Combating Counterfeit Products Act (S.C. 2014, c. 32)
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Assented to 2014-12-09
R.S., c. T-13TRADE-MARKS ACT
16. Section 13 of the Act is repealed.
17. Section 15 of the Act is replaced by the following:
Marginal note:Registration of confusing trade-marks
15. Despite sections 12 and 14, confusing trade-marks are registrable if the applicant is the owner of all of the confusing trade-marks.
18. The portion of subsection 16(3) of the Act before paragraph (a) is replaced by the following:
Marginal note:Proposed certification marks or trade-marks
(3) Any applicant who has filed an application in accordance with section 30 for registration of a proposed trade-mark or proposed certification mark that is registrable is entitled, subject to sections 38 and 40, to secure its registration in respect of the goods or services specified in the application, unless at the filing date of the application it was confusing with
19. Subsection 18(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) subject to section 17, the applicant for registration was not the person entitled to secure the registration.
20. The Act is amended by adding the following after section 18:
Marginal note:Not to limit art or industry
18.1 The registration of a trade-mark may be expunged by the Federal Court on the application of any interested person if the Court decides that the registration is likely to unreasonably limit the development of any art or industry.
21. [Deleted]
Marginal note:1994, c. 47, s. 196
22. Subsection 20(1) of the Act is replaced by the following:
Marginal note:Infringement
20. (1) The right of the owner of a registered trade-mark 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 trade-mark or trade-name;
(b) manufactures, causes to be manufactured, possesses, imports, exports or attempts to export any goods in association with a confusing trade-mark 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 trade-mark 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 trade-mark, 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 trade-mark 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 trade-mark 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 trade-mark, 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 trade-mark or trade-name.
Marginal note:Exception — bona fide use
(1.1) The registration of a trade-mark 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 trade-mark,
(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 trade-mark, 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 trade-mark does not prevent a person from using any utilitarian feature embodied in the trade-mark.
23. Subsection 22(2) of the Act is replaced by the following:
Marginal note:Action
(2) In any action in respect of a use of a trade-mark 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 trade-mark 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 trade-mark complained of the use of the trade-mark.
24. (1) Subsections 23(1) to (3) of the Act are replaced by the following:
Marginal note:Registration of certification marks
23. (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.
(2) Subsection 23(4) of the English version of the Act is replaced by the following:
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.
25. 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.
26. 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 trade-mark, 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.
27. (1) Subsection 26(1) of the Act is replaced by the following:
Marginal note:Register
26. (1) There shall be kept under the supervision of the Registrar a register of trade-marks and of transfers, disclaimers, amendments, judgments and orders relating to each registered trade-mark.
(2) The portion of subsection 26(2) of the Act before paragraph (a) is replaced by the following:
Marginal note:Information to be shown
(2) The register shall show, with reference to each registered trade-mark, the following:
28. Sections 28 and 29 of the Act are replaced by the following:
Marginal note:List of trade-mark agents
28. There shall be kept under the supervision of the Registrar a list of trade-mark agents, which shall include the names of all persons and firms entitled to represent applicants and others in the presentation and prosecution of applications for the registration of a trade-mark or in other business before the Office of the Registrar of Trade-marks.
Marginal note:Available to public
29. (1) The following shall be made available to the public at the times and in the manner established by the Registrar:
(a) the register;
(b) all applications for the registration of a trade-mark, including those abandoned;
(c) the list of trade-mark agents;
(d) the list of geographical indications kept under subsection 11.12(1);
(e) all requests made under paragraph 9(1)(n); and
(f) all documents filed with the Registrar relating to a registered trade-mark, an application for the registration of a trade-mark, a request under paragraph 9(1)(n) and objection proceedings under section 11.13.
Marginal note:Certified copies
(2) The Registrar shall, on request and on payment of the prescribed fee, furnish a copy certified by the Registrar of any entry in the register or lists, or of any of those applications, requests or documents.
Marginal note:Destruction of records
29.1 Despite subsection 29(1), the Registrar may destroy
(a) an application for the registration of a trade-mark that is refused and any document relating to the application, at any time after six years after the day on which the application is refused or, if an appeal is taken, on which final judgment in the appeal upholding the refusal is given;
(b) an application for the registration of a trade-mark that is abandoned and any document relating to the application, at any time after six years after the day on which the application is abandoned;
(c) a document relating to an expunged registration of a trade-mark, at any time after six years after the day on which the registration is expunged;
(d) a request under paragraph 9(1)(n) and any document relating to it, at any time after six years after
(i) the day on which the request is abandoned,
(ii) the day on which the request is refused or, if an appeal is taken, on which final judgment in the appeal upholding the refusal is given, or
(iii) the day on which a court declares that the badge, crest, emblem or mark in question is invalid or, if an appeal is taken, on which final judgment in the appeal upholding the declaration is given;
(e) a document relating to objection proceedings under section 11.13 with respect to a geographical indication that is removed from the list of geographical indications under subsection 11.12(4), at any time after six years after the day on which it is removed; and
(f) a document relating to objection proceedings under section 11.13 with respect to which a decision is made that the indication is not a geographical indication, at any time after six years after the day on which the decision is made or, if an appeal is taken, on which final judgment in the appeal upholding the decision is given.
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