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

Marginal note:Exception for disuse

• 11.18 (1) Sections 11.14 and 11.15 and paragraphs 12(1)(g) to (h.1) do not prevent the adoption, use or registration as a trademark or otherwise, in connection with a business, of a protected geographical indication, or any translation of it in any language, if the indication has ceased to be protected by the law applicable to the territory in which the wine or spirit or the agricultural product or food is identified as originating, or has fallen into disuse in that territory.

• Marginal note:Exceptions for customary names

  (2) Sections 11.14 and 11.15 and paragraphs 12(1)(g) to (h.1) do not prevent the adoption, use or registration as a trademark or otherwise, in connection with a business, of a protected geographical indication that is identical to

  • (a) a term customary in common language in Canada as the common name for the wine or spirit or the agricultural product or food;

  • (b) a customary name of a grape variety existing in Canada on or before the day on which the WTO Agreement comes into force; or

  • (c) a customary name of a plant variety or an animal breed existing in Canada on or before the day on which the indication is entered on the list kept under subsection 11.12(1).

• Marginal note:Exception for translation — customary term

  (2.1) Sections 11.14 and 11.15 and paragraphs 12(1)(g) to (h.1) do not prevent the adoption, use or registration as a trademark or otherwise, in connection with a business, of a translation of a protected geographical indication that is identical to a term customary in common language in Canada as the common name for a wine or spirit or an agricultural product or food.

• Marginal note:Exception for common names for wines

  (3) Subsections 11.14(1) to (3) and paragraph 12(1)(g) do not prevent the adoption, use or registration as a trademark or otherwise, in connection with a business, of the following indications in respect of wines:

• Marginal note:Exception for common names for spirits

  (4) Subsections 11.14(4) to (6) and paragraph 12(1)(h) do not prevent the adoption, use or registration as a trademark or otherwise, in connection with a business, of the following indications in respect of spirits:

  • (a) [Repealed, SOR/2004-85]

  • (b) Marc;

  • (c) [Repealed, SOR/2004-85]

  • (d) Sambuca;

  • (e) Geneva Gin;

  • (f) Genièvre;

  • (g) Hollands Gin;

  • (h) London Gin;

  • (i) Schnapps;

  • (j) Malt Whiskey;

  • (k) Eau-de-vie;

  • (l) Bitters;

  • (m) Anisette;

  • (n) Curacao; and

  • (o) Curaçao.

• Marginal note:Exception for common names for agricultural products or food

  (4.1) Section 11.15 and paragraph 12(1)(h.1) do not prevent the adoption, use or registration as a trademark or otherwise, in connection with a business, of the following indications in respect of an agricultural product or food:

  • (a) Valencia Orange;

  • (b) Orange Valencia;

  • (c) Valencia;

  • (d) Black Forest Ham;

  • (e) Jambon Forêt Noire;

  • (f) Tiroler Bacon;

  • (g) Bacon Tiroler;

  • (h) Parmesan;

  • (i) St. George Cheese;

  • (j) Fromage St-George; and

  • (k) Fromage St-Georges.

• Marginal note:Spelling variations

  (4.2) For purposes of subsection (4.1), the indications set out in paragraphs (f) and (g) include spelling variations of those indications in English and French.

• Marginal note:Exception — “county”

  (4.3) Section 11.15 and paragraph 12(1)(h.1) do not prevent the adoption, use or registration as a trademark or otherwise, in connection with a business, of the term “county”, or any translation of it in any language, in association with an agricultural product or food if that term is used to refer to the name of a territorial division or an administrative division of a territory.

• Marginal note:Powers of Governor in Council

  (5) The Governor in Council may, by order, amend any of subsections (3) to (4.1) by adding or deleting an indication in respect of a wine or spirit or an agricultural product or food, as the case may be.

Marginal note:Exception for failure to take proceedings

• 11.19 (1) Sections 11.14 and 11.15 do not apply to the adoption or use of a trademark by a person if no proceedings are taken to enforce those sections in respect of that person’s use or adoption of the trademark within five years after use of the trademark by that person or that person’s predecessor-in-title has become generally known in Canada or the trademark has been registered by that person in Canada, unless it is established that that person or that person’s predecessor-in-title first used or adopted the trademark with knowledge that such use or adoption was contrary to section 11.14 or 11.15, as the case may be.

• Marginal note:Proceedings after five years

  (2) In proceedings respecting a registered trademark commenced after the expiry of five years from the earlier of the date of registration of the trademark in Canada and the date on which use of the trademark by the person who filed the application for registration of the trademark or that person’s predecessor in title has become generally known in Canada, the registration must not be expunged or amended or held invalid on the basis of any of paragraphs 12(1)(g) to (h.1) unless it is established that the person who filed the application for registration of the trademark did so with knowledge that the trademark was in whole or in part a protected geographical indication.

Marginal note:Acquired rights — wines

• 11.2 (1) Section 11.14 and paragraph 12(1)(g) do not prevent the adoption, use or registration as a trademark in association with a wine of a protected geographical indication, or any translation of it in any language, by a person if they have, in good faith, before the later of January 1, 1996 and the day on which protection of the indication in the territory indicated by the indication begins,

  • (a) filed an application in accordance with section 30 for, or secured the registration of, the trademark in association with a wine; or

  • (b) acquired rights through use to the trademark in respect of a wine.

• Marginal note:Acquired rights — spirits

  (2) Section 11.14 and paragraph 12(1)(h) do not prevent the adoption, use or registration as a trademark in association with a spirit of a protected geographical indication, or any translation of it in any language, by a person if they have, in good faith, before the later of January 1, 1996 and the day on which protection of the indication in the territory indicated by the indication begins,

  • (a) filed an application in accordance with section 30 for, or secured the registration of, the trademark in association with a spirit; or

  • (b) acquired rights through use to the trademark in respect of a spirit.

• Marginal note:Acquired rights — agricultural products and food

  (3) Section 11.15 and paragraph 12(1)(h.1) do not prevent the adoption, use or registration as a trademark in association with an agricultural product or food of a category set out in the schedule of a protected geographical indication, or any translation of it in any language, by a person if they have, in good faith, before the day on which a statement by the Minister is published under subsection 11.12(2) or (2.1) in respect of the indication or translation,

  • (a) filed an application in accordance with section 30 for, or secured the registration of, the trademark in association with an agricultural product or food belonging to the same category; or

  • (b) acquired rights through use to the trademark in respect of an agricultural product or food belonging to the same category.

Marginal note:Removal from the list

• 11.21 (1) On the application of any person interested, the Federal Court has exclusive jurisdiction to order the Registrar to remove an indication or a translation from the list of geographical indications kept under subsection 11.12(1) on any of the grounds set out in subsection (2) or (3), as the case may be.

• Marginal note:Grounds — indication

  (2) The grounds for the removal of an indication are

  • (a) that, on the day on which the application is made, the indication is not a geographical indication;

  • (b) that, on the day on which the application is made, the indication is identical to a term customary in common language in Canada as the common name for the wine or spirit or the agricultural product or food;

  • (c) that, except in the case of an indication identifying a wine or spirit or an agricultural product or food as originating in Canada, when the statement by the Minister in respect of the indication is published or on the day on which the application is made, the indication is not protected by the law applicable to the territory in which the wine or spirit or the agricultural product or food is identified as originating;

  • (d) in the case of an indication identifying an agricultural product or food, that, when the statement by the Minister is published, the indication is confusing with

    • (i) a registered trademark, or

    • (ii) a trademark that was previously used in Canada and that has not been abandoned; or

  • (e) in the case of an indication identifying an agricultural product or food, that

    • (i) when the statement by the Minister is published, the indication is confusing with a trademark in respect of which an application for registration was previously filed in Canada, and

    • (ii) on the day on which the application is made, that application for registration remains pending or the trademark is registered.

• Marginal note:Grounds — translation

  (3) The grounds for the removal of a translation are

  • (a) that, on the day on which the application is made, the translation is identical to a term customary in common language in Canada as the common name for the agricultural product or food;

  • (b) that, when the statement by the Minister in respect of the translation is published, the translation is confusing with

    • (i) a registered trademark, or

    • (ii) a trademark that was previously used in Canada and that has not been abandoned;

  • (c) that

    • (i) when the statement by the Minister in respect of the translation is published, the translation is confusing with a trademark in respect of which an application for registration was previously filed in Canada, and

    • (ii) on the day on which the application is made, that application for registration remains pending or the trademark is registered; or

  • (d) that, when the statement by the Minister in respect of the translation is published, the translation is not a faithful translation of the indication.

• Marginal note:How application is made

  (4) An application shall be made by the filing of an originating notice of motion, by counter-claim in an action for an act contrary to section 11.14 or 11.15, or by statement of claim in an action claiming additional relief under this Act.

• Marginal note:Summary proceedings

  (5) The proceedings on an application shall be heard and determined summarily on evidence adduced by affidavit unless the Federal Court directs otherwise.

• Marginal note:Effect of order on translation

  (6) If the Federal Court orders the removal of an indication identifying an agricultural product or food from the list, the Registrar shall remove any translation of that indication from the list.

Marginal note:CETA indications

11.22 Paragraph 11.18(2)(a) and section 11.21 do not apply with respect to a protected geographical indication that is listed in Part A of Annex 20-A, as amended from time to time, of Chapter Twenty of the Comprehensive Economic and Trade Agreement between Canada and the European Union and its Member States, done at Brussels on October 30, 2016.

Marginal note:Canada — Korea indications

11.23 Paragraphs 11.18(2)(a) and (c) and section 11.21 do not apply with respect to an indication that is a protected geographical indication and that is included in the following list:

• (a) GoryeoHongsam;

• (b) GoryeoBaeksam;

• (c) GoryeoSusam;

• (d) IcheonSsal;

• (e) ginseng rouge de Corée;

• (f) ginseng blanc de Corée;

• (g) ginseng frais de Corée;

• (h) riz Icheon;

• (i) Korean Red Ginseng;

• (j) Korean White Ginseng;

• (k) Korean Fresh Ginseng;

• (l) Icheon Rice.

Marginal note:Powers of Governor in Council

11.24 The Governor in Council may, by order, amend the schedule by adding or deleting a category of agricultural product or food.

Registrable Trademarks

Marginal note:When trademark registrable

• 12 (1) Subject to subsection (2), a trademark is registrable if it is not

  • (a) a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years;

  • (b) whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the goods or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin;

  • (c) the name in any language of any of the goods or services in connection with which it is used or proposed to be used;

  • (d) confusing with a registered trademark;

  • (e) a sign or combination of signs whose adoption is prohibited by section 9 or 10;

  • (f) a denomination the adoption of which is prohibited by section 10.1;

  • (g) in whole or in part a protected geographical indication identifying a wine, where the trademark is to be registered in association with a wine not originating in a territory indicated by the geographical indication;

  • (h) in whole or in part a protected geographical indication identifying a spirit, where the trademark is to be registered in association with a spirit not originating in a territory indicated by the geographical indication;

  • (h.1) in whole or in part a protected geographical indication, and the trademark is to be registered in association with an agricultural product or food — belonging to the same category, as set out in the schedule, as the agricultural product or food identified by the protected geographical indication — not originating in a territory indicated by the geographical indication; and

  • (i) subject to subsection 3(3) and paragraph 3(4)(a) of the Olympic and Paralympic Marks Act, a mark the adoption of which is prohibited by subsection 3(1) of that Act.

• Marginal note:Utilitarian function

  (2) A trademark is not registrable if, in relation to the goods or services in association with which it is used or proposed to be used, its features are dictated primarily by a utilitarian function.

• 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.