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

Act current to 2017-11-20 and last amended on 2017-09-21. Previous Versions

Marginal note:Powers of Governor in Council

 The Governor in Council may, by order, amend the schedule by adding or deleting a category of agricultural product or food.

  • 2017, c. 6, s. 67.

Registrable Trade-marks

Marginal note:When trade-mark registrable
  •  (1) Subject to section 13, a trade-mark is registrable if it is not

    • (a) a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years;

    • (b) whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the goods or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin;

    • (c) the name in any language of any of the goods or services in connection with which it is used or proposed to be used;

    • (d) confusing with a registered trade-mark;

    • (e) a mark of which the adoption is prohibited by section 9 or 10;

    • (f) a denomination the adoption of which is prohibited by section 10.1;

    • (g) in whole or in part a protected geographical indication identifying a wine, where the trade-mark is to be registered in association with a wine not originating in a territory indicated by the geographical indication;

    • (h) in whole or in part a protected geographical indication identifying a spirit, where the trade-mark is to be registered in association with a spirit not originating in a territory indicated by the geographical indication;

    • (h.1) in whole or in part a protected geographical indication, and the trade-mark is to be registered in association with an agricultural product or food — belonging to the same category, as set out in the schedule, as the agricultural product or food identified by the protected geographical indication — not originating in a territory indicated by the geographical indication; and

    • (i) subject to subsection 3(3) and paragraph 3(4)(a) of the Olympic and Paralympic Marks Act, a mark the adoption of which is prohibited by subsection 3(1) of that Act.

  • Marginal note:Idem

    (2) A trade-mark that is not registrable by reason of paragraph (1)(a) or (b) is registrable if it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration.

  • R.S., 1985, c. T-13, s. 12;
  • 1990, c. 20, s. 81;
  • 1993, c. 15, s. 59(F);
  • 1994, c. 47, s. 193;
  • 2007, c. 25, s. 14;
  • 2014, c. 32, ss. 15(F), 53;
  • 2017, c. 6, s. 68.
Marginal note:When distinguishing guises registrable
  •  (1) A distinguishing guise is registrable only if

    • (a) it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration; and

    • (b) the exclusive use by the applicant of the distinguishing guise in association with the goods or services with which it has been used is not likely unreasonably to limit the development of any art or industry.

  • Marginal note:Effect of registration

    (2) No registration of a distinguishing guise interferes with the use of any utilitarian feature embodied in the distinguishing guise.

  • Marginal note:Not to limit art or industry

    (3) The registration of a distinguishing guise may be expunged by the Federal Court on the application of any interested person if the Court decides that the registration has become likely unreasonably to limit the development of any art or industry.

  • R.S., 1985, c. T-13, s. 13;
  • 2014, c. 32, s. 53.
Marginal note:Registration of marks registered abroad
  •  (1) Notwithstanding section 12, a trade-mark that the applicant or the applicant’s predecessor in title has caused to be duly registered in or for the country of origin of the applicant is registrable if, in Canada,

    • (a) it is not confusing with a registered trade-mark;

    • (b) it is not without distinctive character, having regard to all the circumstances of the case including the length of time during which it has been used in any country;

    • (c) it is not contrary to morality or public order or of such a nature as to deceive the public; or

    • (d) it is not a trade-mark of which the adoption is prohibited by section 9 or 10.

  • Marginal note:Trade-marks regarded as registered abroad

    (2) A trade-mark that differs from the trade-mark registered in the country of origin only by elements that do not alter its distinctive character or affect its identity in the form under which it is registered in the country of origin shall be regarded for the purpose of subsection (1) as the trade-mark so registered.

  • R.S., 1985, c. T-13, s. 14;
  • 1994, c. 47, s. 194.
Marginal note:Registration of confusing marks
  •  (1) Notwithstanding section 12 or 14, confusing trade-marks are registrable if the applicant is the owner of all such trade-marks, which shall be known as associated trade-marks.

  • Marginal note:Record

    (2) On the registration of any trade-mark associated with any other registered trade-mark, a note of the registration of each trade-mark shall be made on the record of registration of the other trade-mark.

  • Marginal note:Amendment

    (3) No amendment of the register recording any change in the ownership or in the name or address of the owner of any one of a group of associated trade-marks shall be made unless the Registrar is satisfied that the same change has occurred with respect to all the trade-marks in the group, and corresponding entries are made contemporaneously with respect to all those trade-marks.

  • R.S., c. T-10, s. 15.

Persons Entitled to Registration of Trade-marks

Marginal note:Registration of marks used or made known in Canada
  •  (1) Any applicant who has filed an application in accordance with section 30 for registration of a trade-mark that is registrable and that he or his predecessor in title has used in Canada or made known in Canada in association with goods or services is entitled, subject to section 38, to secure its registration in respect of those goods or services, unless at the date on which he or his predecessor in title first so used it or made it known it was confusing with

    • (a) a trade-mark that had been previously used in Canada or made known in Canada by any other person;

    • (b) a trade-mark in respect of which an application for registration had been previously filed in Canada by any other person; or

    • (c) a trade-name that had been previously used in Canada by any other person.

  • Marginal note:Marks registered and used abroad

    (2) Any applicant who has filed an application in accordance with section 30 for registration of a trade-mark that is registrable and that the applicant or the applicant’s predecessor in title has duly registered in or for the country of origin of the applicant and has used in association with goods or services is entitled, subject to section 38, to secure its registration in respect of the goods or services in association with which it is registered in that country and has been used, unless at the date of filing of the application in accordance with section 30 it was confusing with

    • (a) a trade-mark that had been previously used in Canada or made known in Canada by any other person;

    • (b) a trade-mark in respect of which an application for registration had been previously filed in Canada by any other person; or

    • (c) a trade-name that had been previously used in Canada by any other person.

  • Marginal note:Proposed marks

    (3) Any applicant who has filed an application in accordance with section 30 for registration of a proposed trade-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 date of filing of the application it was confusing with

    • (a) a trade-mark that had been previously used in Canada or made known in Canada by any other person;

    • (b) a trade-mark in respect of which an application for registration had been previously filed in Canada by any other person; or

    • (c) a trade-name that had been previously used in Canada by any other person.

  • Marginal note:Where application for confusing mark pending

    (4) The right of an applicant to secure registration of a registrable trade-mark is not affected by the previous filing of an application for registration of a confusing trade-mark by another person, unless the application for registration of the confusing trade-mark was pending at the date of advertisement of the applicant’s application in accordance with section 37.

  • Marginal note:Previous use or making known

    (5) The right of an applicant to secure registration of a registrable trade-mark is not affected by the previous use or making known of a confusing trade-mark or trade-name by another person, if the confusing trade-mark or trade-name was abandoned at the date of advertisement of the applicant’s application in accordance with section 37.

  • R.S., 1985, c. T-13, s. 16;
  • 1994, c. 47, s. 195;
  • 2014, c. 32, s. 53.
 
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