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

28 [Repealed, 2018, c. 27, s. 255]

Marginal note:Available to public

• 29 (1) The following shall be made available to the public at the times and in the manner established by the Registrar:

  • (a) the register;

  • (b) all applications for the registration of a trademark, including those abandoned;

  • (c) [Repealed, 2018, c. 27, s. 256]

  • (d) the list of geographical indications kept under subsection 11.12(1);

  • (e) all requests made under paragraph 9(1)(n); and

  • (f) all documents filed with the Registrar relating to a registered trademark, an application for the registration of a trademark, a request under paragraph 9(1)(n) and objection proceedings under section 11.13.

• Marginal note:Certified copies

  (2) The Registrar shall, on request and on payment of the prescribed fee, furnish a copy certified by the Registrar of any entry in the register or list, or of any of those applications, requests or documents.

Marginal note:Destruction of records

29.1 Despite subsection 29(1), the Registrar may destroy

• (a) an application for the registration of a trademark that is refused and any document relating to the application, at any time after six years after the day on which the application is refused or, if an appeal is taken, on which final judgment in the appeal upholding the refusal is given;

• (b) an application for the registration of a trademark that is abandoned and any document relating to the application, at any time after six years after the day on which the application is abandoned;

• (c) a document relating to an expunged registration of a trademark, at any time after six years after the day on which the registration is expunged;

• (d) a request under paragraph 9(1)(n) and any document relating to it, at any time after six years after

  • (i) the day on which the request is abandoned,

  • (ii) the day on which the request is refused or, if an appeal is taken, on which final judgment in the appeal upholding the refusal is given, or

  • (iii) the day on which a court declares that the badge, crest, emblem or mark in question is invalid or, if an appeal is taken, on which final judgment in the appeal upholding the declaration is given;

• (e) a document relating to objection proceedings under section 11.13 with respect to a geographical indication that is removed from the list of geographical indications under subsection 11.12(4), at any time after six years after the day on which it is removed; and

• (f) a document relating to objection proceedings under section 11.13 with respect to which a decision is made that the indication is not a geographical indication, at any time after six years after the day on which the decision is made or, if an appeal is taken, on which final judgment in the appeal upholding the decision is given.

Applications for Registration of Trademarks

Marginal note:Requirements for application

• 30 (1) A person may file with the Registrar an application for the registration of a trademark in respect of goods or services if they are using or propose to use, and are entitled to use, the trademark in Canada in association with those goods or services.

• Marginal note:Contents of application

  (2) The application shall contain

  • (a) a statement in ordinary commercial terms of the goods or services in association with which the trademark is used or proposed to be used;

  • (b) 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;

  • (c) a representation or description, or both, that permits the trademark to be clearly defined and that complies with any prescribed requirements; and

  • (d) any prescribed information or statement.

• Marginal note:Nice Classification

  (3) The goods or services referred to in paragraph (2)(a) are to be grouped according to the classes of the Nice Classification, each group being preceded by the number of the class of the Nice Classification to which that group of goods or services belongs and presented in the order of the classes of the Nice Classification.

• Marginal note:Disagreement

  (4) Any question arising as to the class within which any goods or services are to be grouped shall be determined by the Registrar, whose determination is not subject to appeal.

Marginal note:Standard characters

31 An applicant who seeks to register a trademark that consists only of letters, numerals, punctuation marks, diacritics or typographical symbols, or of any combination of them, without limiting the trademark to any particular font, size or colour shall

• (a) file a representation under paragraph 30(2)(c) 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 trademark to be registered in standard characters; and

• (c) comply with any prescribed requirements.

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:

  • (a) the applicant claims that their trademark is registrable under subsection 12(3);

  • (b) the Registrar’s preliminary view is that the trademark is not inherently distinctive;

  • (c) the trademark consists exclusively of a single colour or of a combination of colours without delineated contours;

  • (d) the trademark consists exclusively or primarily of one or more of the following signs:

    • (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 trademark is shown to be distinctive.

Marginal note:Filing date

• 33 (1) The filing date of an application for the registration of a trademark 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 trademark 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 trademark;

  • (e) a list of the goods or services for which registration of the trademark 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.

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 trademark 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 trademark 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 trademark 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.

• Marginal note:Evidence requests

  (2) The Registrar may request the evidence before the day on which the trademark is registered under section 40.

• Marginal note:How and when evidence must be furnished

  (3) The Registrar may specify in the request the manner in which the evidence must be furnished and the period within which it must be furnished.

• 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.

Marginal note:Disclaimer

35 The Registrar may require an applicant for registration of a trademark to disclaim the right to the exclusive use apart from the trademark of such portion of the trademark as is not independently registrable, but the disclaimer does not prejudice or affect the applicant’s rights then existing or thereafter arising in the disclaimed matter, nor does the disclaimer prejudice or affect the applicant’s right to registration on a subsequent application if the disclaimed matter has then become distinctive of the applicant’s goods or services.

Marginal note:Abandonment

36 If, in the opinion of the Registrar, an applicant is in default in the prosecution of an application filed under this Act, the Registrar may, after giving notice to the applicant of the default, treat the application as abandoned unless the default is remedied within the prescribed time.

Marginal note:When applications to be refused

• 37 (1) The Registrar shall refuse an application for the registration of a trademark if he is satisfied that

  • (a) the application does not conform to the requirements of subsection 30(2);

  • (b) the trademark is not registrable,

  • (c) the applicant is not the person entitled to registration of the trademark because it is confusing with another trademark for the registration of which an application is pending, or

  • (d) the trademark is not distinctive.

  If the Registrar is not so satisfied, the Registrar shall cause the application to be advertised in the prescribed manner.

• Marginal note:Notice to applicant

  (2) The Registrar shall not refuse any application without first notifying the applicant of his objections thereto and his reasons for those objections, and giving the applicant adequate opportunity to answer those objections.

• Marginal note:Doubtful cases

  (3) Where the Registrar, by reason of a registered trademark, is in doubt whether the trademark claimed in the application is registrable, he shall, by registered letter, notify the owner of the registered trademark of the advertisement of the application.

• Marginal note:Withdrawal of advertisement

  (4) If, after the application has been advertised but before the trademark is registered, the Registrar is satisfied that the application should not have been advertised or was incorrectly advertised and the Registrar considers it reasonable to do so, the Registrar may withdraw the advertisement. If the Registrar withdraws the advertisement, the application is deemed never to have been advertised.

Marginal note:Statement of opposition

• 38 (1) Within two months after the advertisement of an application for the registration of a trademark, any person may, on payment of the prescribed fee, file a statement of opposition with the Registrar.

• Marginal note:Grounds

  (2) A statement of opposition may be based on any of the following grounds:

  • (a) that the application does not conform to the requirements of subsection 30(2), without taking into account if it meets the requirement in subsection 30(3);

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

  • (b) that the trademark is not registrable;

  • (c) that the applicant is not the person entitled to registration of the trademark;

  • (d) that the trademark is not distinctive;

  • (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.

• Marginal note:Content

  (3) A statement of opposition shall set out

  • (a) the grounds of opposition in sufficient detail to enable the applicant to reply thereto; and

  • (b) the address of the opponent’s principal office or place of business in Canada, if any, and if the opponent has no office or place of business in Canada, the address of his principal office or place of business abroad and the name and address in Canada of a person or firm on whom service of any document in respect of the opposition may be made with the same effect as if it had been served on the opponent himself.

• Marginal note:Frivolous opposition

  (4) If the Registrar considers that the opposition does not raise a substantial issue for decision, he shall reject it and shall give notice of his decision to the opponent.

• Marginal note:Substantial issue

  (5) If the Registrar considers that the opposition raises a substantial issue for decision, he shall forward a copy of the statement of opposition to the applicant.

• 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.

• (7.1) [Repealed, 2014, c. 20, s. 343]

• (7.2) [Repealed, 2014, c. 20, s. 343]

• 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.