Budget Implementation Act, 2018, No. 2 (S.C. 2018, c. 27)

• a) Le pays de l’Union où l’auteur d’une demande d’enregistrement d’une marque de commerce avait, à la date de la demande, un établissement industriel ou commercial effectif et sérieux;

• Marginal note:For greater certainty

  (3) For greater certainty, and despite any public notice of adoption and use given by the Registrar under paragraph (1)(n), subparagraph (1)(n)(iii) does not apply with respect to a badge, crest, emblem or mark if the entity that made the request for the public notice is not a public authority or no longer exists.

• Marginal note:Notice of non-application

  (4) In the circumstances set out in subsection (3), the Registrar may, on his or her own initiative or at the request of a person who pays a prescribed fee, give public notice that subparagraph (1)(n)(iii) does not apply with respect to the badge, crest, emblem or mark.

Marginal note:Exception

11.01 Despite section 11, a person may use a badge, crest, emblem or mark described in subparagraph 9(1)(n)(iii) if, at the time of use, the entity that made the request for a public notice under paragraph 9(1)(n) with respect to the badge, crest, emblem or mark is not a public authority or no longer exists.

• (e) the application for registration was filed in bad faith.

Marginal note:Withdrawal of opposition

36.1 If, in the opinion of the Registrar, an opponent is in default in the continuation of an opposition referred to in section 38, the Registrar may, after giving notice to the opponent of the default, treat the opposition as withdrawn unless the default is remedied within the time specified in the notice.

• (a.1) that the application was filed in bad faith;

Marginal note:Costs

• 38.1 (1) Subject to the regulations, the Registrar may, by order, award costs in a proceeding under section 38.

• Marginal note:Order of Federal Court

  (2) A certified copy of an order made under subsection (1) may be filed in the Federal Court and, on being filed, the order becomes and may be enforced as an order of that Court.

• Marginal note:Costs

  (4.1) Subject to the regulations, the Registrar may, by order, award costs in a proceeding under this section.

• Marginal note:Order of Federal Court

  (4.2) A certified copy of an order made under subsection (4.1) may be filed in the Federal Court and, on being filed, the order becomes and may be enforced as an order of that Court.

Confidentiality Orders

Marginal note:Request to keep evidence confidential

• 45.1 (1) A party to a proceeding under section 11.13, 38 or 45 may make a request to the Registrar, in accordance with the regulations, that some or all of the evidence that they intend to submit to the Registrar be kept confidential.

• Marginal note:Restriction

  (2) The Registrar shall not consider a request if the party who makes it submits the evidence to the Registrar before the Registrar either gives notice under subsection (3) or makes an order under subsection (4).

• Marginal note:Registrar not satisfied

  (3) If the Registrar is not satisfied that the evidence should be kept confidential, the Registrar shall notify the party who made the request accordingly.

• Marginal note:Confidentiality order

  (4) If the Registrar is satisfied that the evidence should be kept confidential, he or she may, on any terms that he or she considers appropriate, order that the evidence be kept confidential.

• Marginal note:Consequences of order

  (5) If the Registrar makes an order under subsection (4),

  • (a) the party who made the request may submit the evidence to the Registrar and, if it is submitted, shall serve it on the other party in accordance with the order;

  • (b) subsections 11.13(5.1), 38(9) and 45(2.1) do not apply with respect to the evidence;

  • (c) section 29 does not apply to the evidence; and

  • (d) the Registrar shall take measures to ensure that the evidence is kept confidential when the evidence or a copy of the evidence is transmitted to the Federal Court under section 60.

• Marginal note:Order of Federal Court

  (6) A certified copy of an order made under subsection (4) may be filed in the Federal Court and, on being filed, the order becomes and may be enforced as an order of that Court.

Marginal note:Renewal for goods or services

46.1 The registration of a trademark may be renewed for any of the goods or services in respect of which the trademark is registered.

• Marginal note:Exception

  (1.1) If, within a period of three years beginning on the date of registration of a trademark, the owner of the registered trademark makes an application claiming that an act has been done contrary to section 19, 20 or 22, the owner is not entitled to relief unless the trademark was in use in Canada at any time during that period or special circumstances exist that excuse the absence of use in Canada during that period.

• Marginal note:Additional evidence

  (5) If, on an appeal under subsection (1), the Federal Court grants leave to adduce evidence in addition to that adduced before the Registrar, the Court may exercise, with respect to that additional evidence, any discretion vested in the Registrar.

• (n) respecting the awarding of costs under subsections 11.13(9), 38.1(1) and 45(4.1);

• (o) respecting requests made under subsection 45.1(1); and

• (p) prescribing anything that by this Act is to be prescribed.

Marginal note:Case management

• 65.3 (1) For greater certainty, the Governor in Council may make regulations under paragraphs 65(i) and 65.2(b) respecting the case management by the Registrar of proceedings referred to in those paragraphs.

• Marginal note:Time or manner

  (2) The Governor in Council may make regulations authorizing the Registrar to fix, despite any time or manner that is provided for under this Act with respect to any of the proceedings referred to in subsection (1), the time by which or the manner in which any step in a case-managed proceeding is to be completed and, in that case, the provisions of this Act and the regulations apply with respect to the proceeding with any modifications that the circumstances require.

Marginal note:Non-application of paragraph 38(2)(a.1)

68.2 No person shall oppose an application for registration of a trademark on the ground set out in paragraph 38(2)(a.1) if the application was advertised under subsection 37(1) before the day on which that paragraph comes into force.

• Marginal note:Regulations

  (2) For greater certainty, a regulation made under this Act applies to an application referred to in subsection (1), unless the regulation provides otherwise.

• Marginal note:Registrable if distinctive

  (3) A trademark that is not registrable by reason of paragraph (1)(a) or (b) is registrable if it is distinctive at the filing date of an application for its registration, determined without taking into account subsection 34(1), having regard to all the circumstances of the case including the length of time during which it has been used.

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, determined without taking into account subsection 34(1), if any of the following apply:

• (e) that, at the filing date of the application in Canada, determined without taking into account subsection 34(1), 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, determined without taking into account subsection 34(1), the applicant was not entitled to use the trademark in Canada in association with those goods or services.

• (a) within the scope of the original application on its filing date, determined without taking into account subsection 34(1); and

• (b) within the scope of the original application on the day on which the divisional application is filed, if the divisional application is filed on or after the day on which the original application is advertised under subsection 37(1).

• (a) within the scope of the original application on its filing date, determined without taking into account subsection 34(1); and

• (b) within the scope of the original application on the day on which the divisional application is filed, if the divisional application is filed on or after the day on which the original application is advertised under subsection 37(1).

• Marginal note:Registrable if distinctive

  (3) A trade-mark that is not registrable by reason of paragraph (1)(a) or (b) is registrable if it is distinctive at the filing date of an application for its registration, determined without taking into account subsection 34(1), having regard to all the circumstances of the case including the length of time during which it has been used.