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

Marginal note:Costs

• 38.1 (1) Subject to the regulations, the Registrar may, by order, award costs in a proceeding under section 38.

• Marginal note:Order of Federal Court

  (2) A certified copy of an order made under subsection (1) may be filed in the Federal Court and, on being filed, the order becomes and may be enforced as an order of that Court.

Marginal note:Divisional application

• 39 (1) After having filed an application for the registration of a trademark, an applicant may limit the original application to one or more of the goods or services that were within its scope and file a divisional application for the registration of the same trademark in association with any other goods or services that were

  • (a) within the scope of the original application on its filing date, determined without taking into account subsection 34(1); and

  • (b) within the scope of the original application on the day on which the divisional application is filed, if the divisional application is filed on or after the day on which the original application is advertised under subsection 37(1).

• Marginal note:Identification

  (2) A divisional application shall indicate that it is a divisional application and shall, in the prescribed manner, identify the corresponding original application.

• Marginal note:Separate application

  (3) A divisional application is a separate application, including with respect to the payment of any fees.

• Marginal note:Filing date

  (4) A divisional application’s filing date is deemed to be the original application’s filing date.

• Marginal note:Division of divisional application

  (5) A divisional application may itself be divided under subsection (1), in which case this section applies as if that divisional application were an original application.

Registration of Trademarks

Marginal note:Registration of trademarks

40 When an application for the registration of a trademark either has not been opposed and the time for the filing of a statement of opposition has expired, or has been opposed and the opposition has been decided in favour of the applicant, the Registrar shall register the trademark in the name of the applicant and issue a certificate of its registration or, if an appeal is taken, shall act in accordance with the final judgment given in the appeal.

Amendment of the Register

Marginal note:Amendments to register

• 41 (1) The Registrar may, on application by the registered owner of a trademark made in the prescribed manner and on payment of the prescribed fee, make any of the following amendments to the register:

  • (a) correct any error or enter any change in the name, address or description of the registered owner;

  • (b) cancel the registration of the trademark;

  • (c) amend the statement of the goods or services in respect of which the trademark is registered;

  • (d) amend the particulars of the defined standard that the use of a certification mark is intended to indicate;

  • (e) enter a disclaimer that does not in any way extend the rights given by the existing registration of the trademark; or

  • (f) subject to the regulations, merge registrations of the trademark that stem, under section 39, from the same original application.

• Marginal note:Conditions

  (2) An application to extend the statement of goods or services in respect of which a trademark is registered has the effect of an application for registration of the trademark in respect of the goods or services specified in the application for amendment.

• Marginal note:Obvious error

  (3) The Registrar may, within six months after an entry in the register is made, correct any error in the entry that is obvious from the documents relating to the registered trademark in question that are, at the time that the entry is made, on file in the Registrar’s office.

• Marginal note:Removal of registration

  (4) The Registrar may, within three months after the registration of a trademark, remove the registration from the register if the Registrar registered the trademark without considering a previously filed request for an extension of time to file a statement of opposition.

42 [Repealed, 2014, c. 20, s. 347]

Marginal note:Additional representations

43 The registered owner of any trademark shall furnish such additional representations thereof as the Registrar may by notice demand and, if he fails to comply with that notice, the Registrar may by a further notice, fix a reasonable time after which, if the representations are not furnished, he may expunge the registration of the trademark.

Marginal note:Notice for information

• 44 (1) The Registrar may at any time, and shall at the request of any person who pays the prescribed fee, by notice in writing require the registered owner of any trademark that was on the register on July 1, 1954 to furnish him within three months from the date of the notice with the information that would be required on an application for the registration of the trademark made at the date of the notice.

• Marginal note:Amendments to register

  (2) The Registrar may amend the registration of the trademark in accordance with the information furnished to him under subsection (1).

• Marginal note:Failure to give information

  (3) Where the information required by subsection (1) is not furnished, the Registrar shall by a further notice fix a reasonable time after which, if the information is not furnished, he may expunge the registration of the trademark.

Marginal note:Registrar may require amendment

• 44.1 (1) The Registrar may give notice to the registered owner of a trademark requiring the owner to furnish the Registrar, in the prescribed time and manner, with a statement of the goods or services in respect of which the trademark is registered, in which those goods or services are grouped in the manner described in subsection 30(3).

• Marginal note:Amendments to register

  (2) The Registrar may amend the register in accordance with the statement furnished under subsection (1).

• Marginal note:Failure to furnish statement

  (3) If the statement required by subsection (1) is not furnished, the Registrar shall by a further notice fix a reasonable time after which, if the statement is not furnished, the Registrar may expunge the registration of the trademark or refuse to renew it.

• Marginal note:Disagreement

  (4) Any question arising as to the class within which any goods or services are to be grouped shall be determined by the Registrar, whose determination is not subject to appeal.

Marginal note:Registrar may request evidence of use

• 45 (1) After three years beginning on the day on which a trademark is registered, unless the Registrar sees good reason to the contrary, the Registrar shall, at the written request of any person who pays the prescribed fee — or may, on his or her own initiative — give notice to the registered owner of the trademark requiring the registered owner to furnish within three months an affidavit or a statutory declaration showing, with respect to all the goods or services specified in the registration or to those that may be specified in the notice, whether the trademark was in use in Canada at any time during the three-year period immediately preceding the date of the notice and, if not, the date when it was last so in use and the reason for the absence of such use since that date.

• Marginal note:Form of evidence

  (2) The Registrar shall not receive any evidence other than the affidavit or statutory declaration, but may receive representations made in the prescribed manner and within the prescribed time by the registered owner of the trademark or by the person at whose request the notice was given.

• Marginal note:Service

  (2.1) The registered owner of the trademark shall, in the prescribed manner and within the prescribed time, serve on the person at whose request the notice was given any evidence that the registered owner submits to the Registrar. Those parties shall, in the prescribed manner and within the prescribed time, serve on each other any written representations that they submit to the Registrar.

• Marginal note:Failure to serve

  (2.2) The Registrar is not required to consider any evidence or written representations that was not served in accordance with subsection (2.1).

• Marginal note:Effect of non-use

  (3) Where, by reason of the evidence furnished to the Registrar or the failure to furnish any evidence, it appears to the Registrar that a trademark, either with respect to all of the goods or services specified in the registration or with respect to any of those goods or services, was not used in Canada at any time during the three year period immediately preceding the date of the notice and that the absence of use has not been due to special circumstances that excuse the absence of use, the registration of the trademark is liable to be expunged or amended accordingly.

• Marginal note:Notice to owner

  (4) When the Registrar reaches a decision whether or not the registration of a trademark ought to be expunged or amended, he shall give notice of his decision with the reasons therefor to the registered owner of the trademark and to the person at whose request the notice referred to in subsection (1) was given.

• Marginal note:Costs

  (4.1) Subject to the regulations, the Registrar may, by order, award costs in a proceeding under this section.

• Marginal note:Order of Federal Court

  (4.2) A certified copy of an order made under subsection (4.1) may be filed in the Federal Court and, on being filed, the order becomes and may be enforced as an order of that Court.

• Marginal note:Action by Registrar

  (5) The Registrar shall act in accordance with his decision if no appeal therefrom is taken within the time limited by this Act or, if an appeal is taken, shall act in accordance with the final judgment given in the appeal.

Confidentiality Orders

Marginal note:Request to keep evidence confidential

• 45.1 (1) A party to a proceeding under section 11.13, 38 or 45 may make a request to the Registrar, in accordance with the regulations, that some or all of the evidence that they intend to submit to the Registrar be kept confidential.

• Marginal note:Restriction

  (2) The Registrar shall not consider a request if the party who makes it submits the evidence to the Registrar before the Registrar either gives notice under subsection (3) or makes an order under subsection (4).

• Marginal note:Registrar not satisfied

  (3) If the Registrar is not satisfied that the evidence should be kept confidential, the Registrar shall notify the party who made the request accordingly.

• Marginal note:Confidentiality order

  (4) If the Registrar is satisfied that the evidence should be kept confidential, he or she may, on any terms that he or she considers appropriate, order that the evidence be kept confidential.

• Marginal note:Consequences of order

  (5) If the Registrar makes an order under subsection (4),

  • (a) the party who made the request may submit the evidence to the Registrar and, if it is submitted, shall serve it on the other party in accordance with the order;

  • (b) subsections 11.13(5.1), 38(9) and 45(2.1) do not apply with respect to the evidence;

  • (c) section 29 does not apply to the evidence; and

  • (d) the Registrar shall take measures to ensure that the evidence is kept confidential when the evidence or a copy of the evidence is transmitted to the Federal Court under section 60.

• Marginal note:Order of Federal Court

  (6) A certified copy of an order made under subsection (4) may be filed in the Federal Court and, on being filed, the order becomes and may be enforced as an order of that Court.

Renewal of Registrations

Marginal note:Term

• 46 (1) Subject to any other provision of this Act, the registration of a trademark is on the register for an initial period of 10 years beginning on the day of the registration and for subsequent renewal periods of 10 years if, for each renewal, the prescribed renewal fee is paid within the prescribed period.

• Marginal note:Notice to renew

  (2) If the initial period or a renewal period expires and the prescribed renewal fee has not been paid, the Registrar shall send a notice to the registered owner stating that if the fee is not paid within the prescribed period, the registration will be expunged.

• Marginal note:Failure to renew

  (3) If the prescribed renewal fee is not paid within the prescribed period, the Registrar shall expunge the registration. The registration is deemed to have been expunged at the expiry of the initial period or the last renewal period.

• Marginal note:Renewal

  (4) If the prescribed renewal fee is paid within the prescribed period, the renewal period begins at the expiry of the initial period or the last renewal period.

• Marginal note:Extension

  (5) A registered owner is not permitted to apply under section 47 for an extension of the prescribed period until that period has expired, and the Registrar is not permitted to extend the period by more than seven days.

• Marginal note:Prescribed period

  (6) For the purposes of this section, the prescribed period begins at least six months before the expiry of the initial period or the renewal period and ends no earlier than six months after the expiry of that period.

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.