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
36. The Act is amended by adding the following after section 39:
Marginal note:Divisional application
39.1 (1) After having filed an application for the registration of a trade-mark, 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 trade-mark 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.
37. (1) Subsection 40(1) of the Act is replaced by the following:
Marginal note:Registration of trade-marks
40. (1) When an application for the registration of a trade-mark, other than a proposed trade-mark or proposed certification mark, is allowed, the Registrar shall register the trade-mark and issue a certificate of its registration.
(2) Subsection 40(2) of the French version of the Act is replaced by the following:
Marginal note:Marque de commerce projetée
(2) Lorsqu’une demande d’enregistrement d’une marque de commerce projetée est admise, le registraire en donne avis au requérant. Il enregistre la marque de commerce et délivre un certificat de son enregistrement après avoir reçu une déclaration portant que le requérant, son successeur en titre ou l’entité à qui est octroyée, par le requérant ou avec son autorisation, une licence d’emploi de la marque de commerce aux termes de laquelle il contrôle directement ou indirectement les caractéristiques ou la qualité des produits et services a commencé à employer la marque de commerce au Canada, en liaison avec les produits ou services spécifiés dans la demande.
(3) Subsection 40(3) of the Act is replaced by the following:
Marginal note:Proposed certification mark
(2.1) When an application for the registration of a proposed certification mark is allowed, the Registrar shall give notice to the applicant accordingly and shall register the certification mark and issue a certificate of registration on receipt of a declaration that the use of the certification mark in Canada, in association with the goods or services specified in the application, has been commenced by an entity that is licensed by or with the authority of the applicant to use the certification mark.
Marginal note:Abandonment of application
(3) An application for registration referred to in subsection (2) or (2.1) is deemed to be abandoned if the Registrar has not received the declaration before the later of
(a) six months after the date of the Registrar’s notice, and
(b) three years after the filing date of the application in Canada.
38. (1) The portion of subsection 41(1) of the Act before paragraph (a) is replaced by the following:
Marginal note:Amendments to register
41. (1) The Registrar may, on application by the registered owner of a trade-mark made in the prescribed manner and on payment of the prescribed fee, make any of the following amendments to the register:
(2) Subsection 41(1) of the Act is amended by striking out “or” at the end of paragraph (d), by adding “or” at the end of paragraph (e) and by adding the following after paragraph (e):
(f) subject to the regulations, merge registrations of the trade-mark that stem, under section 39.1, from the same original application.
(3) Section 41 of the Act is amended by adding the following after subsection (2):
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 trade-mark in question that are, at the time that the entry is made, on file in the Registrar’s office.
39. Subsection 45(1) of the Act is replaced by the following:
Marginal note:Registrar may request evidence of user
45. (1) The Registrar may at any time — and, at the written request made after three years from the date of the registration of a trade-mark by any person who pays the prescribed fee, the Registrar shall, unless he or she sees good reason to the contrary — give notice to the registered owner of the trade-mark 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 the Registrar may specify in the notice, whether the trade-mark 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.
40. Section 48 of the Act is amended by adding the following after subsection (3):
Marginal note:Removal of registration
(4) The Registrar shall remove the registration of a transfer of a registered trade-mark on being furnished with evidence satisfactory to him or her that the transfer should not have been registered.
41. Section 49 of the Act and the heading before it are replaced by the following:
CHANGE OF PURPOSE IN USE OF TRADE-MARK
Marginal note:Change of purpose
49. If a sign or combination of signs is used by a person as a trade-mark for any of the purposes or in any of the manners mentioned in the definition “certification mark” or “trade-mark” in section 2, no application for the registration of the trade-mark shall be refused and no registration of the trade-mark shall be expunged, amended or held invalid merely on the ground that the person or a predecessor in title uses the trade-mark or has used it for any other of those purposes or in any other of those manners.
42. The Act is amended by adding the following after section 51:
OFFENCES AND PUNISHMENT
Marginal note:Sale, etc., of goods
51.01 (1) Every person commits an offence who sells or offers for sale, or distributes on a commercial scale, any goods in association with a trade-mark, if that sale or distribution is or would be contrary to section 19 or 20 and the person knows that
(a) the trade-mark is identical to, or cannot be distinguished in its essential aspects from, a trade-mark registered for such goods; and
(b) the owner of that registered trade-mark has not consented to the sale, offering for sale, or distribution of the goods in association with the trade-mark.
(c) [Deleted]
Marginal note:Manufacture, etc., of goods
(2) Every person commits an offence who manufactures, causes to be manufactured, possesses, imports, exports or attempts to export any goods, for the purpose of their sale or of their distribution on a commercial scale, if that sale or distribution would be contrary to section 19 or 20 and the person knows that
(a) the goods bear a trade-mark that is identical to, or that cannot be distinguished in its essential aspects from, a trade-mark registered for such goods; and
(b) the owner of that registered trade-mark has not consented to having the goods bear the trade-mark.
(c) [Deleted]
Marginal note:Services
(3) Every person commits an offence who sells or advertises services in association with a trade-mark, if that sale or advertisement is contrary to section 19 or 20 and the person knows that
(a) the trade-mark is identical to, or cannot be distinguished in its essential aspects from, a registered trade-mark registered for such services; and
(b) the owner of the registered trade-mark has not consented to the sale or advertisement in association with the trade-mark.
(c) [Deleted]
Marginal note:Labels or packaging
(4) Every person commits an offence who manufactures, causes to be manufactured, possesses, imports, exports or attempts to export any label or packaging, in any form, for the purpose of its sale or of its distribution on a commercial scale or for the purpose of the sale, distribution on a commercial scale or advertisement of goods or services in association with it, if that sale, distribution or advertisement would be contrary to section 19 or 20 and the person knows that
(a) the label or packaging bears a trade-mark that is identical to, or that cannot be distinguished in its essential aspects from, a registered trade-mark;
(b) the label or packaging is intended to be associated with goods or services for which that registered trade-mark is registered; and
(c) the owner of that registered trade-mark has not consented to having the label or packaging bear the trade-mark.
(d) [Deleted]
Marginal note:Trafficking in labels or packaging
(5) Every person commits an offence who sells or offers for sale, or distributes on a commercial scale, any label or packaging, in any form, if the sale, distribution or advertisement of goods or services in association with the label or packaging would be contrary to section 19 or 20 and the person knows that
(a) the label or packaging bears a trade-mark that is identical to, or that cannot be distinguished in its essential aspects from, a registered trade-mark;
(b) the label or packaging is intended to be associated with goods or services for which that registered trade-mark is registered;
(c) the owner of that registered trade-mark has not consented to having the label or packaging bear the trademark.
Marginal note:Registration of trade-mark
(5.1) In a prosecution for an offence under any of subsections (1) to (5), it is not necessary for the prosecutor to prove that the accused knew that the trade-mark was registered.
Marginal note:Punishment
(6) Every person who commits an offence under any of subsections (1) to (5) is liable
(a) on conviction on indictment, to a fine of not more than $1,000,000 or to imprisonment for a term of not more than five years or to both; or
(b) on summary conviction, to a fine of not more than $25,000 or to imprisonment for a term of not more than six months or to both.
Marginal note:Limitation Period
(7) Proceedings by way of summary conviction for an offence under this section may be instituted no later than two years after the day on which the subject-matter of the proceedings arose.
Marginal note:Disposition order
(8) The court before which any proceedings for an offence under this section are taken may, on a finding of guilt, order that any goods, labels, or packaging in respect of which the offence was committed, any advertising materials relating to those goods and any equipment used to manufacture those goods, labels or packaging be destroyed or otherwise disposed of.
Marginal note:Notice
(9) Before making an order for the destruction or other disposition of equipment under subsection (8), the court shall require that notice be given to the owner of the equipment and to any other person who, in the opinion of the court, appears to have a right or interest in the equipment, unless the court is of the opinion that the interests of justice do not require that the notice be given.
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