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

Marginal note:Renewal for goods or services

46.1 The registration of a trademark may be renewed for any of the goods or services in respect of which the trademark is registered.

Extensions of Time

Marginal note:Extensions of time

• 47 (1) If, in any case, the Registrar is satisfied that the circumstances justify an extension of the time fixed by this Act or prescribed by the regulations for the doing of any act, he may, except as in this Act otherwise provided, extend the time after such notice to other persons and on such terms as he may direct.

• Marginal note:Conditions

  (2) An extension applied for after the expiration of the time fixed for the doing of an act or the time extended by the Registrar under subsection (1) shall not be granted unless the prescribed fee is paid and the Registrar is satisfied that the failure to do the act or apply for the extension within that time or the extended time was not reasonably avoidable.

Marginal note:Proceeding under section 45

• 47.1 (1) The Registrar shall grant an extension of any time limit fixed under this Act in the context of a proceeding commenced by the Registrar, on his or her own initiative, under section 45, if the extension is requested after the expiry of the time limit and within two months after its expiry.

• Marginal note:One time extension

  (2) No extension under subsection (1) shall be granted more than once.

Transfer

Marginal note:Trademark transferable

• 48 (1) A trademark, whether registered or unregistered, is transferable, and deemed always to have been transferable, either in connection with or separately from the goodwill of the business and in respect of either all or some of the goods or services in association with which it has been used.

• Marginal note:Where two or more persons interested

  (2) Nothing in subsection (1) prevents a trademark from being held not to be distinctive if as a result of a transfer thereof there subsisted rights in two or more persons to the use of confusing trademarks and the rights were exercised by those persons.

• Marginal note:Transfer of application

  (3) The Registrar shall, subject to the regulations, record the transfer of an application for the registration of a trademark on the request of the applicant or, on receipt of evidence satisfactory to the Registrar of the transfer, on the request of a transferee of the application.

• Marginal note:Transfer of trademark

  (4) The Registrar shall, subject to the regulations, register the transfer of any registered trademark on the request of the registered owner or, on receipt of evidence satisfactory to the Registrar of the transfer, on the request of a transferee of the trademark.

• Marginal note:Removal of recording or registration

  (5) The Registrar shall remove the recording or the registration of the transfer referred to in subsection (3) or (4) on receipt of evidence satisfactory to the Registrar that the transfer should not have been recorded or registered.

Change of Purpose in Use of Trademark

Marginal note:Change of purpose

49 If a sign or combination of signs is used by a person as a trademark for any of the purposes or in any of the manners mentioned in the definition certification mark or trademark in section 2, no application for the registration of the trademark shall be refused and no registration of the trademark shall be expunged, amended or held invalid merely on the ground that the person or a predecessor in title uses the trademark or has used it for any other of those purposes or in any other of those manners.

Licences

Marginal note:Licence to use trademark

• 50 (1) For the purposes of this Act, if an entity is licensed by or with the authority of the owner of a trademark to use the trademark in a country and the owner has, under the licence, direct or indirect control of the character or quality of the goods or services, then the use, advertisement or display of the trademark in that country as or in a trademark, trade name or otherwise by that entity has, and is deemed always to have had, the same effect as such a use, advertisement or display of the trademark in that country by the owner.

• Marginal note:Idem

  (2) For the purposes of this Act, to the extent that public notice is given of the fact that the use of a trademark is a licensed use and of the identity of the owner, it shall be presumed, unless the contrary is proven, that the use is licensed by the owner of the trademark and the character or quality of the goods or services is under the control of the owner.

• Marginal note:Owner may be required to take proceedings

  (3) Subject to any agreement subsisting between an owner of a trademark and a licensee of the trademark, the licensee may call on the owner to take proceedings for infringement thereof, and, if the owner refuses or neglects to do so within two months after being so called on, the licensee may institute proceedings for infringement in the licensee’s own name as if the licensee were the owner, making the owner a defendant.

Marginal note:Use of trademark by related companies

• 51 (1) Where a company and the owner of a trademark that is used in Canada by that owner in association with a pharmaceutical preparation are related companies, the use by the company of the trademark, or a trademark confusing therewith, in association with a pharmaceutical preparation that at the time of that use or at any time thereafter,

  • (a) is acquired by a person directly or indirectly from the company, and

  • (b) is sold, distributed or advertised for sale in Canada in a package bearing the name of the company and the name of that person as the distributor thereof,

  has the same effect, for all purposes of this Act, as a use of the trademark or the confusing trademark, as the case may be, by that owner.

• Marginal note:Where difference in composition

  (2) Subsection (1) does not apply to any use of a trademark or a confusing trademark by a company referred to in that subsection in association with a pharmaceutical preparation after such time, if any, as that pharmaceutical preparation is declared by the Minister of Health, by notice published in the Canada Gazette, to be sufficiently different in its composition from the pharmaceutical preparation in association with which the trademark is used in Canada by the owner referred to in subsection (1) as to be likely to result in a hazard to health.

• Definition of pharmaceutical preparation

  (3) In this section, pharmaceutical preparation includes

  • (a) any substance or mixture of substances manufactured, sold or represented for use in

    • (i) the diagnosis, treatment, mitigation or prevention of a disease, disorder or abnormal physical state, or the symptoms thereof, in humans or animals, or

    • (ii) restoring, correcting or modifying organic functions in humans or animals, and

  • (b) any substance to be used in the preparation or production of any substance or mixture of substances described in paragraph (a),

  but does not include any such substance or mixture of substances that is the same or substantially the same as a substance or mixture of substances that is a proprietary medicine within the meaning from time to time assigned to that expression by regulations made pursuant to the Food and Drugs Act.

Offences and Punishment

Marginal note:Sale, etc., of goods

• 51.01 (1) Every person commits an offence who sells or offers for sale, or distributes on a commercial scale, any goods in association with a trademark, if that sale or distribution is or would be contrary to section 19 or 20 and the person knows that

  • (a) the trademark is identical to, or cannot be distinguished in its essential aspects from, a trademark registered for such goods; and

  • (b) the owner of that registered trademark has not consented to the sale, offering for sale, or distribution of the goods in association with the trademark.

  • (c) [Deleted]

• Marginal note:Manufacture, etc., of goods

  (2) Every person commits an offence who manufactures, causes to be manufactured, possesses, imports, exports or attempts to export any goods, for the purpose of their sale or of their distribution on a commercial scale, if that sale or distribution would be contrary to section 19 or 20 and the person knows that

  • (a) the goods bear a trademark that is identical to, or that cannot be distinguished in its essential aspects from, a trademark registered for such goods; and

  • (b) the owner of that registered trademark has not consented to having the goods bear the trademark.

  • (c) [Deleted]

• Marginal note:Services

  (3) Every person commits an offence who sells or advertises services in association with a trademark, if that sale or advertisement is contrary to section 19 or 20 and the person knows that

  • (a) the trademark is identical to, or cannot be distinguished in its essential aspects from, a registered trademark registered for such services; and

  • (b) the owner of the registered trademark has not consented to the sale or advertisement in association with the trademark.

  • (c) [Deleted]

• Marginal note:Labels or packaging

  (4) Every person commits an offence who manufactures, causes to be manufactured, possesses, imports, exports or attempts to export any label or packaging, in any form, for the purpose of its sale or of its distribution on a commercial scale or for the purpose of the sale, distribution on a commercial scale or advertisement of goods or services in association with it, if that sale, distribution or advertisement would be contrary to section 19 or 20 and the person knows that

  • (a) the label or packaging bears a trademark that is identical to, or that cannot be distinguished in its essential aspects from, a registered trademark;

  • (b) the label or packaging is intended to be associated with goods or services for which that registered trademark is registered; and

  • (c) the owner of that registered trademark has not consented to having the label or packaging bear the trademark.

  • (d) [Deleted]

• Marginal note:Trafficking in labels or packaging

  (5) Every person commits an offence who sells or offers for sale, or distributes on a commercial scale, any label or packaging, in any form, if the sale, distribution or advertisement of goods or services in association with the label or packaging would be contrary to section 19 or 20 and the person knows that

  • (a) the label or packaging bears a trademark that is identical to, or that cannot be distinguished in its essential aspects from, a registered trademark;

  • (b) the label or packaging is intended to be associated with goods or services for which that registered trademark is registered;

  • (c) the owner of that registered trademark has not consented to having the label or packaging bear the trademark.

• Marginal note:Registration of trademark

  (5.1) In a prosecution for an offence under any of subsections (1) to (5), it is not necessary for the prosecutor to prove that the accused knew that the trademark was registered.

• Marginal note:Punishment

  (6) Every person who commits an offence under any of subsections (1) to (5) is liable

  • (a) on conviction on indictment, to a fine of not more than $1,000,000 or to imprisonment for a term of not more than five years or to both; or

  • (b) on summary conviction, to a fine of not more than $25,000 or to imprisonment for a term of not more than six months or to both.

• Marginal note:Limitation Period

  (7) Proceedings by way of summary conviction for an offence under this section may be instituted no later than two years after the day on which the subject-matter of the proceedings arose.

• Marginal note:Disposition order

  (8) The court before which any proceedings for an offence under this section are taken may, on a finding of guilt, order that any goods, labels, or packaging in respect of which the offence was committed, any advertising materials relating to those goods and any equipment used to manufacture those goods, labels or packaging be destroyed or otherwise disposed of.

• Marginal note:Notice

  (9) Before making an order for the destruction or other disposition of equipment under subsection (8), the court shall require that notice be given to the owner of the equipment and to any other person who, in the opinion of the court, appears to have a right or interest in the equipment, unless the court is of the opinion that the interests of justice do not require that the notice be given.