and last amended on 2015-01-01. Previous Versions

VALIDITY AND EFFECT OF REGISTRATION

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

  • Marginal note:When registration incontestable

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

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

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

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

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

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

  • Marginal note:Exception

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

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

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

  • R.S., 1985, c. T-13, s. 19;
  • 1993, c. 15, s. 60;
  • 2014, c. 32, s. 53.
Marginal note:Infringement
  •  (1) The right of the owner of a registered trade-mark to its exclusive use is deemed to be infringed by any person who is not entitled to its use under this Act and who

    • (a) sells, distributes or advertises any goods or services in association with a confusing trade-mark or trade-name;

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

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

      • (i) the person knows or ought to know that the label or packaging is intended to be associated with goods or services that are not those of the owner of the registered trade-mark, and

      • (ii) the sale, distribution or advertisement of the goods or services in association with the label or packaging would be a sale, distribution or advertisement in association with a confusing trade-mark or trade-name; or

    • (d) manufactures, causes to be manufactured, possesses, imports, exports or attempts to export any label or packaging, in any form, bearing a trade-mark or trade-name, for the purpose of its sale or distribution or for the purpose of the sale, distribution or advertisement of goods or services in association with it, if

      • (i) the person knows or ought to know that the label or packaging is intended to be associated with goods or services that are not those of the owner of the registered trade-mark, and

      • (ii) the sale, distribution or advertisement of the goods or services in association with the label or packaging would be a sale, distribution or advertisement in association with a confusing trade-mark or trade-name.

  • Marginal note:Exception  — bona fide use

    (1.1) The registration of a trade-mark does not prevent a person from making, in a manner that is not likely to have the effect of depreciating the value of the goodwill attaching to the trade-mark,

    • (a) any bona fide use of his or her personal name as a trade-name; or

    • (b) any bona fide use, other than as a trade-mark, of the geographical name of his or her place of business or of any accurate description of the character or quality of his or her goods or services.

  • Marginal note:Exception  — utilitarian feature

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

  • Marginal note:Exception

    (2) No registration of a trade-mark prevents a person from making any use of any of the indications mentioned in subsection 11.18(3) in association with a wine or any of the indications mentioned in subsection 11.18(4) in association with a spirit.

  • R.S., 1985, c. T-13, s. 20;
  • 1994, c. 47, s. 196;
  • 2014, c. 32, ss. 22, 56(F).