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INTELLECTUAL PROPERTY RIGHTS
NATIONAL LEGISLATION - CANADA
An Act relating to trade-marks and unfair competition
41. (1) The Registrar may, on application by the registered owner of a
trade-mark made in the prescribed manner, make any of the following amendments to the
correct any error or enter any change in the name, address or description of the registered owner or of his representative for service in Canada;
cancel the registration of the trade-mark;
amend the statement of the wares or services in respect of which the trade-mark is registered;
amend the particulars of the defined standard that the use of a certification mark is intended to indicate; or
enter a disclaimer that does not in any way extend the rights given by the existing registration of the trade-mark.
(2) An application to extend the statement of wares or services in respect of which a trade-mark is registered has the effect of an application for registration of the trade-mark in respect of the wares or services specified in the application for amendment.
R.S., c. T-10, s. 40.
42. (1) The registered owner of a trade-mark who has no office or place of business in Canada shall name another representative for service in place of the latest recorded representative or supply a new and correct address of the latest recorded representative on notice from the Registrar that the latest recorded representative has died or that a letter addressed to him at the latest recorded address and sent by ordinary mail has been returned undelivered.
(2) When, after the dispatch of the notice referred to in subsection (1) by the Registrar, no new nomination is made or no new and correct address is supplied by the registered owner within three months, the Registrar or the Federal Court may dispose of any proceedings under this Act without requiring service on the registered owner of any process therein.
R.S., c. T-10, s. 41; R.S., c. 10(2nd Supp.), s. 64.
43. The registered owner of any trade-mark shall furnish such additional representations thereof as the Registrar may by notice demand and, if he fails to comply with that notice, the Registrar may by a further notice, fix a reasonable time after which, if the representations are not furnished, he may expunge the registration of the trade-mark.
R.S., c. T-10, s. 42.
44. (1) The Registrar may at any time, and shall at the request of any person who pays the prescribed fee, by notice in writing require the registered owner of any trade-mark that was on the register on July 1, 1954 to furnish him within three months from the date of the notice with the information that would be required on an application for the registration of the trade-mark made at the date of the notice.
(2) The Registrar may amend the registration of the trade-mark in accordance with the information furnished to him under subsection (1).
(3) Where the information required by subsection (1) is not furnished, the Registrar shall by a further notice fix a reasonable time after which, if the information is not furnished, he may expunge the registration of the trade-mark.
R.S., c. T-10, s. 43.
45. (1) The Registrar may at any time and, at the written request made after three years from the date of the registration of a trade-mark by any person who pays the prescribed fee shall, unless the Registrar sees good reason to the contrary, give notice to the registered owner of the trade-mark requiring the registered owner to furnish within three months an affidavit or a statutory declaration showing, with respect to each of the wares or services specified in the registration, whether the trade-mark was in use in Canada at any time during the three year period immediately preceding the date of the notice and, if not, the date when it was last so in use and the reason for the absence of such use since that date.
(2) The Registrar shall not receive any evidence other than the affidavit or statutory declaration, but may hear representations made by or on behalf of the registered owner of the trade-mark or by or on behalf of the person at whose request the notice was given.
(3) Where, by reason of the evidence furnished to the Registrar or the failure to furnish any evidence, it appears to the Registrar that a trade-mark, either with respect to all of the wares or services specified in the registration or with respect to any of those wares or services, was not used in Canada at any time during the three year period immediately preceding the date of the notice and that the absence of use has not been due to special circumstances that excuse the absence of use, the registration of the trade-mark is liable to be expunged or amended accordingly.
(4) When the Registrar reaches a decision whether or not the registration of a trade-mark ought to be expunged or amended, he shall give notice of his decision with the reasons therefor to the registered owner of the trade-mark and to the person at whose request the notice referred to in subsection (1) was given.
(5) The Registrar shall act in accordance with his decision if no appeal therefrom is taken within the time limited by this Act or, if an appeal is taken, shall act in accordance with the final judgment given in the appeal.
R.S., 1985, c. T-13, s. 45; 1993, c. 44, s. 232; 1994, c. 47, s. 200.
46. (1) The registration of a trade-mark that is on the register by virtue of this Act is subject to renewal within a period of fifteen years from the day of the registration or last renewal.
(2) If the registration of a trade-mark has been on the register without renewal for the period specified in subsection (1), the Registrar shall send a notice to the registered owner and to the registered owner's representative for service, if any, stating that if within six months after the date of the notice the prescribed renewal fee is not paid, the registration will be expunged.
(3) If within the period of six months specified in the notice, which period shall not be extended, the prescribed renewal fee is not paid, the Registrar shall expunge the registration.
(4) When the prescribed fee for a renewal of any trade-mark registration under this section is paid within the time limited for the payment thereof, the renewal takes effect as of the day next following the expiration of the period specified in subsection (1).
R.S., 1985, c. T-13, s. 46; 1992, c. 1, s. 135.
47. (1) If, in any case, the Registrar is satisfied that the circumstances justify an extension of the time fixed by this Act or prescribed by the regulations for the doing of any act, he may, except as in this Act otherwise provided, extend the time after such notice to other persons and on such terms as he may direct.
(2) An extension applied for after the expiration of the time fixed for the doing of an act or the time extended by the Registrar under subsection (1) shall not be granted unless the prescribed fee is paid and the Registrar is satisfied that the failure to do the act or apply for the extension within that time or the extended time was not reasonably avoidable.
R.S., c. T-10, s. 46.
48. (1) A trade-mark, whether registered or unregistered, is transferable, and deemed always to have been transferable, either in connection with or separately from the goodwill of the business and in respect of either all or some of the wares or services in association with which it has been used.
(2) Nothing in subsection (1) prevents a trade-mark from being held not to be distinctive if as a result of a transfer thereof there subsisted rights in two or more persons to the use of confusing trade-marks and the rights were exercised by those persons.
(3) The Registrar shall register the transfer of any registered trade-mark on being furnished with evidence satisfactory to him of the transfer and the information that would be required by paragraph 30(g) in an application by the transferee to register the trade-mark.
R.S., c. T-10, s. 47.
49. If a mark is used by a person as a trade-mark for any of the purposes or in any of the manners mentioned in the definition "certification mark" or "trade-mark" in section 2, it shall not be held invalid merely on the ground that the person or a predecessor in title uses it or has used it for any other of those purposes or in any other of those manners.
R.S., c. T-10, s. 48.
50. (1) For the purposes of this Act, if an entity is licensed by or with the authority of the owner of a trade-mark to use the trade-mark in a country and the owner has, under the licence, direct or indirect control of the character or quality of the wares or services, then the use, advertisement or display of the trade-mark in that country as or in a trade-mark, trade-name or otherwise by that entity has, and is deemed always to have had, the same effect as such a use, advertisement or display of the trade-mark in that country by the owner.
(2) For the purposes of this Act, to the extent that public notice is given of the fact that the use of a trade-mark is a licensed use and of the identity of the owner, it shall be presumed, unless the contrary is proven, that the use is licensed by the owner of the trade-mark and the character or quality of the wares or services is under the control of the owner.
(3) Subject to any agreement subsisting between an owner of a trade-mark and a licensee of the trade-mark, the licensee may call on the owner to take proceedings for infringement thereof, and, if the owner refuses or neglects to do so within two months after being so called on, the licensee may institute proceedings for infringement in the licensee's own name as if the licensee were the owner, making the owner a defendant.
R.S., 1985, c. T-13, s. 50; 1993, c. 15, s. 69.
51. (1) Where a company and the owner of a trade-mark that is used in
Canada by that owner in association with a pharmaceutical preparation are related
companies, the use by the company of the trade-mark, or a trade-mark confusing therewith,
in association with a pharmaceutical preparation that at the time of that use or at any
is acquired by a person directly or indirectly from the company, and
is sold, distributed or advertised for sale in Canada in a package bearing the name of the company and the name of that person as the distributor thereof, has the same effect, for all purposes of this Act, as a use of the trade-mark or the confusing trade-mark, as the case may be, by that owner.
(2) Subsection (1) does not apply to any use of a trade-mark or a confusing trade-mark by a company referred to in that subsection in association with a pharmaceutical preparation after such time, if any, as that pharmaceutical preparation is declared by the Minister of Health, by notice published in the Canada Gazette, to be sufficiently different in its composition from the pharmaceutical preparation in association with which the trade-mark is used in Canada by the owner referred to in subsection (1) as to be likely to result in a hazard to health.
(3) In this section, "pharmaceutical preparation" includes
any substance or mixture of substances manufactured, sold or represented for use in
the diagnosis, treatment, mitigation or prevention of a disease, disorder or abnormal physical state, or the symptoms thereof, in humans or animals, or
restoring, correcting or modifying organic functions in humans or animals, and
any substance to be used in the preparation or production of any substance or mixture of substances described in paragraph (a), but does not include any such substance or mixture of substances that is the same or substantially the same as a substance or mixture of substances that is a proprietary medicine within the meaning from time to time assigned to that expression by regulations made pursuant to the Food and Drugs Act.
R.S., 1985, c. T-13, s. 51; 1996, c. 8, s. 32.
52. In sections 53 to 53.3,
"court" « tribunal »
"court" means the Federal Court or the superior court of a province;
"duties" « droits »
"duties" has the same meaning as in the Customs Act;
"Minister" « ministre »
"Minister" means the Minister of National Revenue;
"release" « dédouanement »
"release" has the same meaning as in the Customs Act.
R.S., 1985, c. T-13, s. 52; 1993, c. 44, s. 234.
53. (1) Where a court is satisfied, on application of any interested person, that any registered trade-mark or any trade-name has been applied to any wares that have been imported into Canada or are about to be distributed in Canada in such a manner that the distribution of the wares would be contrary to this Act, or that any indication of a place of origin has been unlawfully applied to any wares, the court may make an order for the interim custody of the wares, pending a final determination of the legality of their importation or distribution in an action commenced within such time as is prescribed by the order.
(2) Before making an order under subsection (1), the court may require the applicant to furnish security, in an amount fixed by the court, to answer any damages that may by reason of the order be sustained by the owner, importer or consignee of the wares and for any amount that may become chargeable against the wares while they remain in custody under the order.
(3) Where, by the judgment in any action under this section finally determining the legality of the importation or distribution of the wares, their importation or distribution is forbidden, either absolutely or on condition, any lien for charges against them that arose prior to the date of an order made under this section has effect only so far as may be consistent with the due execution of the judgment.
(4) Where in any action under this section the court finds that the importation is or the distribution would be contrary to this Act, it may make an order prohibiting the future importation of wares to which the trade-mark, trade-name or indication of origin has been applied.
(5) An application referred to in subsection (1) may be made in an action or otherwise, and either on notice or ex parte.
(6) No proceedings may be taken under subsection (1) for the interim custody of wares by the Minister if proceedings for the detention of the wares by the Minister may be taken under section 53.1.
R.S., 1985, c. T-13, s. 53; 1993, c. 44, s. 234.
53.1 (1) Where a court is satisfied, on application by the owner of a
registered trade-mark, that any wares to which the trade-mark has been applied are about
to be imported into Canada or have been imported into Canada but have not yet been
released, and that the distribution of the wares in Canada would be contrary to this Act,
the court may make an order
directing the Minister to take reasonable measures, on the basis of information reasonably required by the Minister and provided by the applicant, to detain the wares;
directing the Minister to notify the applicant and the owner or importer of the wares, forthwith after detaining them, of the detention and the reasons therefor; and
providing for such other matters as the court considers appropriate.
(2) An application referred to in subsection (1) may be made in an action or otherwise, and either on notice or ex parte, except that it must always be made on notice to the Minister.
(3) Before making an order under subsection (1), the court may require
the applicant to furnish security, in an amount fixed by the court,
to cover duties, storage and handling charges, and any other amount that may become chargeable against the wares; and
to answer any damages that may by reason of the order be sustained by the owner, importer or consignee of the wares.
(4) The Minister may apply to the court for directions in implementing an order made under subsection (1).
(5) The Minister may give the applicant or the importer of the detained wares an opportunity to inspect them for the purpose of substantiating or refuting, as the case may be, the applicant's claim.
(6) Unless an order made under subsection (1) provides otherwise, the Minister shall, subject to the Customs Act and to any other Act of Parliament that prohibits, controls or regulates the importation or exportation of goods, release the wares without further notice to the applicant if, two weeks after the applicant has been notified under paragraph (1)(b), the Minister has not been notified that an action has been commenced for a final determination by the court of the legality of the importation or distribution of the wares.
(7) Where, in an action commenced under this section, the court finds that the importation is or the distribution would be contrary to this Act, the court may make any order that it considers appropriate in the circumstances, including an order that the wares be destroyed or exported, or that they be delivered up to the plaintiff as the plaintiff's property absolutely.
1993, c. 44, s. 234.
53.2 Where a court is satisfied, on application of any interested person, that any act has been done contrary to this Act, the court may make any order that it considers appropriate in the circumstances, including an order providing for relief by way of injunction and the recovery of damages or profits and for the destruction, exportation or other disposition of any offending wares, packages, labels and advertising material and of any dies used in connection therewith.
1993, c. 44, s. 234.
53.3 Where in any proceeding under section 53.1 or 53.2 the court
that wares bearing a registered trade-mark have been imported into Canada in such manner that the distribution of the wares in Canada would be contrary to this Act, and
that the registered trade-mark has, without the consent of the owner, been applied to those wares with the intent of counterfeiting or imitating the trade-mark, or of deceiving the public and inducing them to believe that the wares were made with the consent of the owner, the court may not, other than in exceptional circumstances, make an order under that section requiring or permitting the wares to be exported in an unaltered state.
1993, c. 44, s. 234.
54. (1) Evidence of any document in the official custody of the Registrar or of any extract therefrom may be given by the production of a copy thereof purporting to be certified to be true by the Registrar.
(2) A copy of any entry in the register purporting to be certified to be true by the Registrar is evidence of the facts set out therein.
(3) A copy of the record of the registration of a trade-mark purporting to be certified to be true by the Registrar is evidence of the facts set out therein and that the person named therein as owner is the registered owner of the trade-mark for the purposes and within the territorial area therein defined.
(4) A copy of any entry made or documents filed under the authority of any Act in force before July 1, 1954 relating to trade-marks, certified under the authority of that Act, is admissible in evidence and has the same probative force as a copy certified by the Registrar under this Act as provided in this section.
R.S., c. T-10, s. 54.
55. The Federal Court has jurisdiction to entertain any action or proceeding for the enforcement of any of the provisions of this Act or of any right or remedy conferred or defined thereby.
R.S., c. T-10, s. 55; R.S., c. 10(2nd Supp.), s. 64.
56. (1) An appeal lies to the Federal Court from any decision of the Registrar under this Act within two months from the date on which notice of the decision was dispatched by the Registrar or within such further time as the Court may allow, either before or after the expiration of the two months.
(2) An appeal under subsection (1) shall be made by way of notice of appeal filed with the Registrar and in the Federal Court.
(3) The appellant shall, within the time limited or allowed by subsection (1), send a copy of the notice by registered mail to the registered owner of any trade-mark that has been referred to by the Registrar in the decision complained of and to every other person who was entitled to notice of the decision.
(4) The Federal Court may direct that public notice of the hearing of an appeal under subsection (1) and of the matters at issue therein be given in such manner as it deems proper.
(5) On an appeal under subsection (1), evidence in addition to that adduced before the Registrar may be adduced and the Federal Court may exercise any discretion vested in the Registrar.
R.S., c. T-10, s. 56; R.S., c. 10(2nd Supp.), s. 64.
57. (1) The Federal Court has exclusive original jurisdiction, on the application of the Registrar or of any person interested, to order that any entry in the register be struck out or amended on the ground that at the date of the application the entry as it appears on the register does not accurately express or define the existing rights of the person appearing to be the registered owner of the mark.
(2) No person is entitled to institute under this section any proceeding calling into question any decision given by the Registrar of which that person had express notice and from which he had a right to appeal.
R.S., c. T-10, s. 57; R.S., c. 10(2nd Supp.), s. 64.
58. An application under section 57 shall be made either by the filing of an originating notice of motion, by counter-claim in an action for the infringement of the trade-mark, or by statement of claim in an action claiming additional relief under this Act.
R.S., c. T-10, s. 58.
59. (1) Where an appeal is taken under section 56 by the filing of a notice of appeal, or an application is made under section 57 by the filing of an originating notice of motion, the notice shall set out full particulars of the grounds on which relief is sought.
(2) Any person on whom a copy of the notice described in subsection (1) has been served and who intends to contest the appeal or application, as the case may be, shall file and serve within the prescribed time or such further time as the court may allow a reply setting out full particulars of the grounds on which he relies.
(3) The proceedings on an appeal or application shall be heard and determined summarily on evidence adduced by affidavit unless the court otherwise directs, in which event it may order that any procedure permitted by its rules and practice be made available to the parties, including the introduction of oral evidence generally or in respect of one or more issues specified in the order.
R.S., c. T-10, s. 59.
60. (1) Subject to subsection (2), when any appeal or application has been made to the Federal Court under any of the provisions of this Act, the Registrar shall, at the request of any of the parties to the proceedings and on the payment of the prescribed fee, transmit to the Court all documents on file in the Registrar's office relating to the matters in question in those proceedings, or copies of those documents certified by the Registrar.
(2) The transmission 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) of the Trade-marks Act, as it read immediately before section 69 of the Intellectual Property Law Improvement Act came into force.
R.S., 1985, c. T-13, s. 60; 1993, c. 44, s. 238.
61. An officer of the Registry of the Federal Court shall file with the Registrar a certified copy of every judgment or order made by the Federal Court or by the Supreme Court of Canada relating to any trade-mark on the register.
R.S., c. T-10, s. 62; R.S., c. 10(2nd Supp.), s. 65.
62. This Act shall be administered by the Minister of Industry.
R.S., 1985, c. T-13, s. 62; 1992, c. 1, s. 145(F); 1995, c. 1, s. 62.
63. (1) There shall be a Registrar of Trade-marks, appointed by the Governor in Council, to hold office during pleasure, who shall be paid such annual salary as the Governor in Council determines and shall be responsible to the Deputy Minister of Industry.
(2) When the Registrar is absent or unable to act or when the office of Registrar is vacant, his powers shall be exercised and his duties and functions performed in the capacity of acting registrar by such other officer as may be designated by the Minister of Industry.
(3) The Registrar may, after consultation with the Minister, delegate to any person he deems qualified any of his powers, duties and functions under this Act, except the power to delegate under this subsection.
(4) Any decision under this Act of a person authorized to make the decision pursuant to subsection (3) may be appealed in the like manner and subject to the like conditions as a decision of the Registrar under this Act.
R.S., 1985, c. T-13, s. 63; 1992, c. 1, s. 145(F); 1995, c. 1, s. 62.
64. The Registrar shall cause to be published periodically particulars of the registrations made and extended from time to time under this Act, and shall in such publication give particulars of any rulings made by him that are intended to serve as precedents for the determination of similar questions thereafter arising.
R.S., c. T-10, s. 64.
65. The Governor in Council may make regulations for carrying into effect the purposes and provisions of this Act and, in particular, may make regulations with respect to the following matters:
(a) the form of the register and of the indexes to be maintained pursuant to this Act, and of the entries to be made therein;
(b) the form of applications to the Registrar;
(c) the registration of transfers, licences, disclaimers, judgments or other documents relating to any trade-mark;
(d) the form and contents of certificates of registration;
(e) the payment of fees to the Registrar and the amount thereof.
R.S., 1985, c. T-13, s. 65; 1993, c. 15, s. 70; 1994, c. 47, s. 201.
66. (1) Where any time limit or period of limitation specified under or pursuant to this Act expires on a day when the Office of the Registrar of Trade-marks is closed for business, the time limit or period of limitation shall be deemed to be extended to the next day when the Office is open for business.
(2) The Office of the Registrar of Trade-marks shall be closed for business on Saturdays and holidays and on such other days as the Minister by order declares that it shall be closed for business.
(3) Every order made by the Minister under subsection (2) shall be published in the Trade-marks Journal as soon as possible after the making thereof.
R.S., c. T-10, s. 66.
67. (1) The registration of a trade-mark under the laws of Newfoundland before April 1, 1949 has the same force and effect in the Province of Newfoundland as if Newfoundland had not become part of Canada, and all rights and privileges acquired under or by virtue of those laws may continue to be exercised or enjoyed in the Province of Newfoundland as if Newfoundland had not become part of Canada.
(2) The laws of Newfoundland as they existed immediately before April 1, 1949 continue to apply in respect of applications for the registration of trade-marks under the laws of Newfoundland pending at that time and any trade-marks registered under those applications shall, for the purposes of this section, be deemed to have been registered under the laws of Newfoundland before April 1, 1949.
1993, c. 15, s. 71.
68. For the purposes of this Act, the use or making known of a trade-mark or the use of a trade-name in Newfoundland before April 1, 1949 shall not be deemed to be a use or making known of such trade-mark or a use of such trade-name in Canada before that date.
1993, c. 15, s. 71.
69. An application for the registration of a trade-mark filed before this section comes into force shall not be refused by reason only that subsection 50(1) deems the use, advertisement or display of the trade-mark by a licensed entity always to have had the same effect as a use, advertisement or display of the trade-mark by the owner.
1993, c. 15, s. 71.
- 1992, c. 1, s. 135(2):
(2) Where a notice was sent under subsection 46(2) of the said Act before the coming into force of subsection (1), the renewal of the registration of the trade-mark shall be dealt with and disposed of as if subsection (1) had not come into force.