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

Act current to 2017-10-13 and last amended on 2017-09-21. Previous Versions

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

  • Marginal note:Proceedings after five years

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

  • 1994, c. 47, s. 192;
  • 2014, c. 32, s. 14(F);
  • 2017, c. 6, s. 66.
Marginal note:Acquired rights — wines
  •  (1) Section 11.14 and paragraph 12(1)(g) do not prevent the adoption, use or registration as a trade-mark in association with a wine of a protected geographical indication, or any translation of it in any language, by a person if they have, in good faith, before the later of January 1, 1996 and the day on which protection of the indication in the territory indicated by the indication begins,

    • (a) filed an application in accordance with section 30 for, or secured the registration of, the trade-mark in association with a wine; or

    • (b) acquired rights through use to the trade-mark in respect of a wine.

  • Marginal note:Acquired rights — spirits

    (2) Section 11.14 and paragraph 12(1)(h) do not prevent the adoption, use or registration as a trade-mark in association with a spirit of a protected geographical indication, or any translation of it in any language, by a person if they have, in good faith, before the later of January 1, 1996 and the day on which protection of the indication in the territory indicated by the indication begins,

    • (a) filed an application in accordance with section 30 for, or secured the registration of, the trade-mark in association with a spirit; or

    • (b) acquired rights through use to the trade-mark in respect of a spirit.

  • Marginal note:Acquired rights — agricultural products and food

    (3) Section 11.15 and paragraph 12(1)(h.1) do not prevent the adoption, use or registration as a trade-mark in association with an agricultural product or food of a category set out in the schedule of a protected geographical indication, or any translation of it in any language, by a person if they have, in good faith, before the day on which a statement by the Minister is published under subsection 11.12(2) or (2.1) in respect of the indication or translation,

    • (a) filed an application in accordance with section 30 for, or secured the registration of, the trade-mark in association with an agricultural product or food belonging to the same category; or

    • (b) acquired rights through use to the trade-mark in respect of an agricultural product or food belonging to the same category.

  • 1994, c. 47, s. 192;
  • 2014, c. 32, s. 56(F);
  • 2017, c. 6, s. 67.
Marginal note:Removal from the list
  •  (1) On the application of any person interested, the Federal Court has exclusive jurisdiction to order the Registrar to remove an indication or a translation from the list of geographical indications kept under subsection 11.12(1) on any of the grounds set out in subsection (2) or (3), as the case may be.

  • Marginal note:Grounds — indication

    (2) The grounds for the removal of an indication are

    • (a) that, on the day on which the application is made, the indication is not a geographical indication;

    • (b) that, on the day on which the application is made, the indication is identical to a term customary in common language in Canada as the common name for the wine or spirit or the agricultural product or food;

    • (c) that, except in the case of an indication identifying a wine or spirit or an agricultural product or food as originating in Canada, when the statement by the Minister in respect of the indication is published or on the day on which the application is made, the indication is not protected by the law applicable to the territory in which the wine or spirit or the agricultural product or food is identified as originating;

    • (d) in the case of an indication identifying an agricultural product or food, that, when the statement by the Minister is published, the indication is confusing with

      • (i) a registered trade-mark, or

      • (ii) a trade-mark that was previously used in Canada and that has not been abandoned; or

    • (e) in the case of an indication identifying an agricultural product or food, that

      • (i) when the statement by the Minister is published, the indication is confusing with a trade-mark in respect of which an application for registration was previously filed in Canada, and

      • (ii) on the day on which the application is made, that application for registration remains pending or the trade-mark is registered.

  • Marginal note:Grounds — translation

    (3) The grounds for the removal of a translation are

    • (a) that, on the day on which the application is made, the translation is identical to a term customary in common language in Canada as the common name for the agricultural product or food;

    • (b) that, when the statement by the Minister in respect of the translation is published, the translation is confusing with

      • (i) a registered trade-mark, or

      • (ii) a trade-mark that was previously used in Canada and that has not been abandoned;

    • (c) that

      • (i) when the statement by the Minister in respect of the translation is published, the translation is confusing with a trade-mark in respect of which an application for registration was previously filed in Canada, and

      • (ii) on the day on which the application is made, that application for registration remains pending or the trade-mark is registered; or

    • (d) that, when the statement by the Minister in respect of the translation is published, the translation is not a faithful translation of the indication.

  • Marginal note:How application is made

    (4) An application shall be made by the filing of an originating notice of motion, by counter-claim in an action for an act contrary to section 11.14 or 11.15, or by statement of claim in an action claiming additional relief under this Act.

  • Marginal note:Summary proceedings

    (5) The proceedings on an application shall be heard and determined summarily on evidence adduced by affidavit unless the Federal Court directs otherwise.

  • Marginal note:Effect of order on translation

    (6) If the Federal Court orders the removal of an indication identifying an agricultural product or food from the list, the Registrar shall remove any translation of that indication from the list.

  • 2017, c. 6, s. 67.
Marginal note:CETA indications

 Paragraph 11.18(2)(a) and section 11.21 do not apply with respect to a protected geographical indication that is listed in Part A of Annex 20-A, as amended from time to time, of Chapter Twenty of the Comprehensive Economic and Trade Agreement between Canada and the European Union and its Member States, done at Brussels on October 30, 2016.

  • 2017, c. 6, s. 67.
Marginal note:Canada — Korea indications

 Paragraphs 11.18(2)(a) and (c) and section 11.21 do not apply with respect to an indication that is a protected geographical indication and that is included in the following list:

  • (a) GoryeoHongsam;

  • (b) GoryeoBaeksam;

  • (c) GoryeoSusam;

  • (d) IcheonSsal;

  • (e) ginseng rouge de Corée;

  • (f) ginseng blanc de Corée;

  • (g) ginseng frais de Corée;

  • (h) riz Icheon;

  • (i) Korean Red Ginseng;

  • (j) Korean White Ginseng;

  • (k) Korean Fresh Ginseng;

  • (l) Icheon Rice.

  • 2017, c. 6, s. 67.
 
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