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

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Act current to 2022-01-12 and last amended on 2021-06-28. Previous Versions

Registrable Trademarks (continued)

 [Repealed, 2014, c. 20, s. 327]

 [Repealed, 2014, c. 20, s. 328]

Marginal note:Registration of confusing trademarks

 Despite section 12, confusing trademarks are registrable if the applicant is the owner of all of the confusing trademarks.

Persons Entitled to Registration of Trademarks

Marginal note:Entitlement to registration

  •  (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

    • (a) a trademark that had been previously used in Canada or made known in Canada by any other person;

    • (b) a trademark in respect of which an application for registration had been previously filed in Canada by any other person; or

    • (c) a trade name that had been previously used in Canada by any other person.

  • 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).

  • (4) [Repealed, 2014, c. 20, s. 330]

  • (5) [Repealed, 2014, c. 20, s. 330]

  • R.S., 1985, c. T-13, s. 16
  • 1994, c. 47, s. 195
  • 2014, c. 20, ss. 330, 361(E), 362(E), c. 32, s. 53

Validity and Effect of Registration

Marginal note:Effect of registration in relation to previous use, etc.

  •  (1) No application for registration of a trademark that has been advertised in accordance with section 37 shall be refused and no registration of a trademark shall be expunged or amended or held invalid on the ground of any previous use or making known of a confusing trademark or trade name by a person other than the applicant for that registration or his predecessor in title, except at the instance of that other person or his successor in title, and the burden lies on that other person or his successor to establish that he had not abandoned the confusing trademark or trade name at the date of advertisement of the applicant’s application.

  • Marginal note:When registration incontestable

    (2) In proceedings commenced after the expiration of five years from the date of registration of a trademark or from July 1, 1954, whichever is the later, no registration shall be expunged or amended or held invalid on the ground of the previous use or making known referred to in subsection (1), unless it is established that the person who adopted the registered trademark in Canada did so with knowledge of that previous use or making known.

  • R.S., 1985, c. T-13, s. 17
  • 2014, c. 20, ss. 361(E), 362(E), c. 32, s. 56(F)

Marginal note:When registration invalid

  •  (1) The registration of a trademark is invalid if

    • (a) the trademark was not registrable at the date of registration;

    • (b) the trademark is not distinctive at the time proceedings bringing the validity of the registration into question are commenced;

    • (c) the trademark has been abandoned;

    • (d) subject to section 17, the applicant for registration was not the person entitled to secure the registration; or

    • (e) the application for registration was filed in bad faith.

  • Marginal note:Exception

    (2) No registration of a trademark that had been so used in Canada by the registrant or his predecessor in title as to have become distinctive at the date of registration shall be held invalid merely on the ground that evidence of the distinctiveness was not submitted to the competent authority or tribunal before the grant of the registration.

  • R.S., 1985, c. T-13, s. 18
  • 2014, c. 20, s. 361(E), c. 32, s. 19
  • 2018, c. 27, s. 218

Marginal note:Not to limit art or industry

 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.

Marginal note:Rights conferred by registration

 Subject to sections 21, 32 and 67, the registration of a trademark in respect of any goods or services, unless shown to be invalid, gives to the owner of the trademark the exclusive right to the use throughout Canada of the trademark in respect of those goods or services.

  • R.S., 1985, c. T-13, s. 19
  • 1993, c. 15, s. 60
  • 2014, c. 20, s. 361(E), c. 32, s. 53

Marginal note:Infringement

  •  (1) The right of the owner of a registered trademark to its exclusive use is deemed to be infringed by any person who is not entitled to its use under this Act and who

    • (a) sells, distributes or advertises any goods or services in association with a confusing trademark or trade name;

    • (b) manufactures, causes to be manufactured, possesses, imports, exports or attempts to export any goods in association with a confusing trademark or trade name, for the purpose of their sale or distribution;

    • (c) sells, offers for sale or distributes any label or packaging, in any form, bearing a trademark or trade name, if

      • (i) the person knows or ought to know that the label or packaging is intended to be associated with goods or services that are not those of the owner of the registered trademark, and

      • (ii) the sale, distribution or advertisement of the goods or services in association with the label or packaging would be a sale, distribution or advertisement in association with a confusing trademark or trade name; or

    • (d) manufactures, causes to be manufactured, possesses, imports, exports or attempts to export any label or packaging, in any form, bearing a trademark or trade name, for the purpose of its sale or distribution or for the purpose of the sale, distribution or advertisement of goods or services in association with it, if

      • (i) the person knows or ought to know that the label or packaging is intended to be associated with goods or services that are not those of the owner of the registered trademark, and

      • (ii) the sale, distribution or advertisement of the goods or services in association with the label or packaging would be a sale, distribution or advertisement in association with a confusing trademark or trade name.

  • Marginal note:Deemed infringement under paragraph (1)(b)

    (1.01) An infringement under paragraph (1)(b) is presumed, unless the contrary is proven, if a person who is not entitled to use a registered trademark imports goods on a commercial scale that bear a trademark that is identical to, or cannot be distinguished in its essential aspects from, the trademark registered for such goods.

  • Marginal note:Exception — bona fide use

    (1.1) The registration of a trademark does not prevent a person from making, in a manner that is not likely to have the effect of depreciating the value of the goodwill attaching to the trademark,

    • (a) any bona fide use of his or her personal name as a trade name; or

    • (b) any bona fide use, other than as a trademark, of the geographical name of his or her place of business or of any accurate description of the character or quality of his or her goods or services.

  • Marginal note:Exception — utilitarian feature

    (1.2) The registration of a trademark does not prevent a person from using any utilitarian feature embodied in the trademark.

  • Marginal note:Exception

    (2) The registration of a trademark does not prevent a person from making any use of any of the indications mentioned in subsection 11.18(3) in association with a wine, any of the indications mentioned in subsection 11.18(4) in association with a spirit or any of the indications mentioned in subsection 11.18(4.1) in association with an agricultural product or food.

  • R.S., 1985, c. T-13, s. 20
  • 1994, c. 47, s. 196
  • 2014, c. 20, ss. 361(E), 362(E), c. 32, ss. 22, 56(F)
  • 2017, c. 6, s. 69
  • 2020, c. 1, s. 108

Marginal note:Concurrent use of confusing marks

  •  (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.

  • Marginal note:Registration of order

    (2) The rights conferred by an order made under subsection (1) take effect only if, within three months from its date, the other party makes application to the Registrar to enter it on the register in connection with the registration of the registered trademark.

  • R.S., 1985, c. T-13, s. 21
  • 2014, c. 20, ss. 333(E), 361(E)

Marginal note:Depreciation of goodwill

  •  (1) No person shall use a trademark registered by another person in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto.

  • Marginal note:Action

    (2) In any action in respect of a use of a trademark contrary to subsection (1), the court may decline to order the recovery of damages or profits and may permit the defendant to continue to sell goods bearing the trademark that were in the defendant’s possession or under their control at the time notice was given to them that the owner of the registered trademark complained of the use of the trademark.

  • R.S., 1985, c. T-13, s. 22
  • 2014, c. 20, s. 361(E), c. 32, ss. 23, 53

Certification Marks

Marginal note:Registration of certification marks

  •  (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.

  • 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.

  • R.S., 1985, c. T-13, s. 23
  • 2014, c. 20, s. 334, c. 32, s. 53

Marginal note:Registration of trademark confusing with certification mark

 With the consent of the owner of a certification mark, a trademark confusing with the certification mark may, if it exhibits an appropriate difference, be registered by some other person to indicate that the goods or services in association with which it is used have been manufactured, sold, leased, hired or performed by him as one of the persons entitled to use the certification mark, but the registration thereof shall be expunged by the Registrar on the withdrawal at any time of the consent of the owner of the certification mark or on the cancellation of the registration of the certification mark.

  • R.S., 1985, c. T-13, s. 24
  • 2014, c. 20, ss. 335(F), 361(E), c. 32, ss. 25(F), 53(E)

Marginal note:Descriptive certification mark

 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.

  • R.S., 1985, c. T-13, s. 25
  • 2014, c. 20, s. 336, c. 32, s. 26

Register of Trademarks

Marginal note:Register

  •  (1) There shall be kept under the supervision of the Registrar a register of trademarks and of transfers, disclaimers, amendments, judgments and orders relating to each registered trademark.

  • Marginal note:Information to be shown

    (2) The register shall show, with reference to each registered trademark, the following:

    • (a) the date of registration;

    • (b) a summary of the application for registration;

    • (c) a summary of all documents deposited with the application or subsequently thereto and affecting the rights to the trademark;

    • (d) particulars of each renewal;

    • (e) particulars of each change of name and address;

    • (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

    • (f) such other particulars as this Act or the regulations require to be entered thereon.

  • R.S., 1985, c. T-13, s. 26
  • 1993, c. 15, s. 61
  • 2014, c. 20, ss. 337, 361(E), c. 32, s. 27

Marginal note:Register under Unfair Competition Act

  •  (1) The register kept under the Unfair Competition Act, chapter 274 of the Revised Statutes of Canada, 1952, forms part of the register kept under this Act and, subject to subsection 44(2), no entry made therein, if properly made according to the law in force at the time it was made, is subject to be expunged or amended only because it might not properly have been made pursuant to this Act.

  • Marginal note:Trademarks registered before Unfair Competition Act

    (2) Trademarks on the register on September 1, 1932 shall be treated as design marks or word marks as defined in the Unfair Competition Act, chapter 274 of the Revised Statutes of Canada, 1952, according to the following rules:

    • (a) any trademark consisting only of words or numerals or both without any indication of a special form or appearance shall be deemed to be a word mark;

    • (b) any other trademark consisting only of words or numerals or both shall be deemed to be a word mark if at the date of its registration the words or numerals or both would have been registrable independently of any defined special form or appearance and shall also be deemed to be a design mark for reading matter presenting the special form or appearance defined;

    • (c) any trademark including words or numerals or both in combination with other features shall be deemed

      • (i) to be a design mark having the features described in the application therefor but without any meaning being attributed to the words or numerals, and

      • (ii) to be a word mark if and so far as it would at the date of registration have been registrable independently of any defined form or appearance and without being combined with any other feature; and

    • (d) any other trademark shall be deemed to be a design mark having the features described in the application therefor.

  • Marginal note:Trademarks registered under Unfair Competition Act

    (3) Trademarks registered under the Unfair Competition Act, chapter 274 of the Revised Statutes of Canada, 1952, shall, in accordance with their registration, continue to be treated as design marks or word marks as defined in that Act.

 
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