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INTELLECTUAL PROPERTY RIGHTS

NATIONAL LEGISLATION - CANADA

An Act relating to trade-marks and unfair competition


(Continued)

CERTIFICATION MARKS

Registration of certification marks

23. (1) A certification mark may be adopted and registered only by a person who is not engaged in the manufacture, sale, leasing or hiring of wares or the performance of services such as those in association with which the certification mark is used.

Licence

(2) The owner of a certification mark may license others to use the mark in association with wares or services that meet the defined standard, and the use of the mark accordingly shall be deemed to be use thereof by the owner.

Unauthorized use

(3) The owner of a registered certification mark may prevent its use by unlicensed persons or in association with any wares or services in respect of which the mark is registered but to which the licence does not extend.

Action by unincorporated body

(4) Where the owner of a registered certification mark is an unincorporated body, any action or proceeding to prevent unauthorized use of the mark may be brought by any member of that body on behalf of himself and all other members thereof.

R.S., c. T-10, s. 23.

Registration of trade-mark confusing with certification mark

24. With the consent of the owner of a certification mark, a trade-mark confusing with the certification mark may, if it exhibits an appropriate difference, be registered by some other person to indicate that the wares or services in association with which it is used have been manufactured, sold, leased, hired or performed by him as one of the persons entitled to use the certification mark, but the registration thereof shall be expunged by the Registrar on the withdrawal at any time of the consent of the owner of the certification mark or on the cancellation of the registration of the certification mark.

R.S., c. T-10, s. 24.

Descriptive certification mark

25. A certification mark descriptive of the place of origin of wares or services, and not confusing with any registered trade-mark, is registrable if the applicant is the administrative authority of a country, state, province or municipality including or forming part of the area indicated by the mark, or is a commercial association having an office or representative in that area, but the owner of any mark registered under this section shall permit the use of the mark in association with any wares or services produced or performed in the area of which the mark is descriptive.

R.S., c. T-10, s. 25.

REGISTER OF TRADE-MARKS

Register

26. (1) There shall be kept under the supervision of the Registrar

  1. a register of trade-marks and of transfers, disclaimers, amendments, judgments and orders relating to each registered trade-mark; and

  2. the register of registered users that was required to be kept under this subsection as it read immediately before section 61 of the Intellectual Property Law Improvement Act came into force.

Information to be shown

(2) The register referred to in paragraph (1)(a) shall show, with reference to each registered trade-mark, the following:

  1. the date of registration;

  2. a summary of the application for registration;

  3. a summary of all documents deposited with the application or subsequently thereto and affecting the rights to the trade-mark;

  4. particulars of each renewal;

  5. particulars of each change of name and address; and

  6. such other particulars as this Act or the regulations require to be entered thereon.

R.S., 1985, c. T-13, s. 26; 1993, c. 15, s. 61.

Register under Unfair Competition Act

27. (1) The register kept under the Unfair Competition Act, chapter 274 of the Revised Statutes of Canada, 1952, forms part of the register kept under this Act and, subject to subsection 44(2), no entry made therein, if properly made according to the law in force at the time it was made, is subject to be expunged or amended only because it might not properly have been made pursuant to this Act.

Trade-marks registered before Unfair Competition Act

(2) Trade-marks on the register on September 1, 1932 shall be treated as design marks or word marks as defined in the Unfair Competition Act, chapter 274 of the Revised Statutes of Canada, 1952, according to the following rules:

  1. any trade-mark consisting only of words or numerals or both without any indication of a special form or appearance shall be deemed to be a word mark;

  2. any other trade-mark consisting only of words or numerals or both shall be deemed to be a word mark if at the date of its registration the words or numerals or both would have been registrable independently of any defined special form or appearance and shall also be deemed to be a design mark for reading matter presenting the special form or appearance defined;

  3. any trade-mark including words or numerals or both in combination with other features shall be deemed

    1. to be a design mark having the features described in the application therefor but without any meaning being attributed to the words or numerals, and

    2. to be a word mark if and so far as it would at the date of registration have been registrable independently of any defined form or appearance and without being combined with any other feature; and

  4. any other trade-mark shall be deemed to be a design mark having the features described in the application therefor.

Trade-marks registered under Unfair Competition Act

(3) Trade-marks registered under the Unfair Competition Act, chapter 274 of the Revised Statutes of Canada, 1952, shall, in accordance with their registration, continue to be treated as design marks or word marks as defined in that Act.

R.S., c. T-10, s. 26.

Indexes

28. (1) There shall be kept under the supervision of the Registrar

  1. an index of registered trade-marks;

  2. an index of trade-marks in respect of which applications for registration are pending;

  3. an index of applications that have been abandoned or refused;

  4. an index of the names of owners of registered trade-marks;

  5. an index of the names of applicants for the registration of trade-marks;

  6. a list of trade-mark agents; and

  7. the index of the names of registered users that was required to be kept under this subsection as it reads immediately before section 61 of the Intellectual Property Law Improvement Act comes into force.

List of trade-mark agents

(2) The list of trade-mark agents shall include the names of all persons and firms entitled to represent applicants in the presentation and prosecution of applications for the registration of a trade-mark or in other business before the Trade-marks Office.

R.S., 1985, c. T-13, s. 28; 1993, c. 15, s. 62.

Inspection

29. (1) Subject to subsection (2), the registers, the documents on which the entries therein are based, all applications, including those abandoned, the indexes, the list of trade-mark agents and the list of geographical indications kept pursuant to subsection 11.12(1) shall be open to public inspection during business hours, and the Registrar shall, on request and on payment of the prescribed fee, furnish a copy certified by the registrar of any entry in the registers, indexes or lists, or of any of those documents or applications.

Register of registered users

(2) The disclosure of documents on which entries in the register required to be kept under paragraph 26(1)(b) are based is subject to the provisions of subsection 50(6), as it reads immediately before section 61 of the Intellectual Property Law Improvement Act comes into force.

R.S., 1985, c. T-13, s. 29; 1993, c. 15, s. 63; 1994, c. 47, s. 197.

APPLICATIONS FOR REGISTRATION OF TRADE-MARKS

Contents of application

30. An applicant for the registration of a trade-mark shall file with the Registrar an application containing

  1. a statement in ordinary commercial terms of the specific wares or services in association with which the mark has been or is proposed to be used;

  2. in the case of a trade-mark that has been used in Canada, the date from which the applicant or his named predecessors in title, if any, have so used the trade-mark in association with each of the general classes of wares or services described in the application;

  3. in the case of a trade-mark that has not been used in Canada but is made known in Canada, the name of a country of the Union in which it has been used by the applicant or his named predecessors in title, if any, and the date from and the manner in which the applicant or named predecessors in title have made it known in Canada in association with each of the general classes of wares or services described in the application;

  4. in the case of a trade-mark that is the subject in or for another country of the Union of a registration or an application for registration by the applicant or the applicant's named predecessor in title on which the applicant bases the applicant's right to registration, particulars of the application or registration and, if the trade-mark has neither been used in Canada nor made known in Canada, the name of a country in which the trade-mark has been used by the applicant or the applicant's named predecessor in title, if any, in association with each of the general classes of wares or services described in the application;

  5. in the case of a proposed trade-mark, a statement that the applicant, by itself or through a licensee, or by itself and through a licensee, intends to use the trade-mark in Canada;

  6. in the case of a certification mark, particulars of the defined standard that the use of the mark is intended to indicate and a statement that the applicant is not engaged in the manufacture, sale, leasing or hiring of wares or the performance of services such as those in association with which the certification mark is used;

  7. the address of the applicant's principal office or place of business in Canada, if any, and if the applicant 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 to whom any notice in respect of the application or registration may be sent, and on whom service of any proceedings in respect of the application or registration may be given or served with the same effect as if they had been given to or served on the applicant or registrant himself;

  8. unless the application is for the registration only of a word or words not depicted in a special form, a drawing of the trade-mark and such number of accurate representations of the trade-mark as may be prescribed; and

  9. a statement that the applicant is satisfied that he is entitled to use the trade-mark in Canada in association with the wares or services described in the application.

R.S., 1985, c. T-13, s. 30; 1993, c. 15, s. 64; 1994, c. 47, s. 198.

Applications based on registration abroad

31. (1) An applicant whose right to registration of a trade-mark is based on a registration of the trade-mark in another country of the Union shall, before the date of advertisement of his application in accordance with section 37, furnish a copy of the registration certified by the office in which it was made, together with a translation thereof into English or French if it is in any other language, and such other evidence as the Registrar may require to establish fully his right to registration under this Act.

Evidence required in certain cases

(2) An applicant whose trade-mark has been duly registered in his country of origin and who claims that the trade-mark is registrable under paragraph 14(1)(b) shall furnish such evidence as the Registrar may require by way of affidavit or statutory declaration establishing the circumstances on which he relies, including the length of time during which the trade-mark has been used in any country.

R.S., c. T-10, s. 30.

Further information in certain cases

32. (1) An applicant who claims that his trade-mark is registrable under subsection 12(2) or section 13 shall furnish the Registrar with evidence by way of affidavit or statutory declaration establishing the extent to which and the time during which the trade-mark has been used in Canada and with any other evidence that the Registrar may require in support of the claim.

Registration to be restricted

(2) The Registrar shall, having regard to the evidence adduced, restrict the registration to the wares or services in association with which the trade-mark is shown to have been so used as to have become distinctive and to the defined territorial area in Canada in which the trade-mark is shown to have become distinctive.

R.S., c. T-10, s. 31.

Applications by trade unions, etc.

33. Every trade union or commercial association that applies for the registration of a trade-mark may be required to furnish satisfactory evidence that its existence is not contrary to the laws of the country in which its headquarters are situated.

R.S., c. T-10, s. 32.

Date of application abroad deemed date of application in Canada

34. (1) When an application for the registration of a trade-mark has been made in or for any country of the Union other than Canada and an application is subsequently made in Canada for the registration for use in association with the same kind of wares or services of the same or substantially the same trade-mark by the same applicant or the applicant's successor in title, the date of filing of the application in or for the other country is deemed to be the date of  filing of the application in Canada, and the applicant is entitled to priority in Canada accordingly notwithstanding any intervening use in Canada or making known in Canada or any intervening application or registration if

  1. the application in Canada, including or accompanied by a declaration setting out the date on which and the country of the Union in or for which the earliest application was filed for the registration of the same or substantially the same trade-mark for use in association with the same kind of wares or services, is filed within a period of six months after that date, which period shall not be extended;

  2. the applicant or, if the applicant is a transferee, the applicant's predecessor in title by whom any earlier application was filed in or for any country of the Union was at the date of the application a citizen or national of or domiciled in that country or had therein a real and effective industrial or commercial establishment; and

  3. the applicant furnishes, in accordance with any request under subsections (2) and (3), evidence necessary to establish fully the applicant's right to priority.

Evidence requests

(2) The Registrar may request the evidence before the day on which the application is allowed pursuant to section 39.

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.

R.S., 1985, c. T-13, s. 34; 1992, c. 1, s. 133; 1993, c. 15, s. 65; 1994, c. 47, s. 199.

Disclaimer

35. The Registrar may require an applicant for registration of a trade-mark to disclaim the right to the exclusive use apart from the trade-mark of such portion of the trade-mark 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 wares or services.

R.S., c. T-10, s. 34.

Abandonment

36. Where, in the opinion of the Registrar, an applicant is in default in the prosecution of an application filed under this Act or any Act relating to trade-marks in force prior to July 1, 1954, the Registrar may, after giving notice to the applicant of the default, treat the application as abandoned unless the default is remedied within the time specified in the notice.

R.S., c. T-10, s. 35.

When applications to be refused

37. (1) The Registrar shall refuse an application for the registration of a trade-mark if he is satisfied that

  1. the application does not conform to the requirements of section 30,

  2. the trade-mark is not registrable, or

  3. the applicant is not the person entitled to registration of the trade-mark because it is confusing with another trade-mark for the registration of which an application is pending, and where the Registrar is not so satisfied, he shall cause the application to be advertised in the manner prescribed.

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.

Doubtful cases

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

R.S., c. T-10, s. 36.

Statement of opposition

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

Grounds

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

  1. that the application does not conform to the requirements of section 30;

  2. that the trade-mark is not registrable;

  3. that the applicant is not the person entitled to registration of the trade-mark; or

  4. that the trade-mark is not distinctive.

Content

(3) A statement of opposition shall set out

  1. the grounds of opposition in sufficient detail to enable the applicant to reply thereto; and

  2. 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.

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.

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.

Counter statement

(6) 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 served on the applicant.

Evidence and hearing

(7) Both the opponent and the applicant shall be given an opportunity, in the prescribed manner, to submit evidence and to make representations to the Registrar unless

  1. the opposition is withdrawn or deemed under subsection (7.1) to have been withdrawn; or

  2. the application is abandoned or deemed under subsection (7.2) to have been abandoned.

Withdrawal of opposition

(7.1) The opposition shall be deemed to have been withdrawn if, in the prescribed circumstances, the opponent does not submit either evidence under subsection (7) or a statement that the opponent does not wish to submit evidence.

Abandonment of application

(7.2) The application shall be deemed to have been abandoned if the applicant does not file and serve a counter statement within the time referred to in subsection (6) or if, in the prescribed circumstances, the applicant does not submit either evidence under subsection (7) or a statement that the applicant does not wish to submit evidence.

Decision

(8) After considering the evidence and representations of the opponent and the applicant, the Registrar shall refuse the application or reject the opposition and notify the parties of the decision and the reasons for the decision.

R.S., 1985, c. T-13, s. 38; 1992, c. 1, s. 134; 1993, c. 15, s. 66.

When application to be allowed

39. (1) When an application for the registration of a trade-mark either has not been opposed and the time for the filing of a statement of opposition has expired or it has been opposed and the opposition has been decided in favour of the applicant, the Registrar shall allow the application or, if an appeal is taken, shall act in accordance with the final judgment given in the appeal.

No extension of time

(2) Subject to subsection (3), the Registrar shall not extend the time for filing a statement of opposition with respect to any application that has been allowed.

Exception

(3) Where the Registrar has allowed an application without considering a previously filed request for an extension of time to file a statement of opposition, the Registrar may withdraw the application from allowance at any time before issuing a certificate of registration and, in accordance with section 47, extend the time for filing a statement of opposition.

R.S., 1985, c. T-13, s. 39; 1993, c. 15, s. 67.

REGISTRATION OF TRADE-MARKS

Registration of trade-marks

40. (1) When an application for registration of a trade-mark, other than a proposed trade-mark, is allowed, the Registrar shall register the trade-mark and issue a certificate of its registration.

Proposed trade-mark

(2) When an application for registration of a proposed trade-mark is allowed, the Registrar shall give notice to the applicant accordingly and shall register the trade-mark and issue a certificate of registration on receipt of a declaration that the use of the trade-mark in Canada, in association with the wares or services specified in the application, has been commenced by

  1. the applicant;

  2. the applicant's successor in title; or

  3. an entity that is licensed by or with the authority of the applicant to use the trade-mark, if the applicant has direct or indirect control of the character or quality of the wares or services.

Abandonment of application

(3) An application for registration of a proposed trade-mark shall be deemed to be abandoned if the Registrar has not received the declaration referred to in subsection (2) before the later of

  1. six months after the notice by the Registrar referred to in subsection (2), and

  2. three years after the date of filing of the application in Canada.

Form and effect

(4) Registration of a trade-mark shall be made in the name of the applicant therefor or his transferee, and the day on which registration is made shall be entered on the register, and the registration takes effect on that day.

Section 34 does not apply

(5) For the purposes of subsection (3), section 34 does not apply in determining when an application for registration is filed.

R.S., 1985, c. T-13, s. 40; 1993, c. 15, s. 68, c. 44, s. 231.

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