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INTELLECTUAL PROPERTY RIGHTS

NATIONAL LEGISLATION - CANADA

An Act relating to trade-marks and unfair competition


(Continued)

 

Statement of objection

11.13 (1) Within three months after the publication in the Canada Gazette of a statement referred to in subsection 11.12(2), any person interested may, on payment of the prescribed fee, file with the Registrar, and serve on the responsible authority in the prescribed manner, a statement of objection.

Ground

(2) A statement of objection may be based only on the ground that the indication is not a geographical indication.

Content

(3) A statement of objection shall set out

  1. the ground of objection in sufficient detail to enable the responsible authority to reply thereto; and

  2. the address of the objector's principal office or place of business in Canada, if any, and if the objector has no office or place of business in Canada, the address of the 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 objection may be made with the same effect as if it had been served on the objector.

Counter statement

(4) Within three months after a statement of objection has been served on the responsible authority, the responsible authority may file a counter statement with the Registrar and serve a copy on the objector in the prescribed manner, and if the responsible authority does not so file and serve a counter statement, the indication shall not be entered on the list of geographical indications.

Evidence and hearing

(5) Both the objector and the responsible authority shall be given an opportunity, in the manner prescribed, to submit evidence and to make representations to the Registrar unless

  1. the responsible authority does not file and serve a counter statement in accordance with subsection (4) or if, in the prescribed circumstances, the responsible authority does not submit evidence or a statement that the responsible authority does not wish to submit evidence; or

  2. the objection is withdrawn or deemed under subsection (6) to have been withdrawn.

Withdrawal of objection

(6) The objection shall be deemed to have been withdrawn if, in the prescribed circumstances, the objector does not submit evidence or a statement that the objector does not wish to submit evidence.

Decision

(7) After considering the evidence and representations of the objector and the responsible authority, the Registrar shall decide that the indication is not a geographical indication or reject the objection, and notify the parties of the decision and the reasons for the decision.

1994, c. 47, s. 192.

Prohibited adoption of indication for wines

11.14 (1) No person shall adopt in connection with a business, as a trade-mark or otherwise,

     
  1. a protected geographical indication identifying a wine in respect of a wine not originating in the territory indicated by the protected geographical indication; or

  2. a translation in any language of the geographical indication in respect of that wine.

Prohibited use

(2) No person shall use in connection with a business, as a trade-mark or otherwise,

  1. a protected geographical indication identifying a wine in respect of a wine not originating in the territory indicated by the protected geographical indication or adopted contrary to subsection (1); or

  2. a translation in any language of the geographical indication in respect of that wine.

1994, c. 47, s. 192.

Prohibited adoption of indication for spirits

11.15 (1) No person shall adopt in connection with a business, as a trade-mark or otherwise,

  1. a protected geographical indication identifying a spirit in respect of a spirit not originating in the territory indicated by the protected geographical indication; or

  2. a translation in any language of the geographical indication in respect of that spirit.

Prohibited use

(2) No person shall use in connection with a business, as a trade-mark or otherwise,

  1. a protected geographical indication identifying a spirit in respect of a spirit not originating in the territory indicated by the protected geographical indication or adopted contrary to subsection (1); or

  2. a translation in any language of the geographical indication in respect of that spirit.

1994, c. 47, s. 192.

Exception for personal names

11.16 (1) Sections 11.14 and 11.15 do not prevent a person from using, in the course of trade, that person's name or the name of the person's predecessor-in-title, except where the name is used in such a manner as to mislead the public.

Exception for comparative advertising

(2) Subject to subsection (3), sections 11.14 and 11.15 do not prevent a person from using a protected geographical indication in comparative advertising in respect of a wine or spirit.

Exception not applicable to packaging

(3) Subsection (2) does not apply to comparative advertising on labels or packaging associated with a wine or spirit.

1994, c. 47, s. 192.

Continued use

11.17 (1) Where a Canadian has used a protected geographical indication in a continuous manner in relation to any business or commercial activity in respect of goods or services

  1. in good faith before April 15, 1994, or

  2. for at least ten years before that date,

section 11.14 or 11.15, as the case may be, does not apply to any continued or similar use by that Canadian.

Definition of "Canadian"

(2) For the purposes of this section, "Canadian" includes

  1. a Canadian citizen;

  2. a permanent resident within the meaning of the Immigration Act who has been ordinarily resident in Canada for not more than one year after the time at which the permanent resident first became eligible to apply for Canadian citizenship; and

  3. an entity that carries on business in Canada.

1994, c. 47, s. 192.

Exception for disuse

11.18 (1) Notwithstanding sections 11.14 and 11.15 and paragraphs 12(1)(g) and (h), nothing in any of those provisions prevents the adoption, use or registration as a trade-mark or otherwise, in connection with a business, of a protected geographical indication identifying a wine or spirit if the indication has ceased to be protected by the laws applicable to the WTO Member for which the indication is protected, or has fallen into disuse in that Member.

Exceptions for customary names

(2) Notwithstanding sections 11.14 and 11.15 and paragraphs 12(1)(g) and (h), nothing in any of those provisions prevents the adoption, use or registration as a trade-mark or otherwise, in connection with a business, of an indication in respect of a wine or spirit

  1. that is identical with a term customary in common language in Canada as the common name for the wine or spirit, as the case may be; or

  2. that is identical with a customary name of a grape variety existing in Canada on or before the day on which the Agreement comes into force.

Exception for generic names for wines

(3) Notwithstanding sections 11.14 and 11.15 and paragraphs 12(1)(g) and (h), nothing in any of those provisions prevents the adoption, use or registration as a trade-mark or otherwise, in connection with a business, of the following indications in respect of wines:

  1. Champagne;

  2. Port;

  3. Porto;

  4. Sherry;

  5. Chablis;

  6. Burgundy;

  7. Bourgogne;

  8. Rhine;

  9. Rhin;

  10. Sauterne;

  11. Sauternes;

  12. Claret;

  13. Bordeaux;

  14. Chianti;

  15. Madeira;

  16. Malaga;

  17. Marsala;

  18. Medoc;

  19. Médoc;

  20. Moselle;

  21. Mosel; and

  22. Tokay.

Exception for generic names for spirits

(4) Notwithstanding sections 11.14 and 11.15 and paragraphs 12(1)(g) and (h), nothing in any of those provisions prevents the adoption, use or registration as a trade-mark or otherwise, in connection with a business, of the following indications in respect of spirits:

  1. Grappa;

  2. Marc;

  3. Ouzo;

  4. Sambuca;

  5. Geneva Gin;

  6. Genièvre;

  7. Hollands Gin;

  8. London Gin;

  9. Schnapps;

  10. Malt Whiskey;

  11. Eau-de-vie;

  12. Bitters;

  13. Anisette;

  14. Curacao; and

  15. Curaçao.

Governor in Council amendment

(5) The Governor in Council may, by order, amend subsection (3) or (4) by adding thereto or deleting therefrom an indication in respect of a wine or spirit, as the case may be.

1994, c. 47, s. 192.

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 trade-mark by a person if no proceedings are taken to enforce those sections in respect of that person's use or adoption of the trade-mark within five years after use of the trade-mark by that person or that person's predecessor-in-title has become generally known in Canada or the trade-mark 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 trade-mark with knowledge that such use or adoption was contrary to section 11.14 or 11.15, as the case may be.

Idem

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

1994, c. 47, s. 192.

Transitional

11.2 Notwithstanding sections 11.14 and 11.15 and paragraphs 12(1)(g) and (h), where a person has in good faith

  1. filed an application in accordance with section 30 for, or secured the registration of, a trade-mark that is identical with or similar to the geographical indication in respect of a wine or spirit protected by the laws applicable to a WTO Member, or

  2. acquired rights to a trade-mark in respect of such a wine or spirit through use, before the later of the date on which this section comes into force and the date on which protection in respect of the wine or spirit by the laws applicable to that Member commences, nothing in any of those provisions prevents the adoption, use or registration of that trade-mark by that person.

1994, c. 47, s. 192.

 

REGISTRABLE TRADE-MARKS

 

When trade-mark registrable

12. (1) Subject to section 13, a trade-mark is registrable if it is not

  1. 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;

  2. whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares 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;

  3. the name in any language of any of the wares or services in connection with which it is used or proposed to be used;

  4. confusing with a registered trade-mark;

  5. a mark of which the adoption is prohibited by section 9 or 10;

  6. a denomination the adoption of which is prohibited by section 10.1;

  7. in whole or in part a protected geographical indication, where the trade-mark is to be registered in association with a wine not originating in a territory indicated by the geographical indication; and

  8. in whole or in part a protected geographical indication, where the trade-mark is to be registered in association with a spirit not originating in a territory indicated by the geographical indication.

Idem

(2) A trade-mark that is not registrable by reason of paragraph (1)(a) or (b) is registrable if it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration.

R.S., 1985, c. T-13, s. 12; 1990, c. 20, s. 81; 1993, c. 15, s. 59(F); 1994, c. 47, s. 193.

When distinguishing guises registrable

13. (1) A distinguishing guise is registrable only if

     
  1. it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration; and

  2. the exclusive use by the applicant of the distinguishing guise in association with the wares or services with which it has been used is not likely unreasonably to limit the development of any art or industry.

Effect of registration

(2) No registration of a distinguishing guise interferes with the use of any utilitarian feature embodied in the distinguishing guise.

Not to limit art or industry

(3) The registration of a distinguishing guise may be expunged by the Federal Court on the application of any interested person if the Court decides that the registration has become likely unreasonably to limit the development of any art or industry.

R.S., c. T-10, s. 13; R.S., c. 10(2nd Supp.), s. 64.

Registration of marks registered abroad

14. (1) Notwithstanding section 12, a trade-mark that the applicant or the applicant's predecessor in title has caused to be duly registered in or for the country of origin of the applicant is registrable if, in Canada,

  1. it is not confusing with a registered trade-mark;

  2. it is not without distinctive character, having regard to all the circumstances of the case including the length of time during which it has been used in any country;

  3. it is not contrary to morality or public order or of such a nature as to deceive the public; or

  4. it is not a trade-mark of which the adoption is prohibited by section 9 or 10.

Trade-marks regarded as registered abroad

(2) A trade-mark that differs from the trade-mark registered in the country of origin only by elements that do not alter its distinctive character or affect its identity in the form under which it is registered in the country of origin shall be regarded for the purpose of subsection (1) as the trade-mark so registered.

R.S., 1985, c. T-13, s. 14; 1994, c. 47, s. 194.

Registration of confusing marks

15. (1) Notwithstanding section 12 or 14, confusing trade-marks are registrable if the applicant is the owner of all such trade-marks, which shall be known as associated trade-marks.

Record

(2) On the registration of any trade-mark associated with any other registered trade-mark, a note of the registration of each trade-mark shall be made on the record of registration of the other trade-mark.

Amendment

(3) No amendment of the register recording any change in the ownership or in the name or address of the owner of any one of a group of associated trade-marks shall be made unless the Registrar is satisfied that the same change has occurred with respect to all the trade-marks in the group, and corresponding entries are made contemporaneously with respect to all those trade-marks.

R.S., c. T-10, s. 15.

 

PERSONS ENTITLED TO REGISTRATION OF TRADE-MARKS

 

Registration of marks used or made known in Canada

16. (1) Any applicant who has filed an application in accordance with section 30 for registration of a trade-mark that is registrable and that he or his predecessor in title has used in Canada or made known in Canada in association with wares or services is entitled, subject to section 38, to secure its registration in respect of those wares or services, unless at the date on which he or his predecessor in title first so used it or made it known it was confusing with

     
  1. a trade-mark that had been previously used in Canada or made known in Canada by any other person;

  2. a trade-mark in respect of which an application for registration had been previously filed in Canada by any other person; or

  3. a trade-name that had been previously used in Canada by any other person.

Marks registered and used abroad

(2) Any applicant who has filed an application in accordance with section 30 for registration of a trade-mark that is registrable and that the applicant or the applicant's predecessor in title has duly registered in or for the country of origin of the applicant and has used in association with wares or services is entitled, subject to section 38, to secure its registration in respect of the wares or services in association with which it is registered in that country and has been used, unless at the date of filing of the application in accordance with section 30 it was confusing with

     
  1. a trade-mark that had been previously used in Canada or made known in Canada by any other person;

  2. a trade-mark in respect of which an application for registration had been previously filed in Canada by any other person; or

  3. a trade-name that had been previously used in Canada by any other person.

Proposed marks

(3) Any applicant who has filed an application in accordance with section 30 for registration of a proposed trade-mark that is registrable is entitled, subject to sections 38 and 40, to secure its registration in respect of the wares or services specified in the application, unless at the date of filing of the application it was confusing with

     
  1. a trade-mark that had been previously used in Canada or made known in Canada by any other person;

  2. a trade-mark in respect of which an application for registration had been previously filed in Canada by any other person; or

  3. a trade-name that had been previously used in Canada by any other person.

Where application for confusing mark pending

(4) The right of an applicant to secure registration of a registrable trade-mark is not affected by the previous filing of an application for registration of a confusing trade-mark by another person, unless the application for registration of the confusing trade-mark was pending at the date of advertisement of the applicant's application in accordance with section 37.

Previous use or making known

(5) The right of an applicant to secure registration of a registrable trade-mark is not affected by the previous use or making known of a confusing trade-mark or trade-name by another person, if the confusing trade-mark or trade-name was abandoned at the date of advertisement of the applicant's application in accordance with section 37.

R.S., 1985, c. T-13, s. 16; 1994, c. 47, s. 195.

 

VALIDITY AND EFFECT OF REGISTRATION

 

Effect of registration in relation to previous use, etc.

17. (1) No application for registration of a trade-mark that has been advertised in accordance with section 37 shall be refused and no registration of a trade-mark shall be expunged or amended or held invalid on the ground of any previous use or making known of a confusing trade-mark or trade-name by a person other than the applicant for that registration or his predecessor in title, except at the instance of that other person or his successor in title, and the burden lies on that other person or his successor to establish that he had not abandoned the confusing trade-mark or trade-name at the date of advertisement of the applicant's application.

When registration incontestable

(2) In proceedings commenced after the expiration of five years from the date of registration of a trade-mark or from July 1, 1954, whichever is the later, no registration shall be expunged or amended or held invalid on the ground of the previous use or making known referred to in subsection (1), unless it is established that the person who adopted the registered trade-mark in Canada did so with knowledge of that previous use or making known.

R.S., c. T-10, s. 17.

When registration invalid

18. (1) The registration of a trade-mark is invalid if

  1. the trade-mark was not registrable at the date of registration,

  2. the trade-mark is not distinctive at the time proceedings bringing the validity of the registration into question are commenced, or

  3. the trade-mark has been abandoned, and subject to section 17, it is invalid if the applicant for registration was not the person entitled to secure the registration.

Exception

(2) No registration of a trade-mark that had been so used in Canada by the registrant or his predecessor in title as to have become distinctive at the date of registration shall be held invalid merely on the ground that evidence of the distinctiveness was not submitted to the competent authority or tribunal before the grant of the registration.

R.S., c. T-10, s. 18.

Rights conferred by registration

19. Subject to sections 21, 32 and 67, the registration of a trade-mark in respect of any wares or services, unless shown to be invalid, gives to the owner of the trade-mark the exclusive right to the use throughout Canada of the trade-mark in respect of those wares or services.

R.S., 1985, c. T-13, s. 19; 1993, c. 15, s. 60.

Infringement

20. (1) The right of the owner of a registered trade-mark to its exclusive use shall be deemed to be infringed by a person not entitled to its use under this Act who sells, distributes or advertises wares or services in association with a confusing trade-mark or trade-name, but no registration of a trade-mark prevents a person from making

  1. any bona fide use of his personal name as a trade-name, or

  2. any bona fide use, other than as a trade-mark,

    1. of the geographical name of his place of business, or

    2. of any accurate description of the character or quality of his wares or services,

in such a manner as is not likely to have the effect of depreciating the value of the goodwill attaching to the trade-mark.

Exception

(2) No registration of a trade-mark prevents a person from making any use of any of the indications mentioned in subsection 11.18(3) in association with a wine or any of the indications mentioned in subsection 11.18(4) in association with a spirit.

R.S., 1985, c. T-13, s. 20; 1994, c. 47, s. 196.

Concurrent use of confusing marks

21. (1) Where, in any proceedings respecting a registered trade-mark the registration of which is entitled to the protection of subsection 17(2), it is made to appear to the Federal Court that one of the parties to the proceedings, other than the registered owner of the trade-mark, had in good faith used a confusing trade-mark or trade-name in Canada before the date of filing of the application for that registration, and the Court considers that it is not contrary to the public interest that the continued use of the confusing trade-mark or trade-name should be permitted in a defined territorial area concurrently with the use of the registered trade-mark, the Court may, subject to such terms as it deems just, order that the other party may continue to use the confusing trade-mark or trade-name within that area with an adequate specified distinction from the registered trade-mark.

Registration of order

(2) The rights conferred by an order made under subsection (1) take effect only if, within three months from its date, the other party makes application to the Registrar to enter it on the register in connection with the registration of the registered trade-mark.

R.S., c. T-10, s. 21; R.S., c. 10(2nd Supp.), s. 64.

Depreciation of goodwill

22. (1) No person shall use a trade-mark registered by another person in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto.

Action in respect thereof

(2) In any action in respect of a use of a trade-mark contrary to subsection (1), the court may decline to order the recovery of damages or profits and may permit the defendant to continue to sell wares marked with the trade-mark that were in his possession or under his control at the time notice was given to him that the owner of the registered trade-mark complained of the use of the trade-mark.

R.S., c. T-10, s. 22.

 

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