Economic Action Plan 2014 Act, No. 1 (S.C. 2014, c. 20)
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Assented to 2014-06-19
PART 6VARIOUS MEASURES
Division 25R.S., c. T-13Amendments Relating to International Treaties on Trademarks
Amendments to the Trade-marks Act
335. Section 24 of the French version of the Act is replaced by the following:
Marginal note:Enregistrement d’une marque de commerce créant de la confusion avec la marque de certification
24. Avec le consentement du propriétaire d’une marque de certification, une marque de commerce créant de la confusion avec la marque de certification peut, si elle présente une différence caractéristique, être déposée par toute autre personne en vue d’indiquer que les produits en liaison avec lesquels elle est employée ont été fabriqués, vendus, donnés à bail ou loués, et que les services en liaison avec lesquels elle est employée ont été exécutés par elle comme étant une des personnes ayant droit d’employer la marque de certification, mais l’enregistrement de cette marque de commerce est radié par le registraire sur le retrait du consentement du propriétaire de la marque de certification, ou sur annulation de l’enregistrement de la marque de certification.
336. Section 25 of the Act is replaced by the following:
Marginal note:Descriptive certification mark
25. 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.
337. Subsection 26(2) of the Act is amended by striking out “and” at the end of paragraph (e) and by adding the following after that paragraph:
(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
Marginal note:1993, c. 15, s. 62
338. Section 28 of the Act is replaced by the following:
Marginal note:List of trademark agents
28. There shall be kept under the supervision of the Registrar a list of trademark agents, which shall include the names of all persons and firms entitled to represent applicants and others, including the registered owner of a trademark and parties to the proceedings under sections 38 and 45, in all business before the Office of the Registrar of Trademarks.
Marginal note:1993, c. 15, s. 64; 1994, c. 47, s. 198
339. Sections 30 to 33 of the Act are replaced by the following:
Marginal note:Requirements for application
30. (1) A person may file with the Registrar an application for the registration of a trademark in respect of goods or services if they are using or propose to use, and are entitled to use, the trademark in Canada in association with those goods or services.
Marginal note:Contents of application
(2) The application shall contain
(a) a statement in ordinary commercial terms of the goods or services in association with which the trademark is used or proposed to be used;
(b) in the case of a certification mark, particulars of the defined standard that the use of the certification mark is intended to indicate and a statement that the applicant 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;
(c) a representation or description, or both, that permits the trademark to be clearly defined and that complies with any prescribed requirements; and
(d) any prescribed information or statement.
Marginal note:Nice Classification
(3) The goods or services referred to in paragraph (2)(a) are to be 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.
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:Standard characters
31. An applicant who seeks to register a trademark that consists only of letters, numerals, punctuation marks, diacritics or typographical symbols, or of any combination of them, without limiting the trademark to any particular font, size or colour shall
(a) file a representation under paragraph 30(2)(c) that consists only of characters for which the Registrar has adopted standard characters;
(b) include in their application a statement to the effect that they wish the trademark to be registered in standard characters; and
(c) comply with any prescribed requirements.
Marginal note:Further evidence in certain cases
32. (1) An applicant shall furnish the Registrar with any evidence that the Registrar may require establishing that the trademark is distinctive at the filing date of the application for its registration if any of the following apply:
(a) the applicant claims that their trademark is registrable under subsection 12(3);
(b) the Registrar’s preliminary view is that the trademark is not inherently distinctive;
(c) the trademark consists exclusively of a single colour or of a combination of colours without delineated contours;
(d) the trademark consists exclusively or primarily of one or more of the following signs:
(i) the three-dimensional shape of any of the goods specified in the application, or of an integral part or the packaging of any of those goods,
(ii) a mode of packaging goods,
(iii) a sound,
(iv) a scent,
(v) a taste,
(vi) a texture,
(vii) any other prescribed sign.
Marginal note:Registration to be restricted
(2) The Registrar shall, having regard to the evidence adduced, restrict the registration to the goods or services in association with which, and to the defined territorial area in Canada in which, the trademark is shown to be distinctive.
Marginal note:Filing date
33. (1) The filing date of an application for the registration of a trademark in Canada is the day on which the Registrar has received all of the following:
(a) an explicit or implicit indication that the registration of the trademark is sought;
(b) information allowing the identity of the applicant to be established;
(c) information allowing the Registrar to contact the applicant;
(d) a representation or description of the trademark;
(e) a list of the goods or services for which registration of the trademark is sought;
(f) any prescribed fees.
Marginal note:Outstanding items
(2) The Registrar shall notify the applicant whose application does not contain all the items set out in subsection (1) of the items that are outstanding and require that the applicant submit them within two months of the date of the notice. Despite section 47, that period cannot be extended.
Marginal note:Application deemed never filed
(3) If the Registrar does not receive the outstanding items within those two months, the application is deemed never to have been filed. However, any fees paid in respect of the application shall not be refunded to the applicant.
Marginal note:1994, c. 47, s. 199
340. (1) Subsection 34(1) of the Act is replaced by the following:
Marginal note:Date of application abroad deemed date of application in Canada
34. (1) Despite subsection 33(1), when an applicant files an application for the registration of a trademark in Canada after the applicant or the applicant’s predecessor in title has applied, in or for any country of the Union other than Canada, for the registration of the same or substantially the same trademark in association with the same kind of goods or services, the filing date of the application in or for the other country is deemed to be the filing date of the application in Canada and the applicant is entitled to priority in Canada accordingly despite any intervening use in Canada or making known in Canada or any intervening application or registration, if
(a) the filing date of the application in Canada is within a period of six months after the date on which the earliest application was filed in or for any country of the Union for the registration of the same or substantially the same trademark in association with the same kind of goods or services;
(b) the applicant files a request for priority in the prescribed time and manner and informs the Registrar of the filing date and country or office of filing of the application on which the request is based;
(c) the applicant, at the filing date of the application in Canada, is a citizen or national of or domiciled in a country of the Union or has a real and effective industrial or commercial establishment in a country of the Union; and
(d) the applicant furnishes, in accordance with any request under subsections (2) and (3), evidence necessary to fully establish the applicant’s right to priority.
(2) Subsection 34(2) is replaced by the following:
Marginal note:Evidence requests
(2) The Registrar may request the evidence before the day on which the trademark is registered under section 40.
(3) Section 34 of the Act is amended by adding the following after subsection (3):
Marginal note:Withdrawal of request
(4) An applicant may, in the prescribed time and manner, withdraw a request for priority.
Marginal note:Extension
(5) An applicant is not permitted to apply under section 47 for an extension of the six-month period referred to in paragraph (1)(a) until that period has ended, and the Registrar is not permitted to extend the period by more than seven days.
341. Section 36 of the Act is replaced by the following:
Marginal note:Abandonment
36. If, in the opinion of the Registrar, an applicant is in default in the prosecution of an application filed under this Act, the Registrar may, after giving notice to the applicant of the default, treat the application as abandoned unless the default is remedied within the prescribed time.
342. (1) Paragraph 37(1)(a) of the Act is replaced by the following:
(a) the application does not conform to the requirements of subsection 30(2);
(2) Subsection 37(1) of the Act is amended by striking out “or” at the end of paragraph (b), by adding “or” at the end of paragraph (c) and by replacing the portion after paragraph (c) with the following:
(d) the trademark is not distinctive.
If the Registrar is not so satisfied, the Registrar shall cause the application to be advertised in the prescribed manner.
(3) Section 37 of the Act is amended by adding the following after subsection (3):
Marginal note:Withdrawal of advertisement
(4) If, after the application has been advertised but before the trademark is registered, the Registrar is satisfied that the application should not have been advertised or was incorrectly advertised and the Registrar considers it reasonable to do so, the Registrar may withdraw the advertisement. If the Registrar withdraws the advertisement, the application is deemed never to have been advertised.
343. (1) Paragraph 38(2)(a) of the Act is replaced by the following:
(a) that the application does not conform to the requirements of subsection 30(2), without taking into account if it meets the requirement in subsection 30(3);
(2) Subsection 38(2) of the Act is amended by striking out “or” at the end of paragraph (c) and by adding the following after paragraph (d):
(e) that, at the filing date of the application in Canada, the applicant was not using and did not propose to use the trademark in Canada in association with the goods or services specified in the application; or
(f) that, at the filing date of the application in Canada, the applicant was not entitled to use the trademark in Canada in association with those goods or services.
Marginal note:1993, c. 15, s. 66(2)
(3) Subsections 38(6) to (8) of the Act are replaced by the following:
Marginal note:Power to strike
(6) At the applicant’s request, the Registrar may — at any time before the day on which the applicant files a counter statement — strike all or part of the statement of opposition if the statement or part of it
(a) is not based on any of the grounds set out in subsection (2); or
(b) does not set out a ground of opposition in sufficient detail to enable the applicant to reply to it.
Marginal note:Counter statement
(7) The applicant shall file a counter statement with the Registrar and serve a copy on the opponent in the prescribed manner and within the prescribed time after a copy of the statement of opposition has been forwarded to the applicant. The counter statement need only state that the applicant intends to respond to the opposition.
Marginal note:Evidence and hearing
(8) Both the opponent and the applicant 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 opposition is withdrawn or deemed under subsection (10) to have been withdrawn; or
(b) the application is abandoned or deemed under subsection (11) to have been abandoned.
Marginal note:Service
(9) The opponent and the applicant 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:Deemed withdrawal of opposition
(10) The opposition is deemed to have been withdrawn if, in the prescribed circumstances, the opponent does not submit and serve either evidence under subsection (8) or a statement that the opponent does not wish to submit evidence.
Marginal note:Deemed abandonment of application
(11) The application is deemed to have been abandoned if the applicant does not file and serve a counter statement within the time referred to in subsection (7) or if, in the prescribed circumstances, the applicant does not submit and serve either evidence under subsection (8) or a statement that the applicant does not wish to submit evidence.
Marginal note:Decision
(12) After considering the evidence and representations of the opponent and the applicant, the Registrar shall refuse the application, reject the opposition, or refuse the application with respect to one or more of the goods or services specified in it and reject the opposition with respect to the others. He or she shall notify the parties of the decision and the reasons for it.
Marginal note:1993, c. 15, s. 67
344. Section 39 of the Act is replaced by the following:
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; and
(b) within the scope of the original application as advertised, if the divisional application is filed on or after the day on which the 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.
Marginal note:1993, c. 15, s. 68, c. 44, ss. 231(2) and (3); 1999, c. 31, s. 210(F)
345. Section 40 of the Act is replaced by the following:
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.
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