Economic Action Plan 2014 Act, No. 1 (S.C. 2014, c. 20)
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Assented to 2014-06-19
PART 6VARIOUS MEASURES
Division 25R.S., c. T-13Amendments Relating to International Treaties on Trademarks
Amendments to the Trade-marks Act
327. Section 13 of the Act is repealed.
Marginal note:1994, c. 47, s. 194
328. Sections 14 and 15 of the Act are replaced by the following:
Marginal note:Registration of confusing trademarks
15. Despite section 12, confusing trademarks are registrable if the applicant is the owner of all of the confusing trademarks.
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
330. (1) The portion of subsection 16(1) of the Act before paragraph (a) is replaced by the following:
Marginal note: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
Marginal note:1994, c. 47, s. 195
(2) Subsections 16(2) to (5) of the Act are replaced by the following:
Marginal note: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).
Marginal note: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).
331. The Act is amended by adding the following after section 18:
Marginal note: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.
332. Section 20 of the Act is amended by adding the following after subsection (1):
Marginal note:Exception — utilitarian feature
(1.1) The registration of a trademark does not prevent a person from using any utilitarian feature embodied in the trademark.
333. Subsection 21(1) of the English version of the Act is replaced by the following:
Marginal note: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.
334. (1) Subsections 23(1) to (3) of the Act are replaced by the following:
Marginal note: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.
Marginal note: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.
Marginal note:Unauthorized use
(3) The owner of a registered certification mark may prevent its use by unlicensed persons or in association with any goods or services in respect of which 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:
Marginal note: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.
335. Section 24 of the French version of the Act is replaced by the following:
Marginal note: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.
336. Section 25 of the Act is replaced by the following:
Marginal note: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.
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
Marginal note:1993, c. 15, s. 62
338. Section 28 of the Act is replaced by the following:
Marginal note: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.
Marginal note:1993, c. 15, s. 64; 1994, c. 47, s. 198
339. Sections 30 to 33 of the Act are replaced by the following:
Marginal note: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.
Marginal note: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.
Marginal note: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.
Marginal note: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.
Marginal note: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.
Marginal note: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.
Marginal note: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.
Marginal note: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.
Marginal note: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.
Marginal note: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.
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