Canada–European Union Comprehensive Economic and Trade Agreement Implementation Act (S.C. 2017, c. 6)
Full Document:
Assented to 2017-05-16
PART 2Related Amendments (continued)
R.S., c. T-13Trade-marks Act
Marginal note:1994, c. 47, s. 190(2)
60 The definitions confusing and geographical indication in section 2 of the Trade-marks Act are replaced by the following:
- confusing
confusing, when applied as an adjective to a trade-mark or trade-name, means, except in sections 11.13 and 11.21, a trade-mark or trade-name the use of which would cause confusion in the manner and circumstances described in section 6; (créant de la confusion)
- geographical indication
geographical indication means an indication that identifies a wine or spirit, or an agricultural product or food of a category set out in the schedule, as originating in the territory of a WTO Member, or a region or locality of that territory, if a quality, reputation or other characteristic of the wine or spirit or the agricultural product or food is essentially attributable to its geographical origin; (indication géographique)
Marginal note:1994, c. 47, s. 192
61 Sections 11.11 and 11.12 of the Act are replaced by the following:
Geographical Indications
Marginal note:Definitions
11.11 (1) The following definitions apply in this section and in sections 11.12 to 11.24.
- Minister
Minister means the Minister designated under subsection (2). (ministre)
- responsible authority
responsible authority means, in relation to a wine or spirit, or an agricultural product or food of a category set out in the schedule, the person, firm or other entity that, in the Minister’s opinion, is, by reason of state or commercial interest, sufficiently connected with and knowledgeable about that wine or spirit or that agricultural product or food to be a party to any proceedings under this Act. (autorité compétente)
Marginal note:Designation of Minister
(2) The Governor in Council may, by order, designate any federal minister to be the Minister for the purposes of this section and sections 11.12 to 11.24.
Marginal note:When indication confusing with trade-mark
(3) For the purposes of sections 11.13 and 11.21, an indication identifying an agricultural product or food is confusing with a trade-mark if the use of both the indication and the trade-mark in the same area would be likely to lead to the inference that the agricultural product or food associated with the indication originates from the same source as the goods or services associated with the trade-mark.
Marginal note:What to be considered
(4) For the purposes of sections 11.13 and 11.21, in determining whether an indication is confusing with a trade-mark, the Registrar or the Federal Court, as the case may be, shall have regard to all the surrounding circumstances, including
(a) the length of time that the indication has been used to identify the agricultural product or food with which it is associated as originating in the territory, or the region or locality of a territory, and the extent to which it has become known;
(b) the degree of resemblance between the indication and the trade-mark, including in appearance or sound or in the ideas suggested by them; and
(c) with respect to the trade-mark,
(i) its inherent distinctiveness and the extent to which it has become known,
(ii) the length of time that it has been in use, and
(iii) the nature of the goods, services or business that is associated with it.
Marginal note:List
11.12 (1) There shall be kept under the supervision of the Registrar a list of geographical indications and, in the case of geographical indications identifying an agricultural product or food, translations of those indications.
Marginal note:Statement of Minister — indication
(2) If a statement by the Minister in respect of an indication is published on the website of the Canadian Intellectual Property Office setting out the information mentioned in subsection (3), the Registrar shall enter the indication, and any translation of the indication set out in the statement, on the list if
(a) no statement of objection has been filed and served on the responsible authority in accordance with subsection 11.13(1) and the time for the filing of a statement of objection has expired; or
(b) a statement of objection has been so filed and served, but it has been withdrawn or deemed under subsection 11.13(6) to have been withdrawn or it has been rejected under subsection 11.13(7) or, if an appeal is taken, it is rejected in the final judgment given in the appeal.
Marginal note:Statement of Minister — translation
(2.1) If a statement by the Minister is published on the website of the Canadian Intellectual Property Office setting out the information mentioned in subsection (3.1) in respect of a translation of an indication on the list that identifies an agricultural product or food, the Registrar shall enter the translation on the list if
(a) no statement of objection has been filed and served on the responsible authority in accordance with subsection 11.13(1) and the time for the filing of the statement of objection has expired; or
(b) a statement of objection has been so filed and served, but it has been withdrawn or deemed under subsection 11.13(6) to have been withdrawn or it has been rejected under subsection 11.13(7) or, if an appeal is taken, it is rejected in the final judgment given in the appeal.
Marginal note:Information — indication
(3) For the purposes of subsection (2), the statement by the Minister must set out all of the following information:
(a) that the Minister proposes that the indication and, if applicable, a translation of the indication, in the case of an indication that identifies an agricultural product or food, be entered on the list;
(b) in the case of an indication that identifies a wine or spirit, that the indication identifies a wine or that the indication identifies a spirit;
(b.1) in the case of an indication that identifies an agricultural product or food, the common name of the agricultural product or food and the category set out in the schedule to which it belongs;
(c) the territory, or the region or locality of a territory, in which the wine or spirit or the agricultural product or food is identified as originating;
(d) the name of the responsible authority in relation to the wine or spirit or the agricultural product or food and the address of the responsible authority’s principal office or place of business in Canada or, if the responsible authority has no office or place of business in Canada, the name and address in Canada of a person or firm on whom any document may be served with the same effect as if it had been served on the responsible authority itself;
(e) the quality, reputation or other characteristic of the wine or spirit or the agricultural product or food that, in the Minister’s opinion, qualifies that indication as a geographical indication;
(f) that, except in the case of an indication identifying a wine or spirit or an agricultural product or food as originating in Canada, the indication is protected by the law applicable to the territory in which the wine or spirit or the agricultural product or food is identified as originating, as well as particulars of the protection.
Marginal note:Information — translation
(3.1) For the purposes of subsection (2.1), the statement by the Minister must set out all of the following information:
(a) that the Minister proposes that the translation be entered on the list;
(b) the indication on the list that corresponds to the translation;
(c) the common name of the agricultural product or food that the indication identifies and the category set out in the schedule to which it belongs;
(d) the name of the responsible authority in relation to the agricultural product or food and the address of the responsible authority’s principal office or place of business in Canada or, if the responsible authority has no office or place of business in Canada, the name and address in Canada of a person or firm on whom any document may be served with the same effect as if it had been served on the responsible authority itself.
Marginal note:Removal from list
(4) The Registrar shall remove an indication or any translation of an indication from the list
(a) on the publication of a statement by the Minister on the website of the Canadian Intellectual Property Office specifying that the indication or the translation is to be removed; or
(b) if the Federal Court makes an order under subsection 11.21(1) for the removal of the indication or the translation.
Marginal note:Obvious error
(5) The Registrar may, within six months after the day on which an indication or a translation of an indication is entered on the list, correct any error in that entry that is obvious from the documents relating to the indication or the translation in question that are, at the time that the entry is made, on file in the Registrar’s office.
Marginal note:Evidence of entry
(6) A copy of any entry on the list purporting to be certified to be true by the Registrar is evidence of the facts set out in it.
Marginal note:Evidence of statement
(7) Evidence of a statement by the Minister may be given by the production of a copy of the statement purporting to be certified to be true by the Registrar.
Marginal note:Certified copies
(8) The Registrar shall, on request and on payment of the prescribed fee, furnish a copy certified by the Registrar of any entry on the list or of any statement by the Minister.
Marginal note:1994, c. 47, s. 192
62 (1) Subsections 11.13(1) and (2) of the Act are replaced by the following:
Marginal note:Statement of objection
11.13 (1) Within two months after the publication of a statement referred to in subsection 11.12(2) or (2.1), any person interested may, on payment of the prescribed fee, file with the Registrar, and serve on the responsible authority in the prescribed manner, a statement of objection.
Marginal note:Grounds — indication
(2) A statement of objection with respect to an indication may be based on any of the following grounds:
(a) that, when the statement by the Minister is published, the indication is not a geographical indication;
(b) that, when the statement by the Minister is published, 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 is published, 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,
(ii) a trade-mark that was previously used in Canada and that has not been abandoned, or
(iii) a trade-mark in respect of which an application for registration was previously filed in Canada and remains pending.
Marginal note:Grounds — translation
(2.1) A statement of objection with respect to a translation may be based on any of the following grounds:
(a) that, when the statement by the Minister is published, the translation is not a faithful translation of the indication;
(b) that, when the statement by the Minister is published, the translation is identical to a term customary in common language in Canada as the common name for the agricultural product or food;
(c) that, when the statement by the Minister is published, the translation is confusing with
(i) a registered trade-mark,
(ii) a trade-mark that was previously used in Canada and that has not been abandoned, or
(iii) a trade-mark in respect of which an application for registration was previously filed in Canada and remains pending.
Marginal note:1994, c. 47, s. 192
(2) Paragraph 11.13(3)(a) of the Act is replaced by the following:
(a) each ground of objection in sufficient detail to enable the responsible authority to reply to it; and
Marginal note:1994, c. 47, s. 192
(3) Subsection 11.13(4) of the Act is replaced by the following:
Marginal note:Frivolous objection
(3.1) At any time before the day on which the responsible authority files a counter statement, the Registrar may, at the responsible authority’s request or on his or her own initiative, reject the statement of objection if the Registrar considers that the statement does not raise a substantial issue for decision and shall give notice of his or her decision to the objector and to the responsible authority.
Marginal note:Power to strike
(3.2) At any time before the day on which the responsible authority files a counter statement, the Registrar may, at the responsible authority’s request, strike all or part of the statement of objection if the statement or part of it
(a) is not based on any of the grounds set out in subsection (2) or (2.1); or
(b) does not set out a ground of objection in sufficient detail to enable the responsible authority to reply to it.
Marginal note:Counter statement
(4) Within two months after a statement of objection has been served on the responsible authority, the responsible authority may file a counter statement with the Registrar and serve a copy on the objector in the prescribed manner, and if the responsible authority does not so file and serve a counter statement, the indication or the translation shall not be entered on the list kept under subsection 11.12(1). The counter statement need only state that the responsible authority intends to respond to the objection.
Marginal note:1994, c. 47, s. 192
(4) The portion of subsection 11.13(5) of the Act before paragraph (a) is replaced by the following:
Marginal note:Evidence and hearing
(5) Both the objector and the responsible authority 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
Marginal note:1994, c. 47, s. 192
(5) Subsections 11.13(6) and (7) of the Act are replaced by the following:
Marginal note:Service
(5.1) The objector and the responsible authority 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.
Marginal note:No evidence — objector
(6) The objection is deemed to have been withdrawn if, in the prescribed circumstances, the objector does not submit and serve evidence or a statement that the objector does not wish to submit evidence.
Marginal note:No evidence — responsible authority
(6.1) The indication or the translation shall not be entered on the list if, in the prescribed circumstances, the responsible authority does not submit and serve evidence or a statement that the responsible authority does not wish to submit evidence.
Marginal note:Decision
(7) After considering the evidence and representations of the objector and the responsible authority, the Registrar shall accept or reject the objection, in whole or in part, and notify the parties of the decision and the reasons for it.
Marginal note:Effect of decision on translations
(8) The Registrar shall not enter any translation of an indication on the list if the Registrar accepts the objection with respect to the indication or, if an appeal is taken, the objection is accepted in the final judgment given in the appeal.
63 Section 11.14 of the Act is amended by adding the following after subsection (2):
Marginal note:Prohibited use
(3) No person shall use in connection with a business, as a trade-mark or otherwise,
(a) a protected geographical indication identifying a wine in respect of a wine that originates in the territory indicated by the protected geographical indication if that wine was not produced or manufactured in accordance with the law applicable to that territory; or
(b) a translation in any language of the geographical indication in respect of that wine.
Marginal note:Prohibited adoption of indication for spirits
(4) No person shall adopt in connection with a business, as a trade-mark or otherwise,
(a) a protected geographical indication identifying a spirit in respect of a spirit not originating in the territory indicated by the protected geographical indication; or
(b) a translation in any language of the geographical indication in respect of that spirit.
Marginal note:Prohibited use
(5) No person shall use in connection with a business, as a trade-mark or otherwise,
(a) a protected geographical indication identifying a spirit in respect of a spirit not originating in the territory indicated by the protected geographical indication or adopted contrary to subsection (4); or
(b) a translation in any language of the geographical indication in respect of that spirit.
Marginal note:Prohibited use
(6) No person shall use in connection with a business, as a trade-mark or otherwise,
(a) a protected geographical indication identifying a spirit in respect of a spirit that originates in the territory indicated by the protected geographical indication if that spirit was not produced or manufactured in accordance with the law applicable to that territory; or
(b) a translation in any language of the geographical indication in respect of that spirit.
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