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

Full Document:  

Act current to 2021-11-17 and last amended on 2021-06-28. Previous Versions

Geographical Indications (continued)

Marginal note:Statement of objection

  •  (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 trademark,

      • (ii) a trademark that was previously used in Canada and that has not been abandoned, or

      • (iii) a trademark 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 trademark,

      • (ii) a trademark that was previously used in Canada and that has not been abandoned, or

      • (iii) a trademark in respect of which an application for registration was previously filed in Canada and remains pending.

  • Marginal note:Content

    (3) A statement of objection shall set out

    • (a) each ground of objection in sufficient detail to enable the responsible authority to reply to it; and

    • (b) the address of the objector’s principal office or place of business in Canada, if any, and if the objector has no office or place of business in Canada, the address of the principal office or place of business abroad and the name and address in Canada of a person or firm on whom service of any document in respect of the objection may be made with the same effect as if it had been served on the objector.

  • 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: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

    • (a) the responsible authority does not file and serve a counter statement in accordance with subsection (4) or if, in the prescribed circumstances, the responsible authority does not submit evidence or a statement that the responsible authority does not wish to submit evidence; or

    • (b) the objection is withdrawn or deemed under subsection (6) to have been withdrawn.

  • 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.

Marginal note:Prohibited adoption of indication for wines

  •  (1) No person shall adopt in connection with a business, as a trademark or otherwise,

    • (a) a protected geographical indication identifying a wine in respect of a wine 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 wine.

  • Marginal note:Prohibited use

    (2) No person shall use in connection with a business, as a trademark or otherwise,

    • (a) a protected geographical indication identifying a wine in respect of a wine not originating in the territory indicated by the protected geographical indication or adopted contrary to subsection (1); or

    • (b) a translation in any language of the geographical indication in respect of that wine.

  • Marginal note:Prohibited use

    (3) No person shall use in connection with a business, as a trademark 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 trademark 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 trademark 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 trademark 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.

Marginal note:Prohibited adoption of indication for agricultural products or food

  •  (1) No person shall adopt in connection with a business, as a trademark or otherwise,

    • (a) a protected geographical indication identifying an agricultural product or food of a category set out in the schedule in respect of an agricultural product or food belonging to the same category that does not originate in the territory indicated by the protected geographical indication; or

    • (b) a translation on the list kept under subsection 11.12(1) of the protected geographical indication in respect of that agricultural product or food.

  • Marginal note:Prohibited use

    (2) No person shall use in connection with a business, as a trademark or otherwise,

    • (a) a protected geographical indication identifying an agricultural product or food of a category set out in the schedule in respect of an agricultural product or food belonging to the same category that does not originate in the territory indicated by the protected geographical indication or adopted contrary to subsection (1); or

    • (b) a translation on the list kept under subsection 11.12(1) of the protected geographical indication in respect of that agricultural product or food.

  • Marginal note:Prohibited use

    (3) No person shall use in connection with a business, as a trademark or otherwise,

    • (a) a protected geographical indication identifying an agricultural product or food of a category set out in the schedule in respect of an agricultural product or food belonging to the same category that originates in the territory indicated by the protected geographical indication if that agricultural product or food was not produced or manufactured in accordance with the law applicable to that territory; or

    • (b) a translation on the list kept under subsection 11.12(1) of the protected geographical indication in respect of that agricultural product or food.

Marginal note:Exception when authorized

  •  (1) Sections 11.14 and 11.15 and paragraphs 12(1)(g) to (h.1) do not prevent the adoption, use or registration as a trademark or otherwise, in connection with a business, of a protected geographical indication, or any translation of it in any language, with the consent of the responsible authority.

  • Marginal note:Exception for personal names

    (2) Sections 11.14 and 11.15 do not prevent a person from using, in the course of trade, the person’s name or the name of the person’s predecessor in title, except where the name is used in such a manner as to mislead the public.

  • Marginal note:Exception for comparative advertising

    (3) Sections 11.14 and 11.15 do not prevent a person from using a protected geographical indication, or any translation of it in any language, in comparative advertising.

  • Marginal note:Exception not applicable to labels or packaging

    (4) Subsection (3) does not apply to comparative advertising on labels or packaging.

Marginal note:Continued use — wines or spirits

  •  (1) Section 11.14 does not apply to the continued and similar use of a protected geographical indication identifying a wine or spirit, or any translation of it in any language, by a Canadian who has used it in a continuous manner in relation to any business or commercial activity in respect of goods or services

    • (a) in good faith before April 15, 1994; or

    • (b) for at least 10 years before that date.

  • Marginal note:Definition of Canadian

    (2) For the purposes of subsection (1), Canadian means

    • (a) a Canadian citizen;

    • (b) a permanent resident as defined in subsection 2(1) of the Immigration and Refugee Protection Act who has been ordinarily resident in Canada for not more than one year after the day on which they first became eligible to apply for Canadian citizenship; and

    • (c) an entity that carries on business in Canada.

  • Marginal note:Use — certain cheeses

    (3) Section 11.15 does not apply to the use, in connection with a business, of any of the indications “Asiago”, “Feta”, “Φέτα” (Feta), “Fontina”, “Gorgonzola” or “Munster”, or any translation of them in any language, by a person if they or their predecessor in title used the indication or the translation in relation to any business or commercial activity in respect of an agricultural product or food of the category of cheeses, as set out in the schedule, before October 18, 2013.

  • Marginal note:Use with qualifying term

    (4) Section 11.15 does not apply to the use, in connection with a business, of any of the indications “Asiago”, “Feta”, “Φέτα” (Feta), “Fontina”, “Gorgonzola” or “Munster”, or any translation of them in any language, in respect of an agricultural product or food of the category of cheeses, as set out in the schedule, if

    • (a) a qualifying term such as “kind”, “type”, “style” or “imitation” is used in connection with the indication or the translation; and

    • (b) the geographical origin of the cheese is clearly displayed on the cheese or on the packaging in which it is distributed, or is in any other manner associated with the cheese so that notice of the cheese’s origin is given to the person to whom the cheese is transferred.

  • Marginal note:Use of the indication “Beaufort”

    (5) Section 11.15 does not apply to the use, in connection with a business, of the indication “Beaufort”, or any translation of it in any language, by a person if

    • (a) the person or their predecessor in title used the indication or the translation for at least 10 years before October 18, 2013 in relation to any business or commercial activity in respect of an agricultural product or food of the category of cheeses, as set out in the schedule; or

    • (b) the person uses the indication or the translation in relation to any business or commercial activity in respect of a cheese product that was produced in the proximity of the Beaufort Range on Vancouver Island in British Columbia.

  • Marginal note:Use of the indication “Nürnberger Bratwürste”

    (6) Section 11.15 does not apply to the use, in connection with a business, of the indication “Nürnberger Bratwürste”, or any translation of it in any language, by a person, if they or their predecessor in title used the indication or the translation in relation to any business or commercial activity in respect of an agricultural product or food of the category of fresh, frozen and processed meats, as set out in the schedule, for at least five years before October 18, 2013.

  • Marginal note:Use of the indication “Jambon de Bayonne”

    (7) Section 11.15 does not apply to the use, in connection with a business, of the indication “Jambon de Bayonne”, or any translation of it in any language, by a person, if they or their predecessor in title used the indication or the translation in relation to any business or commercial activity in respect of an agricultural product or food of the category of dry-cured meats, as set out in the schedule, for at least 10 years before October 18, 2013.

  • Marginal note:Restriction

    (8) For the purposes of subsections (3) and (5) to (7), no person is a predecessor in title if they only transferred the right to use the indication or the translation, or both.

  • 1994, c. 47, s. 192
  • 2001, c. 27, s. 271
  • 2014, c. 32, ss. 53(F), 56(F)
  • 2017, c. 6, s. 64
 
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