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

Marginal note:Damages against trademark owner

51.12 A court may award damages against the owner of a relevant protected mark who commenced proceedings referred to in subsection 51.06(3) to the owner, importer, exporter or consignee of the goods who is a party to the proceedings for losses, costs or prejudice suffered as a result of the detention of goods if the proceedings are dismissed or discontinued.

Trademark Agents

Marginal note:Privileged communication

• 51.13 (1) A communication that meets the following conditions is privileged in the same way as a communication that is subject to solicitor-client privilege or, in civil law, to professional secrecy of advocates and notaries and no person shall be required to disclose, or give testimony on, the communication in a civil, criminal or administrative action or proceeding:

  • (a) it is between a trademark agent and their client;

  • (b) it is intended to be confidential; and

  • (c) it is made for the purpose of seeking or giving advice with respect to any matter relating to the protection of a trademark, geographical indication or mark referred to in paragraph 9(1)(e), (i), (i.1), (i.3), (n) or (n.1).

• Marginal note:Waiver

  (2) Subsection (1) does not apply if the client expressly or implicitly waives the privilege.

• Marginal note:Exceptions

  (3) Exceptions to solicitor-client privilege or, in civil law, to professional secrecy of advocates and notaries apply to a communication that meets the conditions set out in paragraphs (1)(a) to (c).

• Marginal note:Trademark agents — country other than Canada

  (4) A communication between an individual who is authorized to act as the equivalent of a trademark agent under the law of a country other than Canada and that individual’s client that is privileged under the law of that other country and that would be privileged under subsection (1) had it been made between a trademark agent and their client is deemed to be a communication that meets the conditions set out in paragraphs (1)(a) to (c).

• Marginal note:Individual acting on behalf of trademark agent or client

  (5) For the purposes of this section, a trademark agent or an individual who is authorized to act as the equivalent of a trademark agent under the law of a country other than Canada includes an individual acting on their behalf and a client includes an individual acting on the client’s behalf.

• Marginal note:Application

  (6) This section applies to communications that are made before the day on which this section comes into force if they are still confidential on that day and to communications that are made after that day. However, this section does not apply in respect of an action or proceeding commenced before that day.

• Marginal note:Definition of trademark agent

  (7) In this section, trademark agent has the same meaning as in section 2 of the College of Patent Agents and Trademark Agents Act.

Legal Proceedings

Marginal note:Definitions

52 In sections 53 to 53.3,

court

court means the Federal Court or the superior court of a province; (tribunal)

duties

duties has the same meaning as in the Customs Act; (droits)

Minister

Minister means the Minister of Public Safety and Emergency Preparedness. (ministre)

release

release[Repealed, 2014, c. 32, s. 44]

Marginal note:Proceedings for interim custody

• 53 (1) Where a court is satisfied, on application of any interested person, that any registered trademark, any trademark that is confusing with a registered trademark or any trade name has been applied to any goods that have been imported into Canada or are about to be distributed in Canada in such a manner that the distribution of the goods would be contrary to this Act, or that any indication of a place of origin has been unlawfully applied to any goods, the court may make an order for the interim custody of the goods, pending a final determination of the legality of their importation or distribution in an action commenced within such time as is prescribed by the order.

• Marginal note:Security

  (2) Before making an order under subsection (1), the court may require the applicant to furnish security, in an amount fixed by the court, to answer any damages that may by reason of the order be sustained by the owner, importer or consignee of the goods and for any amount that may become chargeable against the goods while they remain in custody under the order.

• Marginal note:Lien for charges

  (3) Where, by the judgment in any action under this section finally determining the legality of the importation or distribution of the goods, their importation or distribution is forbidden, either absolutely or on condition, any lien for charges against them that arose prior to the date of an order made under this section has effect only so far as may be consistent with the due execution of the judgment.

• Marginal note:Prohibition of imports

  (4) Where in any action under this section the court finds that the importation is or the distribution would be contrary to this Act, it may make an order prohibiting the future importation of goods to which the trademark, trade name or indication of origin has been applied.

• Marginal note:How application made

  (5) An application referred to in subsection (1) may be made in an action or otherwise, and either on notice or ex parte.

• Marginal note:Limitation

  (6) No proceedings may be taken under subsection (1) for the interim custody of goods by the Minister if proceedings for the detention of the goods by the Minister may be taken under section 53.1.

Marginal note:Proceedings for detention by Minister

• 53.1 (1) Where a court is satisfied, on application by the owner of a registered trademark, that any goods to which the registered trademark or a trademark that is confusing with the registered trademark has been applied are about to be imported into Canada or have been imported into Canada but have not yet been released, and that the distribution of the goods in Canada would be contrary to this Act, the court may make an order

  • (a) directing the Minister to take reasonable measures, on the basis of information reasonably required by the Minister and provided by the applicant, to detain the goods;

  • (b) directing the Minister to notify the applicant and the owner or importer of the goods, forthwith after detaining them, of the detention and the reasons therefor; and

  • (c) providing for such other matters as the court considers appropriate.

• Marginal note:How application made

  (2) An application referred to in subsection (1) may be made in an action or otherwise, and either on notice or ex parte, except that it must always be made on notice to the Minister.

• Marginal note:Court may require security

  (3) Before making an order under subsection (1), the court may require the applicant to furnish security, in an amount fixed by the court,

  • (a) to cover duties, storage and handling charges, and any other amount that may become chargeable against the goods; and

  • (b) to answer any damages that may by reason of the order be sustained by the owner, importer or consignee of the goods.

• Marginal note:Application for directions

  (4) The Minister may apply to the court for directions in implementing an order made under subsection (1).

• Marginal note:Minister may allow inspection

  (5) The Minister may give the applicant or the importer of the detained goods an opportunity to inspect them for the purpose of substantiating or refuting, as the case may be, the applicant’s claim.

• Marginal note:Where applicant fails to commence an action

  (6) Unless an order made under subsection (1) provides otherwise, the Minister shall, subject to the Customs Act and to any other Act of Parliament that prohibits, controls or regulates the importation or exportation of goods, release the goods without further notice to the applicant if, two weeks after the applicant has been notified under paragraph (1)(b), the Minister has not been notified that an action has been commenced for a final determination by the court of the legality of the importation or distribution of the goods.

• Marginal note:Where court finds in plaintiff’s favour

  (7) Where, in an action commenced under this section, the court finds that the importation is or the distribution would be contrary to this Act, the court may make any order that it considers appropriate in the circumstances, including an order that the goods be destroyed or exported, or that they be delivered up to the plaintiff as the plaintiff’s property absolutely.

Marginal note:Power of court to grant relief

• 53.2 (1) If a court is satisfied, on application of any interested person, that any act has been done contrary to this Act, the court may make any order that it considers appropriate in the circumstances, including an order providing for relief by way of injunction and the recovery of damages or profits, for punitive damages and for the destruction or other disposition of any offending goods, packaging, labels and advertising material and of any equipment used to produce the goods, packaging, labels or advertising material.

• Marginal note:Notice to interested persons

  (2) Before making an order for destruction or other disposition, the court shall direct that notice be given to any person who has an interest or right in the item to be destroyed or otherwise disposed of, unless the court is of the opinion that the interests of justice do not require that notice be given.

Marginal note:Unaltered state — exportation, sale or distribution

• 53.3 (1) A court is not permitted, in any proceeding under section 53.1 or 53.2, to make an order under that section requiring or permitting the goods to be exported, sold or distributed in an unaltered state, except in a manner that does not affect the legitimate interests of the owner of the registered trademark or except in exceptional circumstances, if the court finds that

  • (a) goods bearing the registered trademark have been imported into Canada in such a manner that the distribution of the goods in Canada would be contrary to this Act; and

  • (b) the registered trademark has, without the consent of the owner, been applied to those goods with the intent of counterfeiting or imitating the trademark, or of deceiving the public and inducing them to believe that the goods were made with the consent of the owner.

• Marginal note:Removal of trademark

  (2) Subsection (1) also applies with respect to goods for which the only alteration is the removal of the trademark.

Marginal note:Evidence

• 54 (1) Evidence of any document in the official custody of the Registrar or of any extract therefrom may be given by the production of a copy thereof purporting to be certified to be true by the Registrar.

• Marginal note:Idem

  (2) A copy of any entry in the register purporting to be certified to be true by the Registrar is evidence of the facts set out therein.

• Marginal note:Idem

  (3) A copy of the record of the registration of a trademark purporting to be certified to be true by the Registrar is evidence of the facts set out therein and that the person named therein as owner is the registered owner of the trademark for the purposes and within the territorial area therein defined.

• Marginal note:Idem

  (4) A copy of any entry made or documents filed under the authority of any Act in force before July 1, 1954 relating to trademarks, certified under the authority of that Act, is admissible in evidence and has the same probative force as a copy certified by the Registrar under this Act as provided in this section.