Trademarks Act

Marginal note:Statement of objection

• 11.13 (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 trade-mark,

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

    • (iii) a trade-mark 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 trade-mark,

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

    • (iii) a trade-mark 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.