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
29. (1) Paragraph 30(a) of the Act is replaced by the following:
(a) a statement in ordinary commercial terms of the specific goods or services in association with which the trade-mark has been or is proposed to be used;
(2) Paragraph 30(f) of the Act is replaced by the following:
(f) 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;
(f.1) in the case of a proposed certification mark, a statement that the applicant intends to license others to use the certification mark in Canada in association with goods or services that meet the defined standard;
(3) Paragraph 30(h) of the Act is replaced by the following:
(h) a representation or description, or both, that permits the trade-mark to be clearly defined and that complies with any prescribed requirements;
(4) Section 30 of the Act is amended by adding “and” at the end of paragraph (i) and by adding the following after that paragraph:
(j) any prescribed information or statement with respect to the trade-mark.
30. The Act is amended by adding the following after section 30:
Marginal note:Standard characters
30.1 An applicant who seeks to register a trade-mark that consists only of letters, numerals, punctuation marks, diacritics or typographical symbols, or of any combination of them, without limiting the trade-mark to any particular font, size or colour shall
(a) file a representation under paragraph 30(h) 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 trade-mark to be registered in standard characters; and
(c) comply with any prescribed requirements.
31. Sections 31 to 32 of the Act are replaced by the following:
Marginal note:Further evidence — registration abroad
31. An applicant whose trade-mark has been duly registered in their country of origin and who claims that the trade-mark is registrable under paragraph 14(1)(b) shall furnish any evidence that the Registrar may require establishing the circumstances on which they rely, including the length of time during which the trade-mark has been used in any country.
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 trade-mark is distinctive at the filing date of the application for its registration if any of the following apply:
(a) the applicant claims that their trade-mark is registrable under subsection 12(3);
(b) the Registrar’s preliminary view is that the trade-mark is not inherently distinctive;
(c) the trade-mark consists exclusively of a single colour or of a combination of colours without delineated contours;
(d) the trade-mark consists exclusively or primarily of one or more of the following:
(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 trade-mark is shown to be distinctive.
32. Section 33 of the Act is replaced by the following:
Marginal note:Filing date
33. (1) The filing date of an application for the registration of a trade-mark 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 trade-mark 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 trade-mark;
(e) a list of the goods or services for which registration of the trade-mark 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.
33. (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 trade-mark 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 trade-mark 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 trade-mark 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) 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.
34. 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 trade-mark is not distinctive.
If the Registrar is not so satisfied, the Registrar shall cause the application to be advertised in the prescribed manner.
35. 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.
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