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Trademarks Act (R.S.C., 1985, c. T-13)

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Act current to 2022-11-16 and last amended on 2021-06-28. Previous Versions

Unfair Competition and Prohibited Signs (continued)

Marginal note:Warranty of lawful use

 Every person who in the course of trade transfers the property in or the possession of any goods bearing, or in packages bearing, any trademark or trade name shall, unless before the transfer he otherwise expressly states in writing, be deemed to warrant, to the person to whom the property or possession is transferred, that the trademark or trade name has been and may be lawfully used in connection with the goods.

  • R.S., 1985, c. T-13, s. 8
  • 2014, c. 20, ss. 361(E), 362(E), c. 32, ss. 53, 54(F)

Marginal note:Prohibited marks

  •  (1) No person shall adopt in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for,

    • (a) the Royal Arms, Crest or Standard;

    • (b) the arms or crest of any member of the Royal Family;

    • (c) the standard, arms or crest of His Excellency the Governor General;

    • (d) any word or symbol likely to lead to the belief that the goods or services in association with which it is used have received, or are produced, sold or performed under, royal, vice-regal or governmental patronage, approval or authority;

    • (e) the arms, crest or flag adopted and used at any time by Canada or by any province or municipal corporation in Canada in respect of which the Registrar has, at the request of the Government of Canada or of the province or municipal corporation concerned, given public notice of its adoption and use;

    • (f) the emblem of the Red Cross on a white ground, formed by reversing the federal colours of Switzerland and retained by the Geneva Convention for the Protection of War Victims of 1949 as the emblem and distinctive sign of the Medical Service of armed forces and used by the Canadian Red Cross Society, or the expression “Red Cross” or “Geneva Cross”;

    • (g) the emblem of the Red Crescent on a white ground adopted for the same purpose as specified in paragraph (f);

    • (g.1) the third Protocol emblem — commonly known as the “Red Crystal” — referred to in Article 2, paragraph 2 of Schedule VII to the Geneva Conventions Act and composed of a red frame in the shape of a square on edge on a white ground, adopted for the same purpose as specified in paragraph (f);

    • (h) the equivalent sign of the Red Lion and Sun used by Iran for the same purpose as specified in paragraph (f);

    • (h.1) the international distinctive sign of civil defence (equilateral blue triangle on an orange ground) referred to in Article 66, paragraph 4 of Schedule V to the Geneva Conventions Act;

    • (i) any territorial or civic flag or any national, territorial or civic arms, crest or emblem, of a country of the Union, if the flag, arms, crest or emblem is on a list communicated under article 6ter of the Convention or pursuant to the obligations under the Agreement on Trade-related Aspects of Intellectual Property Rights set out in Annex 1C to the WTO Agreement stemming from that article, and the Registrar gives public notice of the communication;

    • (i.1) any official sign or hallmark indicating control or warranty adopted by a country of the Union, if the sign or hallmark is on a list communicated under article 6ter of the Convention or pursuant to the obligations under the Agreement on Trade-related Aspects of Intellectual Property Rights set out in Annex 1C to the WTO Agreement stemming from that article, and the Registrar gives public notice of the communication;

    • (i.2) any national flag of a country of the Union;

    • (i.3) any armorial bearing, flag or other emblem, or the name or any abbreviation of the name, of an international intergovernmental organization, if the armorial bearing, flag, emblem, name or abbreviation is on a list communicated under article 6ter of the Convention or pursuant to the obligations under the Agreement on Trade-related Aspects of Intellectual Property Rights set out in Annex 1C to the WTO Agreement stemming from that article, and the Registrar gives public notice of the communication;

    • (j) any scandalous, obscene or immoral word or device;

    • (k) any matter that may falsely suggest a connection with any living individual;

    • (l) the portrait or signature of any individual who is living or has died within the preceding thirty years;

    • (m) the words “United Nations” or the official seal or emblem of the United Nations;

    • (n) any badge, crest, emblem or mark

      • (i) adopted or used by any of Her Majesty’s Forces as defined in the National Defence Act,

      • (ii) of any university, or

      • (iii) adopted and used by any public authority, in Canada as an official mark for goods or services,

      in respect of which the Registrar has, at the request of Her Majesty or of the university or public authority, as the case may be, given public notice of its adoption and use;

    • (n.1) any armorial bearings granted, recorded or approved for use by a recipient pursuant to the prerogative powers of Her Majesty as exercised by the Governor General in respect of the granting of armorial bearings, if the Registrar has, at the request of the Governor General, given public notice of the grant, recording or approval; or

    • (o) the name “Royal Canadian Mounted Police” or “R.C.M.P.” or any other combination of letters relating to the Royal Canadian Mounted Police, or any pictorial representation of a uniformed member thereof.

  • Marginal note:Excepted uses

    (2) Nothing in this section prevents the adoption, use or registration as a trademark or otherwise, in connection with a business, of any mark

    • (a) described in subsection (1) with the consent of Her Majesty or such other person, society, authority or organization as may be considered to have been intended to be protected by this section; or

    • (b) consisting of, or so nearly resembling as to be likely to be mistaken for

      • (i) an official sign or hallmark mentioned in paragraph (1)(i.1), except in respect of goods that are the same or similar to the goods in respect of which the official sign or hallmark has been adopted, or

      • (ii) an armorial bearing, flag, emblem, name or abbreviation mentioned in paragraph (1)(i.3), unless the use of the mark is likely to mislead the public as to a connection between the user and the organization.

  • R.S., 1985, c. T-13, s. 9
  • 1990, c. 14, s. 8
  • 1993, c. 15, s. 58
  • 1994, c. 47, s. 191
  • 1999, c. 31, s. 209(F)
  • 2007, c. 26, s. 6
  • 2014, c. 20, ss. 323, 361(E), c. 32, ss. 11, 53, 56(F)

Marginal note:Further prohibitions

 If any sign or combination of signs has by ordinary and bona fide commercial usage become recognized in Canada as designating the kind, quality, quantity, destination, value, place of origin or date of production of any goods or services, no person shall adopt it as a trademark in association with the goods or services or others of the same general class or use it in a way likely to mislead, nor shall any person so adopt or so use any sign or combination of signs so nearly resembling that sign or combination as to be likely to be mistaken for it.

  • R.S., 1985, c. T-13, s. 10
  • 2014, c. 20, s. 324, c. 32, s. 53

Marginal note:Further prohibitions

 Where a denomination must, under the Plant Breeders’ Rights Act, be used to designate a plant variety, no person shall adopt it as a trademark in association with the plant variety or another plant variety of the same species or use it in a way likely to mislead, nor shall any person so adopt or so use any mark so nearly resembling that denomination as to be likely to be mistaken therefor.

Marginal note:Further prohibitions

 No person shall use in connection with a business, as a trademark or otherwise, any sign or combination of signs adopted contrary to section 9 or 10.

Marginal note:Further prohibitions

 No person shall use in connection with a business, as a trademark or otherwise, any denomination adopted contrary to section 10.1.

Geographical Indications

Marginal note:Definitions

  •  (1) The following definitions apply in this section and in sections 11.12 to 11.24.

    Minister

    Minister means the Minister designated under subsection (2). (ministre)

    responsible authority

    responsible authority means, in relation to a wine or spirit, or an agricultural product or food of a category set out in the schedule, the person, firm or other entity that, in the Minister’s opinion, is, by reason of state or commercial interest, sufficiently connected with and knowledgeable about that wine or spirit or that agricultural product or food to be a party to any proceedings under this Act. (autorité compétente)

  • Marginal note:Designation of Minister

    (2) The Governor in Council may, by order, designate any federal minister to be the Minister for the purposes of this section and sections 11.12 to 11.24.

  • Marginal note:When indication confusing with trademark

    (3) For the purposes of sections 11.13 and 11.21, an indication identifying an agricultural product or food is confusing with a trademark if the use of both the indication and the trademark in the same area would be likely to lead to the inference that the agricultural product or food associated with the indication originates from the same source as the goods or services associated with the trademark.

  • Marginal note:What to be considered

    (4) For the purposes of sections 11.13 and 11.21, in determining whether an indication is confusing with a trademark, the Registrar or the Federal Court, as the case may be, shall have regard to all the surrounding circumstances, including

    • (a) the length of time that the indication has been used to identify the agricultural product or food with which it is associated as originating in the territory, or the region or locality of a territory, and the extent to which it has become known;

    • (b) the degree of resemblance between the indication and the trademark, including in appearance or sound or in the ideas suggested by them; and

    • (c) with respect to the trademark,

      • (i) its inherent distinctiveness and the extent to which it has become known,

      • (ii) the length of time that it has been in use, and

      • (iii) the nature of the goods, services or business that is associated with it.

Marginal note:List

  •  (1) There shall be kept under the supervision of the Registrar a list of geographical indications and, in the case of geographical indications identifying an agricultural product or food, translations of those indications.

  • Marginal note:Statement of Minister — indication

    (2) If a statement by the Minister in respect of an indication is published on the website of the Canadian Intellectual Property Office setting out the information mentioned in subsection (3), the Registrar shall enter the indication, and any translation of the indication set out in the statement, on the list if

    • (a) no statement of objection has been filed and served on the responsible authority in accordance with subsection 11.13(1) and the time for the filing of a statement of objection has expired; or

    • (b) a statement of objection has been so filed and served, but it has been withdrawn or deemed under subsection 11.13(6) to have been withdrawn or it has been rejected under subsection 11.13(7) or, if an appeal is taken, it is rejected in the final judgment given in the appeal.

  • Marginal note:Statement of Minister — translation

    (2.1) If a statement by the Minister is published on the website of the Canadian Intellectual Property Office setting out the information mentioned in subsection (3.1) in respect of a translation of an indication on the list that identifies an agricultural product or food, the Registrar shall enter the translation on the list if

    • (a) no statement of objection has been filed and served on the responsible authority in accordance with subsection 11.13(1) and the time for the filing of the statement of objection has expired; or

    • (b) a statement of objection has been so filed and served, but it has been withdrawn or deemed under subsection 11.13(6) to have been withdrawn or it has been rejected under subsection 11.13(7) or, if an appeal is taken, it is rejected in the final judgment given in the appeal.

  • Marginal note:Information — indication

    (3) For the purposes of subsection (2), the statement by the Minister must set out all of the following information:

    • (a) that the Minister proposes that the indication and, if applicable, a translation of the indication, in the case of an indication that identifies an agricultural product or food, be entered on the list;

    • (b) in the case of an indication that identifies a wine or spirit, that the indication identifies a wine or that the indication identifies a spirit;

    • (b.1) in the case of an indication that identifies an agricultural product or food, the common name of the agricultural product or food and the category set out in the schedule to which it belongs;

    • (c) the territory, or the region or locality of a territory, in which the wine or spirit or the agricultural product or food is identified as originating;

    • (d) the name of the responsible authority in relation to the wine or spirit or the agricultural product or food and the address of the responsible authority’s principal office or place of business in Canada or, if the responsible authority has no office or place of business in Canada, the name and address in Canada of a person or firm on whom any document may be served with the same effect as if it had been served on the responsible authority itself;

    • (e) the quality, reputation or other characteristic of the wine or spirit or the agricultural product or food that, in the Minister’s opinion, qualifies that indication as a geographical indication;

    • (f) that, except in the case of an indication identifying a wine or spirit or an agricultural product or food as originating in Canada, the indication is protected by the law applicable to the territory in which the wine or spirit or the agricultural product or food is identified as originating, as well as particulars of the protection.

  • Marginal note:Information — translation

    (3.1) For the purposes of subsection (2.1), the statement by the Minister must set out all of the following information:

    • (a) that the Minister proposes that the translation be entered on the list;

    • (b) the indication on the list that corresponds to the translation;

    • (c) the common name of the agricultural product or food that the indication identifies and the category set out in the schedule to which it belongs;

    • (d) the name of the responsible authority in relation to the agricultural product or food and the address of the responsible authority’s principal office or place of business in Canada or, if the responsible authority has no office or place of business in Canada, the name and address in Canada of a person or firm on whom any document may be served with the same effect as if it had been served on the responsible authority itself.

  • Marginal note:Removal from list

    (4) The Registrar shall remove an indication or any translation of an indication from the list

    • (a) on the publication of a statement by the Minister on the website of the Canadian Intellectual Property Office specifying that the indication or the translation is to be removed; or

    • (b) if the Federal Court makes an order under subsection 11.21(1) for the removal of the indication or the translation.

  • Marginal note:Obvious error

    (5) The Registrar may, within six months after the day on which an indication or a translation of an indication is entered on the list, correct any error in that entry that is obvious from the documents relating to the indication or the translation in question that are, at the time that the entry is made, on file in the Registrar’s office.

  • Marginal note:Evidence of entry

    (6) A copy of any entry on the list purporting to be certified to be true by the Registrar is evidence of the facts set out in it.

  • Marginal note:Evidence of statement

    (7) Evidence of a statement by the Minister may be given by the production of a copy of the statement purporting to be certified to be true by the Registrar.

  • Marginal note:Certified copies

    (8) The Registrar shall, on request and on payment of the prescribed fee, furnish a copy certified by the Registrar of any entry on the list or of any statement by the Minister.

  • 1994, c. 47, s. 192
  • 2017, c. 6, s. 61
 
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